DETAILED ACTION
This Office Action is in response to the Amendment filed on 4/10/2026.
Claim(s) 16 have been added.
Claim(s) 11-12 and 14-15 are withdrawn due to a previous restriction requirement.
Claim(s) 1-16, are now pending in the application.
The previous 35 USC 112 rejections of claim(s) 1-10 and 13 are withdrawn in light of Applicant’s amendment and remarks.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-10, 13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over JP2018091917 to Koike in view of CN104411796 to Shimamura et al. (as found on the IDS dated 3/6/2024). For the purposes of examination, citations for Koike and Shimamura are taken from a machine translation equivalent of the document.
Regarding Claim 1-8, Koike teaches a hot melt adhesive [title] comprising a thermoplastic block copolymer (A) [abstract] such as styrene-isoprene-styrene (SIS) [0021] thus reading on at least one styrene block copolymer, and (B), an acid modified petroleum resin manufactured by acid modification using unsaturated carboxylic acid [abstract] such as maleic acid [0030] reading on all limitations of acid tackifiying resin in claims 1 and 6-8.
Koike does not particularly teach an acid modified rubber.
However, Shimamura teaches a hot melt adhesive composition [title] comprising 3-10 parts [0042] (reading on claim 5) of liquid rubber (B) modified with a polar group such as a carboxyl group and/or carboxylic anhydride group [0033] such as LIR-410 produced by Kuraray [0038]. LIR-410 is the same commercial acid modified rubber used in instant specification [0041] thereby reading on the limitations of acid modified rubber in claims 1-4. Koike and Shimamura are analogous art as they are from the same field of endeavor, namely hot melt adhesives comprising styrene block copolymers and tackifiers.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add Shimamura’s acid modified rubber resin to Koike’s hot melt adhesive, thereby arriving at the claimed invention.
The motivation would have been that the acid modified rubber in these amounts contributes wet adhesion and thermal stability [0042] to a hot melt composition.
Regarding Claims 9-10, Koike in view of Shimamura teach the hot melt adhesive composition of claim 1, further comprising an unmodified petroleum resin [0036] such as C5 and C9 petroleum resins [0038] reading on non-acid tackifying resin selected from petroleum hydrocarbon resins of C5/C9 monomers.
Regarding Claims 13, Koike in view of Shimamura teach the hot melt adhesive composition of claim 1, that is used in disposable products such as diapers [0065] reading on article.
Regarding Claim 16, Koike in view of Shimamura teach the hot melt adhesive composition of claim 1, wherein the acid modified tackifying resin has an acid value preferably in the range of 0.1 to 50 mgKOH/g [0034] thereby reasonably reading on the acid value of at least 2.0 mg KOH /g.
Response to Arguments
Applicant's arguments filed 4/10/2026 have been fully considered but they are not persuasive.
Applicant states that adding Shimamura's acid-modified rubber would introduce a second source of acid functionality and would directly contradict Koike's express teaching to limit free acid content.
In response, it is noted that “free acid” is only mentioned when Kioke is referring to modified waxes and acid modified petroleum resin (i.e., modified wax). Kioke states that acid modified waxes having free acid and is a concern [0011], further specifying this when the acid-modified petroleum resin is too high the free acid in the hot melt adhesive increases causing an odor [0035]. However, this is not relevant to an acid modified liquid rubber. There is no specific teaching in Kioke that teaches acid modified rubber would contribute to free acid content or that acid modified liquid rubber would be problematic or detrimental. If it suggested that Applicant provide a specific citation in Kioke where such a teaching away resides.
Furthermore, the free acid does not appear to be detrimental as Kioke’s examples comprise an acid modified petroleum resin with an acid value of 1.8 mg KOH/g [0070] but specifically states a significantly more acidic acid modified petroleum resin may be used, at an acid value of up to 50 mg KOH/g [0034].
Applicant states the combination of an acid- modified rubber and an acid tackifying resin produces unexpected synergistic results that exceed what would be predicted from either component alone.
In response, it is noted that there is improved wet peel strength after ageing in inventive examples 4-8 that comprises both acid-modified rubber and acid tackifying resin rather than comparative examples 1-3 that comprise neither or only one of the rubber/resin components. However this data is not commensurate in scope with the claim language. For example, the language of claim 1 is drawn to any styrene block copolymer, any acid modified rubber, and any acid tackifying resin with a carboxylic group, wherein inventive examples only comprise 2-3 products for each of these categories. Furthermore, not only are the claimed ingredients (especially styrene block copolymer and acid modified rubber) extremely broad categories, but the claim language allows any amount of each of these components in the composition wherein the examples use each ingredient usually in the same amount or in a very narrow range. As such, there is no evidence that all claimed components in any amount would have the same unexpected results.
Applicant states Koike in view of Shimamura does not teach an acid value of at least 2.0 KOH / gram as presented in new claim 16.
In response, attention is drawn to the new rejection of claim 16 wherein Koike in view of Shimamura teaches the acid modified tackifying resin has an acid value preferably in the range of 0.1 to 50 mgKOH/g [Koike, 0034].
For these reasons, Applicant's arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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