DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed 6/23/2026 has been entered. Claims 7 and 17 have been canceled. New claims 21-22 have been added. Claims 1-6, 8-16, and 18-22 are pending in the application. Claims 18-19 have been withdrawn from consideration as being directed to non-elected inventions. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claims 1-6, 8-11, 13-16 and 20-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (CN111303824A, please refer to the attached machine translation for the below cited sections). Wang discloses a one-component, moisture-curing polyurethane hot melt adhesive comprising a hot melt adhesive matrix, a coupling agent, and additives, wherein the hot melt adhesive comprises an isocyanate-terminated polyurethane prepolymer as a main component (Paragraphs 0007 and 0020), and “is made by mixing epoxy resin, nano silica, polyether polyol, crystalline polyester polyol [as in instant claim 2], tackifying resin, acrylic resin, isocyanate and other raw materials to form the hot melt adhesive body, and then adding coupling agent and other additives to prepare polyurethane hot melt adhesive” (Paragraph 0033); wherein the additives comprise a leveling agent, an antioxidant, and a catalyst that is selected from amine catalysts (reading upon the claimed “at least one additive” of instant claim 10 and “further comprises at least one catalyst” as in instant claims 9 and 21). Wang discloses that in one embodiment, the “hot melt adhesive body comprises the following raw materials in parts by weight: epoxy resin: 30-60 parts; nano silica: 5-10 parts; polyether polyol: 20-60 parts; crystalline polyester polyol: 10-30 parts; tackifying resin: 2-10 parts; acrylic resin: 10-40 parts; and isocyanate: 10-30 parts” (Paragraph 0022); or “[o]ptionally, the hot melt adhesive body comprises the following raw materials in parts by weight: epoxy resin: 42 parts; nano silica: 6 parts; polyether polyol: 46 parts; crystalline polyester polyol: 22 parts; tackifying resin: 7 parts; acrylic resin: 18 parts; and isocyanate: 12 parts” (Paragraph 0023). Wang discloses that the crystalline polyester polyol (as in instant claim 2) has a number average molecular weight of 2000-4000 (falling within the claimed range as recited in instant claim 3; Paragraph 0025); that the polyether polyol includes, but is not limited to, at least one of PPG 400, PPG 1000, and PPG 2000 (i.e., “poly(oxypropylene)glycol” as in instant claim 4; Paragraph 0025); that the isocyanate includes, but is not limited to, at least one of diphenylmethane diisocyanate (MDI), toluene diisocyanate (TDI), hexamethylene diisocyanate (HDI), isophorone diisocyanate (IPDI), and 4,4-dicyclohexylmethane diisocyanate (HMDI) (as in instant claim 5; Paragraph 0025); and that the acrylic resin has a number average molecular weight of 30000-90000 (falling within the claimed range as recited in instant claim 6; Paragraph 0025). Wang discloses that the “tackifying resin includes, but is not limited to, at least one of hydrocarbon resins, rosin resins, terpene resins, and thermoplastic polyurethane resins” (Paragraph 0025), with working examples specifically utilizing VESTOPLAST® 508 (i.e., an amorphous polyalphaolefin that is also utilized in the working examples of the present application) as the tackifying resin (which inherently has a softening point of 84±4°C falling within the claimed range of 70°C to 95°C as recited in amended claim 1, and inherently has a number average molecular weight of less than 200,000 g/mol as in instant claim 8; as evidenced by the attached VESTOPLAST® Product Brochure, Entire document, particularly the Product Range table on pp. 14-15; and/or the attached MatWeb VESTOPLAST® 508 product information). More specifically, Wang discloses working examples comprising components reading upon the instantly claimed components as recited in instant claims 1-6, 8-10, and 21, including DMDEE (i.e., dimorpholinodiethyl ether as in instant claim 9) as an amine catalyst in the examples, with all of the examples (inventive and comparative) utilizing a content of DMDEE that based upon the total parts by weight of all the components of the example compositions, falls within the claimed range of 0.05% to 1% by weight as recited in instant claim 21 (Examples); and given the above content ranges disclosed by Wang, particularly with respect to the acrylic resin of 10-40 parts and the tackifying resin of 2-10 parts, with at least inventive Examples 2-3 including all of the components as instantly claimed with the 25 parts of acrylic resin (that may range from 10 to 40 parts) constituting 14.77% of the total weight of the composition of Examples 2-3 (just outside the claimed no greater than 14% as recited in instant claim 1) while the 5 parts of VESTOPLAST® 508 as the tackifying resin (that may range from 2 to 10 parts) constituting 2.95% of the total weight of the composition of Examples 2-3 falling within the claimed ranges as recited in instant claims 1, 16, and 22; and more particularly, with Comparative Example 1 specifically including all of the components and in amounts thereof as recited in instant claims 1-6, 8-10, 16, and 21-22, the Examiner takes the position that Wang, at least based upon the moisture-curable polyurethane hot melt adhesive composition of Comparative Example 1, anticipates instant claims 1-6, 8-10, 16 and 21-22, as well as instant claim 20 given that as discussed in detail in the prior office action, the broadly claimed “electronic device” is not specifically recited as being any particular “electronic device” nor as having any particular structure or “electronic components” such that the Examiner takes the position that the “electronic device” limitation in the preamble constitutes intended end use of the curable adhesive composition and does not provide any additional structural or material limitations to differentiate the claimed invention from the invention disclosed by Wang.
Further, and particularly with respect to instant claims 11 and 13-15, inventive Example 7 of Wang includes all of the claimed components and in contents as recited in instant claims 1-6, 8-11, and 13-16 except for any specific reference to the content of VESTOPLAST® 508 as the tackifying resin, reading upon the claimed amorphous polyalphaolefin, as utilized in inventive Example 1, however, given that Paragraph 0111 recites that the difference between Example 7 and Example 1 “lies in the adjustment of the amount of each raw material, namely…” as recited in Paragraphs 0112-0121 such that absent any clear indication of any difference in amount of the VESTOPLAST® 508 as utilized in Example 1 or absence thereof as clearly indicated with respect to Comparative Example 4 (Paragraph 0129), one may interpret inventive Example 7 as thus including the same content of the VESTOPLAST® 508 as was present in Example 1, i.e., 5 parts; and/or given that Wang clearly discloses that the tackifying resin is present in a content of 2-10 parts, and particularly 7 parts as noted above, wherein any amount within said content range of the VESTOPLAST® 508 disclosed by Wang would provide percentages of the claimed components as instantly claimed, the Examiner further takes the position that Wang discloses the claimed invention with sufficient specificity to anticipate instant claims 11 and 13-15 as well as instant claims 1-6, 8-10, 16 and 20-22 as discussed above.
Claim Rejections - 35 USC § 103
Alternatively (or additionally), claims 1-6, 8-11, 13-16, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied above to claims 1-6, 8-11, 13-16, and 20-22 and further discussed below.
The teachings of Wang are discussed in detail above, and incorporated herein by reference, and although the Examiner is of the position that the reference is anticipatory for the reasons discussed above, the Examiner alternatively and/or additionally notes that given the recited components of the adhesive composition and contents thereof as taught by Wang, particularly the exemplified components as recited in Paragraph 0025 and utilized in the working examples (Examples), wherein the only difference between inventive Example 7 of Wang and the claimed invention as recited in instant claims 1-6, 8-11, 13-16 and 20-22 is a specific reference to a content of VESTOPLAST® 508, reading upon the claimed amorphous polyalphaolefin having a softening point as claimed, as the 5 parts of tackifying resin as specifically utilized in other working examples, and that Wang clearly teaches that the tackifying resin is present in a content of 2-10 parts by weight, the Examiner alternatively takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate VESTOPLAST® 508 as the tackifying resin in any amount within the 2 to 10 parts range taught by Wang into inventive Example 7, and/or to utilize any of the exemplified components in any amounts within the ranges taught by Wang, thereby rendering the claimed invention as recited in instant claims 1-6, 8-11, 13-16 and 20-22 obvious over the teachings of Wang, given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Claims 1-6, 8-16, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Wei (CN113322043A, again please refer to the machine translation submitted with the IDS filed 7/15/2025, for the below cited sections), for generally the reasons recited in the prior office action, and incorporated herein by reference, with further discussion below with respect to the amended claims.
As discussed in the prior office action, Wei teaches a reactive polyurethane hot melt adhesive modified with polyolefin which comprises, by mass, 20 to 40 parts of polyether diol; 2 to 10 parts of amorphous copolyester; 10 to 25 parts of acrylic resin (overlapping the claimed range of no greater than 14% by weight, based on the total weight of the adhesive composition, as recited in instant claim 1); 15 to 30 parts of diphenylmethane diisocyanate; 10 to 20 parts of amorphous-α-polyolefin; 0.01 to 1 part of catalyst; 0.01 to 2 parts of antioxidant; 0.1 to 2 parts of chain extender; and 0.1 to 5 parts of silane coupling agent (Paragraphs n0018); wherein the adhesive composition is moisture-curable (Paragraphs n0002 and n0044) and may further comprise 15 to 25 parts of liquid polyester diol (hence, the acrylic resin may constitute as low as about 7% by mass to as high as about 28.7% by mass based upon the above parts by mass ranges and no requirement that the total thereof must equal 100 parts by mass; while the amorphous-α-polyolefin may be as low as 6.67% by mass and high as 24.3% by mass, such that both may overlap the claimed amounts as recited in instant claim 1; Entire document, particularly Paragraphs n0008-n0020; Claims 1-2). Wei teaches that the amorphous α-polyolefin is a silane-grafted amorphous α-polyolefin that improves the softening point of the adhesive, wherein the amorphous α-polyolefin is a copolymer or terpolymer of ethylene, propylene, and 1-butene (Paragraphs n0044); and although Wei does not specifically limit the softening point thereof, Wei does teach working examples utilizing VESTOPLAST® 206 which is known to have a softening point of 98 ± 4°C as determined by the ring and ball method as established on the record, and thus a ring-and-ball softening point range of 94°C to 102°C, overlapping the claimed “from 70°C to 95°C” range as recited in amended claim 1, and hence, rendering the claimed softening point range obvious given that a prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (see MPEP § 2144.05).
More specifically, Wei teaches a working example, Example 1, comprising 22 parts of a polyoxypropylene glycol (PPG1000 – (b) a polyether polyol as recited in instant claims 1 and 4, and in an amount as recited in instant claim 13) having a number average molecular weight of 1000, 20 parts of a polyester polyol (“at least one polyester polyol” as in instant claim 1 and particularly as in instant claim 2 given that all polyester polyols are characterized as crystalline, amorphous, or “liquid”) having a number average molecular weight of 2000 (as in instant claim 3), 10 parts of an amorphous copolyester, 15 parts of a (meth)acrylic copolymer (“at least one (meth)acrylic polymer as in instant claim 1) that is a methyl methacrylate/n-butyl methyl acrylate copolymer with a softening point of 150-180°C, 0.5 parts of a first antioxidant (“at least one additive” as in instant claim 10), 0.5 parts of a second antioxidant (also reading upon “at least one additive” as in instant claim 10), 0.8 parts of 1,4-butanediol, and 20 parts of diphenylmethane diisocyanate (as in instant claim 5 and in an amount as recited in instant claim 14) that are preliminarily reacted, thereby forming a polyurethane prepolymer that is obtained by reacting a reactant mixture of a polyol mixture and at least one polyisocyanate as recited in instant claim 1, followed by addition of 0.1-5 parts of silane coupling agent (also reading upon “at least one additive” as in instant claim 10), 10 parts of the above VESTOPLAST® 206 silane-grafted amorphous-α-polyolefin (“at least one amorphous polyalphaolefin” as in instant claim 1, wherein it is again noted that VESTOPLAST® 206 has a number average molecular weight of less than 200,000 g/mol as in instant claim 8 as established on the record), and 0.01 parts of dibutyltin dilaurate (“at least one catalyst” as in instant claims 9 and 21, and particularly an organometallic compound as in instant claim 9 and in a content as in instant claim 21) to obtain a moisture-curable, polyolefin-modified reactive polyurethane hot melt adhesive that based upon the above parts by mass, has a content of the acrylic resin of 14.4% by mass (just outside of the claimed “no greater than 14% by weight” as instantly claimed) and a content of the amorphous-α-polyolefin of 9.6% by weight (as in instant claims 1 and 16), based on the total weight of the adhesive composition comprising the 5 parts of silane coupling agent. Hence, given the above content ranges taught by Wei, and particularly the above inventive Example 1 wherein the 15 parts of acrylic resin constitutes 14.4% by mass of the total weight of the adhesive composition and that Wei clearly teaches that the acrylic resin may be present in a content of 10 to 25 parts by mass such that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize 10 parts by mass of the acrylic resin in working Example 1, thereby providing an amount of the acrylic resin of “no greater than 14% by weight based on the total weight of the adhesive composition” as recited in instant claim 1, and more particularly, “an amount of from 0.1% to 12% by weight, based on the total weight of the adhesive composition” as recited in instant claim 15, the Examiner maintains her position that the claimed invention as recited in instant claims 1-5, 8-10, 13-16, and 20 as well as new claim 21 would have been obvious over the teachings of Wei, given that it is well established that a prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art, and/or that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, particularly in the absence of any clear showing of expected results over inventive Example 1 and/or the above teachings of Wei.
With respect to instant claim 6, although Wei teaches that the acrylic resin utilized in the examples has a softening point of 150-180°C, Wei does not teach that the acrylic resin has a number average molecular weight (Mn) of 5,000 to 100,000 g/mol as instantly claimed. However, given that Wei utilizes an amorphous copolyester having a number average molecular weight of 5,000 in the working examples, with the VESTOPLAST® 206 amorphous-α-polyolefin utilized in the working examples having a Mn of 10,600 (as evidenced by Zhang, Paragraph 0052), it would have been obvious to one having ordinary skill in the art to utilize a similar number average molecular weight (Mn) for the acrylic resin, particularly given that Wei teaches that the acrylic resin, a copolymer of methyl methacrylate and n-butyl methyl acrylate, has a softening point of 120-180°C (Paragraph n0026) which is typical of methyl methacrylate/n-butyl methyl acrylate resin having Mn values within the broadly claimed Mn range. Hence, absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 6 would have been obvious over the teachings of Wei.
With respect to instant claims 11-12, as noted above, Wei clearly teaches that the adhesive composition may contain 20 to 40 parts of polyether diol, 15 to 30 parts of diphenylmethane diisocyanate, 15 to 25 parts of liquid polyester diol, as well as 2 to 10 parts of amorphous copolyester that may actually be a polyester polyol, such that based upon the total parts by mass of all the components as discussed above, Wei provides a clear teaching and/or suggestion that the polyurethane prepolymer produced from the above polyol and diisocyanate components may overlap the claimed 66% to 99% by weight range of instant claim 11, as well as the polyester/polyester polyol components overlapping the claimed 30 to 70% by weight range of instant claim 12, such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 11-12 would have been obvious over the teachings of Wei.
With respect to new claim 22, as discussed in detail above, Wei clearly teaches and/or suggests that the amorphous-α-polyolefin may be present in the composition in a content as low as 6.67% by mass thereby overlapping the claimed amount of from 1% to 8% by weight, and hence rendering the claimed invention as recited in instant claim 22 obvious over the teachings of Wei given again that a prima facie case of obviousness exist where the claimed ranges overlap ranges disclosed by the prior art.
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive and/or moot in view of the new grounds of rejection above and the additional discussion with respect to the teachings of Wei as applied above to the amended claims. Specifically with respect to the obviousness rejection over Wei, the Applicant respectfully disagrees that the working examples taught by Wei utilized VESTOPLAST® 206, which the Examiner again notes has a known softening point of 98 ± 4°C as determined by the ring and ball method as established on the record and thus a ring-and-ball softening point range of 94°C to 102°C, overlapping the claimed range of “from 70°C to 95°C” as recited in amended claim 1, would render the claimed invention obvious; arguing that “the present application and the Wei reference aim to solve different technical problems, which [allegedly] limits the motivation of one of skill in the art to look to Wei to solve the problem of the instant application” (see page 8, last two paragraphs). The Applicant argues that “Wei is directed to improving adhesion of its compositions to nonpolar substrates, particularly via introduction of silane groups to polyolefins,” while “[i]n contrast, the present application aims to provide a ‘moisture-curable polyurethane hot melt adhesive that exhibits high initial cross tensile strength and excellent impact resistance when cured’,” arguing that “[t]hese are fundamentally different problems” and that “[t]hus, one of skill in the art would [allegedly] not look to Wei for guidance regarding improving strength and impact resistance of adhesive compositions” (see page 8, last paragraph through page 9, first paragraph). However, the Examiner notes that the instant claims do not require any particular “high initial cross tensile strength and excellent impact resistance” properties when cured, and the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Hence, given that the instant claims are directed to the curable composition not the cured adhesive having any specific properties, e.g., the intended end use of the claimed curable composition; and that Wei clearly teaches a moisture-curable polyurethane hot melt adhesive composition comprising the same components as in the instantly claimed invention and in amounts that read upon and/or overlap the claimed ranges such that the claimed moisture-curable polyurethane hot melt adhesive composition as recited in the claims would have been obvious over the teachings of Wei, especially in light of the working examples of Wei, Applicant’s arguments with respect to the different problems to be solved, e.g., the intended end use of the curable composition, are not persuasive.
The Applicant additionally argues that “Wei describes broad ‘parts by weight’ ranges of its components without recognition of solubility limits, phase failure, or softening point threshold” and that “[i]n contrast, the Examples of the present application [allegedly] support the criticality of the claimed ranges, particularly that the at least one (meth)acrylic polymer has an upper bound of 14% by weight, that the at least one amorphous polyalphaolefin has an upper bound of 20% by weight, and that the at least one amorphous polyalphaolefin has a softening point of from 70°C to 95°C” with specific discussions of pages 9-10 comparing the various examples in the present application to support Applicant’s arguments of alleged criticality and alleged “crucial advantage” of the claimed invention that was not recognized in the art. Specifically, the Applicant first compares Example 3 with Comparative Example 6, wherein Example 3 provides a (meth)acrylic polymer concentration of 9.80% while Comparative Example 6 provides a concentration of 14.02% falling outside of the claimed range, arguing that the composition of Example 3 provided a homogeneous adhesive composition while Comparative Example 6 was not able to provide a homogeneous adhesive composition due to insolubility of the (meth)acrylic polymer. However, the Examiner notes that the instant claims do not require the adhesive composition to be “homogeneous” nor require any particular solubility of the (meth)acrylic polymer in the adhesive composition, and given that the different solubility results of Example 3 and Comparative Example 6 are based upon a specific (meth)acrylic polymer in a specific adhesive composition formed mixed under specific conditions, one having ordinary skill in the art could not reasonably extent the probative value thereof to any (meth)acrylic polymer as broadly claimed, especially given that one skilled in the art would clearly understand that the solubility of a (meth)acrylic polymer in a particular composition is dependent not only upon the mixing conditions utilized, but also upon the monomers and contents thereof as well as the molecular weight of said (meth)acrylic polymer. Hence, given that all of Applicant’s examples only utilize ELVACITE™ 2013, a specialty low molecular weight acrylic polymer that is a terpolymer of methyl methacrylate and n-butyl methacrylate with a minor amount of methacrylic acid providing an acid number of 3.9 and having a glass transition temperature (Tg) of 76°C (as evidenced by the attached ELVACITE™ 2013 Technical Data Sheet and ELVACITE™ Safety Data Sheet), while the instant claims more broadly recite “at least one (meth)acrylic polymer” with the only limitation thereof being a broad number average molecular weight (Mn) range of 5,000 to 100,000 g/mol as recited in instant claim 6, such that one skilled in the art could not reasonably extend the probative value of Applicant’s results to any (meth)acrylic polymer as more broadly claimed, or to any (meth)acrylic polymer having a Mn of 5,000 to 100,000, the Examiner takes the position that Applicant’s data and results are not commensurate in scope with the instant claims.
However, even if the data were commensurate in scope with the claims, the data would be insufficient to overcome the obviousness rejection based upon Wei given that the data fail to support any clear showing of criticality and/or “unexpected” results of the claimed invention over the teachings of the closest prior art to Wei given that the data and results are based upon Applicant’s comparative examples, not the teachings of Wei, and with Applicant’s examples only including a limited number of data points that fail to show criticality of the claimed “no greater than 14% by weight” considering the closest high data point within the claimed range is at 9.9% which is considerably lower than the claimed 14% endpoint and there are no data points below 7.84% other than at no content (i.e., 0%) of (meth)acrylic polymer, e.g., would 12% by weight, i.e., the upper endpoint as recited in instant claim 15, or 0.1% by weight, i.e., the lower endpoint as recited in instant claim 15, also provide a “homogenous” composition and/or the other properties as argued by the Applicant as being crucial to solving the problem(s) addressed by the present invention?
Next, the Applicant compares Example 1 containing the amorphous polyalphaolefin (APAO) VESTOPLAST® 508 at a content of 1% to Comparative Example 2 containing 20.2% of the VESTOPLAST® 508, arguing that Example 1 was able to provide a homogenous adhesive composition whereas Comparative Example 2 with an APAO content above the claimed 20% upper endpoint could not obtain a homogeneous composition as the APAO was outside of the claimed range, and thus, “the 20% upper bound imposed by claim 1 is not an arbitrary value; it provides a crucial advantage to the claimed composition that [allegedly] was not recognized in the art” (see paragraph bridging pages 9-10). However, similar to the discussion above with respect to the content of (meth)acrylic polymer, the instant claims do not require a “homogeneous” composition. The Examiner also notes that the results in general are not “unexpected” given that one skilled in the art would readily understand that solubility and/or compatibility of a given APAO blended into a resin composition is dependent upon, among other variables, the concentration thereof, wherein at a concentration beyond a particular saturation point or critical threshold, it is known that the blend may undergo phase separation upon cooling, and given that the highest data point of Applicant’s examples within the claimed range is at 4.9%, substantially lower than the 20% upper bound, it cannot be concluded from the data that the 20% upper bound is not an arbitrary value, e.g., does the 20% endpoint actually provide a “homogeneous” composition and/or are there any differences, unexpected or otherwise, between the comparative composition at 20.2% and a composition at the 20% endpoint? What about 19% or 15% or any of the values within the 75+% portion of the claimed range not represented by any data points? Hence, Applicant’s arguments with respect to the content of the amorphous polyalphaolefin are not persuasive.
Lastly, the Applicant argues on page 10 that “the selection of the amorphous polyolefin itself is critical to the performance of the claimed compositions,” referring to Examples 3 and 4 which utilize VESTOPLAST® 508 with a softening point of 84°C and VESTOPLAST® 520 with a softening point of 87°C, respectively, in comparison to Comparative Examples 3 and 4 utilizing VESTOPLAST® 408 with a softening point of 118°C and VESTOPLAST® 708 with a softening point of 106°C, respectively; wherein “the compositions of Examples 3 and 4 provided homogeneous adhesive compositions, whereas in Comparative Examples 3 and 4, homogeneous adhesive composition[s] could not be obtained due to precipitation of the amorphous polyalphaolefin and granule formation” (page 10, first full paragraph). The Applicant thus argues that the claimed “70 to 95°C softening point range imposed by claim 1 is not an arbitrary value; it provides a crucial advantage to the claimed composition that [allegedly] was not recognized in the art.” However, the Examiner first notes that the original disclosure at the time of filing, including original claim 1, recites a softening point range for the invention of less than 100°C, and although the claimed “from 70°C to 95°C” is recited as a preferred range, the original disclosure does not provide any indication of any criticality within respect to the claimed “from 70°C to 95°C” range in comparison to the broader less than 100°C range, such that the narrower 70°C to 95°C range does appear to be arbitrary. It is also noted that the results argued by the Applicant would not be considered “unexpected” by one having ordinary skill in the art given that all of Applicant’s working examples are initially heated to a temperature of 130 to 140°C, i.e., above the softening points of all of the exemplified APAOs, but then the temperature is decreased to 95°C, below the softening points of the two APAOs utilize in Comparative Examples 3 and 4, but not below the softening points of the two APAOs utilized in Examples 3 and 4, such that it would have been reasonable for one skilled in the art to expect the APAOs in these two comparative examples to solidify at said temperature, and given that the temperature of the reaction mixture of each of the examples is from 105°C to 115°C, not higher than the 118°C softening point of VESTOPLAST® 408 nor higher or substantially higher than the 106°C softening point of VESTOPLAST® 708, for a total reaction time of 90 minutes, such that the APAOs in Comparative Examples 3 and 4 would substantially remain as solids, Applicant’s results that a “homogeneous” adhesive composition could not be obtained in these two comparative examples given that the APAO precipitated out during the reaction would not be considered “unexpected”. Further, as discussed in detail above, the instant claims do not require the adhesive composition to be “homogeneous” as argued by the Applicant, and even if the claims did require the adhesive composition to be a “homogeneous” adhesive composition, the Applicant provides no showing or evidence that the exemplified compositions disclosed by Wei would not be homogeneous, especially given that unlike Applicant’s comparative examples, Wei specifically utilizes a silane-grafted APAO, providing dual polarity (e.g., the non-polar APAO backbone and the polar silane grafted functional groups) allowing for greater compatibility with both polar and non-polar components of the composition, and utilizes a reaction temperature higher than the softening point of the silane-grafted APAO.
The Applicant then argues that Wei discloses only VESTOPLAST® 206 which, as admitted by the Action, has a softening point of 98±4°C, arguing that said value “represents a single measured value subject to experimental variability inherent in the ring and ball method, not a disclosure of a discrete compositional range selected for use” and that “[o]ne of skill in the art would understand that enumerated softening points inherently contain some experimental uncertainty,” but that “[s]uch experimental variability [allegedly] does not constitute a teaching of materials having nominal softening points at or below 95°C” and “instead reflects variation around a nominal value of 98°C” (see paragraph bridging pages 10-11). The Applicant argues that “[i]n contrast, the presently claimed range reflects a purposeful selection tied to maintaining homogeneous compositions and avoiding phase separation, which [allegedly] is neither taught nor recognized by Wei” and hence the claimed “70 to 95°C range” is allegedly not obvious in view of Wei. However, the Examiner respectfully disagrees and notes that one skilled in the art would clearly interpret the 98±4°C softening point as a softening point range of 94-102°C which overlaps the claimed 70 to 95°C range, and hence renders the claimed range obvious to one skilled in the art given that a prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (see MPEP § 2144.05; also see for example, the MatWeb VESTOPLAST® 508 product information which lists the “Ring & Ball Softening Point” of VESTOPLAST® 508 as a range of “80.0-88.0°C” which is equivalent to the 84±4°C recited in the present application and in the VESTOPLAST® Product Brochure). However, even if one was to consider the softening point of the exemplified APAO utilized by Wei as being a single data point at 98°C, the Examiner would still be of the position that the claimed 70-95°C range would have been obvious to one skilled in the art given that as noted in MPEP § 2144.05, “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close,” especially given that the Applicant provides no showing of criticality and/or unexpected results with respect to the claimed 95°C softening point over the 98°C softening point disclosed by Wei. Hence, Applicant’s arguments with respect to the claimed APAO and softening point range are not persuasive.
Thus, absent any clear showing of criticality and/or unexpected results with respect to the claimed invention as recited in instant claims 1-6, 8-16, and 20-22 over the teachings of Wei, the Examiner maintains her position that the claimed invention would have been obvious over Wei for the detailed reasons above. Additionally, the Examiner notes that Applicant’s data, results, and arguments as applied to Wei would also be unpersuasive if applied to the above teachings of newly recited reference to Wang as presented in the new grounds of rejection above for essentially the same or similar reasons as discussed by the Examiner in response to Applicant’s arguments over Wei.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 6/23/2026.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
Prosecution Insights