DETAILED ACTION
Claims 1-2 are pending. Claims 1-2 are rejected.
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites, "the stretch adhesive composition exhibits an initial creep resistance of about 35% or less and an aged creep resistance, after about 27 days at about 40°C," in lines 16-17. What is the aged creep resistance of the adhesive composition? It is not clear if a specific aged creep resistance is required in the claim. Since no value is recited in the claim, and since any adhesive composition would possess some degree of aged creep resistance, the Examiner will interpret any adhesive composition would meet this limitation.
Regarding dependent claim 2, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Jiang et al. (US 2010/0179268) (Jiang) in view of Fujinami et al. (US 2015/0368522) (Fujinami) and Knutson et al. (US 2013/0060215) (Knutson).
Regarding claims 1-2
Jiang teaches an adhesive composition consisting of a semi-crystalline propylene copolymer possessing a heat of fusion between about 10 and about 70 J/g, a melting point of less than 130ºC, and a viscosity of less than 25 Pas measured at 190ºC. The adhesive composition comprises at least 70 wt% of the semi-crystalline propylene copolymer, up to 10 wt% of a functionalized polyolefin, up to 10 wt% of a non-functionalized wax, up to 15 wt% of a tackifier, and up to 10 wt% of additives, such as plasticizers, stabilizers, antioxidants, fillers, cross-linking agents. Since the adhesive composition is for elastic attachment, it follows the adhesive composition is a stretch adhesive. The adhesive composition is used for elastic attachment in sanitary articles. See, e.g., abstract and paragraphs [0020-0021], [0032-0033], [0065-0070], [0074], [0084], [0102], [0112-0113], [0121-0124], and [0130]. Given Jiang does not require
It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Although Jiang measures the viscosity of the semi-crystalline propylene copolymer at 190ºC, given that Jiang discloses the viscosity as the presently claimed and the absence of evidence of the criticality of how the viscosity is measured, it is the examiner's position that the viscosity disclosed by Jiang meets the claim limitation.
Jiang does not explicitly teach the storage modulus of the semi-crystalline propylene co-polymer (A) or the functionalized polyolefin is a functionalized polyethylene (B).
With respect to the difference, Fujinami (A) teaches a propylene-based polymer for enhancing heat creep resistance of a hot melt adhesive. The hot melt adhesive is used in sanitary articles. See, e.g., abstract and paragraphs [0239]. Fujinami teaches controlling the balance between the stretchability and rigidity (elasticity) of the resin allows for improved heat creep resistance. Controlling this balance is done by setting the modulus of elasticity in tension to a specific range. The modulus of elasticity in tension is controlled with in a desired range by adjusting the polymerization conditions (a reactive temperature, a reaction time, a catalyst, or a promoter). From the viewpoint of the adhesive strength between a hot-melt adhesive and an adherend, in order to bring the hot-melt adhesive into close contact with the irregularities of the surface of the adherend, it is important that the hot-melt adhesive is moderately soft, and on the other hand, in order to prevent the hot-melt adhesive brought into close contact with the irregularities of the surface of the adherend from being easily peeled off, it is important that the hot-melt adhesive is moderately hard. Paragraphs [0023-0026].
Fujinami and Jiang are analogous art as they are both drawn to hot melt adhesive compositions comprising propylene-based polymers for sanitary articles.
In light of the motivation provided by Fujinami, it therefore would have been obvious to one of ordinary skill in the art to optimize the modulus of elasticity in tension at 40ºC and 1 Hz of the semi-crystalline propylene co-polymer of Jiang by modifying the polymerization conditions, including over the claimed range of the storage modulus, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the modulus of elasticity in tension at 40ºC, in order to improve the heat creep resistance of the hot melt adhesive, ensure the adhesive is soft enough to adhere to the irregularities of the surface of the adherend, and ensure the adhesive is hard enough such that the adhesive is not easily peeled off, and thereby arrive at the claimed invention.
With respect to the difference, Knutson (B) teaches a hot melt adhesive composition comprising a semi-crystalline propylene copolymer for use in disposable absorbent articles, such as diapers. The hot melt adhesive composition further includes a functionalized polyolefin, such as functionalized polyethylene. The functionalized polyethylene improves adhesion. See, e.g., abstract and paragraphs [0033] and [0057].
Knutson and Jiang in view of Fujinami are analogous art as they are both drawn to hot melt adhesive compositions comprising propylene-based polymers for sanitary articles.
In light of the motivation as provided by Knutson, it therefore would have been obvious to one of ordinary skill in the art to use functionalized polyethylene as the functionalized polyolefin of Jiang in view of Fujinami, in order to improve adhesion of the hot melt adhesive and as Knutsion teaches functionalized polyethylene is a suitable functionalized polyolefin for a hot melt adhesive used for sanitary articles, and thereby arrive at the claimed invention.
Given that the composition and material of the hot melt adhesive of Jiang in view of Fujinami and Knutson is substantially identical to the composition and material as used in the present invention, as set forth above, it is clear that the hot melt adhesive of Jiang in view of Fujinami and Knutson would intrinsically have an initial creep resistance of about 35% or less and would possess an aged creep resistance after 28 days at about 40ºC, as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Since no specific value for aged creep resistance is recited in the claim, and since any adhesive composition would possess some degree of aged creep resistance, the adhesive composition meets the claim requirement.
Claims 1 is rejected under 35 U.S.C. 103 as being unpatentable over Knutson et al. (US 2013/0060215) (Knutson) in view of Fujinami et al. (US 2015/0368522) (Fujinami).
Regarding claim 1
Knutson teaches a hot melt adhesive composition consisting of a semi-crystalline copolymer of propylene and a polyethylene wax. The semi-crystalline propylene copolymer possesses a viscosity of about 0.2 Pas to 25 Pas measured at 190ºC, a melting temperature of about 131ºC to about 170ºC, and a heat of fusion of about 30 J/g to 80 J/g. The semi-crystalline propylene copolymer is present in an amount from about 50 wt% to 99.5 wt %. The polyethylene wax is present in an amount from about 0.1wt% to 15 wt%. The hot melt adhesive composition further includes a functionalized polyolefin, including functionalized polyethylene, in an amount of 0.1 wt% to 10 wt % to improve adhesion. The hot melt adhesive composition further includes a tackifier in an amount of 1 wt% to 30 wt% to improve thermal stability. Since the hot melt adhesive composition does not require additional components, it follows the hot melt adhesive consists of the semi-crystalline propylene copolymer, polyethylene wax, functionalized polyethylene, and tackifier. See, e.g., abstract and paragraphs [0026-0030], [0033-0034], [0036-0037], [0044], and claims 1, 4, and 10-11. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Although Knutson measures the viscosity of the semi-crystalline propylene copolymer at 190ºC, given that Knutson discloses the viscosity as the presently claimed and the absence of evidence of the criticality of how the viscosity is measured, it is the examiner's position that the viscosity disclosed by Knutson meets the claim limitation.
With respect to the difference, Fujinami teaches a propylene-based polymer for enhancing heat creep resistance of a hot melt adhesive. The hot melt adhesive is used in sanitary articles. See, e.g., abstract and paragraphs [0239]. Fujinami teaches that controlling the balance between the stretchability and rigidity (elasticity) of the resin allows for improved heat creep resistance. Controlling this balance is done by setting the modulus of elasticity in tension to a specific range. The modulus of elasticity in tension is controlled with in a desired range by adjusting the polymerization conditions (a reactive temperature, a reaction time, a catalyst, or a promoter). From the viewpoint of the adhesive strength between a hot-melt adhesive and an adherend, in order to bring the hot-melt adhesive into close contact with the irregularities of the surface of the adherend, it is important that the hot-melt adhesive is moderately soft, and on the other hand, in order to prevent the hot-melt adhesive brought into close contact with the irregularities of the surface of the adherend from being easily peeled off, it is important that the hot-melt adhesive is moderately hard. Paragraphs [0023-0026].
Fujinami and Knutson are analogous art as they are both drawn to hot melt adhesive compositions comprising propylene-based polymers for sanitary articles.
In light of the motivation provided by Fujinami, it therefore would have been obvious to one of ordinary skill in the art to optimize the modulus of elasticity in tension at 40ºC of the semi-crystalline propylene co-polymer of Knutson by modifying the polymerization conditions, including over the claimed range, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the modulus of elasticity in tension at 40ºC, in order to improve the heat creep resistance of the hot melt adhesive, ensure the adhesive is soft enough to adhere to the irregularities of the surface of the adherend, and ensure the adhesive is hard enough such that the adhesive is not easily peeled off, and thereby arrive at the claimed invention.
Given that the composition and material of the hot melt adhesive of Knutson in view of Fujinami is substantially identical to the composition and material as used in the present invention, as set forth above, it is clear that the hot melt adhesive of Knutson in view of Fujinami would intrinsically have an initial creep resistance of about 35% or less and would possess an aged creep resistance after 28 days at about 40ºC, as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Since no specific value for aged creep resistance is recited in the claim, and since any adhesive composition would possess some degree of aged creep resistance, the adhesive composition meets the claim requirement.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,970,635. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons set forth below.
The present claims require a stretch adhesive composition consisting of:
between about 25 wt. % to about 75 wt. % of a single semi-crystalline propylene co-polymer characterized by
a heat of fusion (ΔHm) of between about 4 J/g and about 30 J/g;
a DSC melting temperature of 125° C. to 165° C., measured in accordance with ASTM 3418-12;
a storage modulus (E′) at 40° C. and 1 Hz of between about 3.0×108 dyn/cm2 and about 1.7×109 dyn/cm2; and
a viscosity (η) at 200° C. of between about 2 Pa·s and about 100 Pa·s,
between about 1 wt. % and about 5 wt. % of an adhesion promoter that is a functionalized polyethylene, functionalized tackifier, functionalized plasticizer, or a mixture thereof;
between about 10 wt. % and about 55 wt. % of a tackifier; and
optionally, up to 8 wt. % of a plasticizer; up to 2 wt % of an antioxidant, stabilizer, crosslinking agent, filler, colorant, rheology modifier, or a mixture thereof; and up to 10 wt % of a non-functionalized wax;
wherein the stretch adhesive composition exhibits an initial creep resistance of about 35% or less and an aged creep resistance, after about 28 days at about 40° C.,
wherein the wt % is based on the weight of the stretch adhesive composition.
The patented claims require a stretch adhesive composition consisting of:
between about 25 wt. % to about 65 wt. % of a single semi-crystalline propylene co-polymer characterized by
a heat of fusion (ΔHm) of between about 20 J/g and about 24 J/g;
a DSC melting temperature of 125° C. to 165° C., measured in accordance with ASTM 3418-12;
a storage modulus (E′) at 40° C. and 1 Hz of between about 3.0×108 dyn/cm2 and about 1.7×109 dyn/cm2; and
a viscosity (η) at 200° C. of between about 2 Pa·s and about 100 Pa·s,
between about 1 wt. % and about 5 wt. % of an adhesion promoter that is a functionalized polyethylene, functionalized tackifier, functionalized plasticizer, or a mixture thereof;
between about 10 wt. % and about 55 wt. % of a tackifier; and
optionally, up to 8 wt. % of a plasticizer; up to 2 wt % of an antioxidant, stabilizer, crosslinking agent, filler, colorant, rheology modifier, or a mixture thereof; and up to 10 wt % of a non-functionalized wax;
wherein the stretch adhesive composition exhibits a creep resistance of about 35% or less for both an initial creep resistance and an aged creep resistance, after about 28 days at about 40° C.,
wherein the wt % is based on the weight of the stretch adhesive composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE X NISULA whose telephone number is (571)272-2598. The examiner can normally be reached Mon - Fri 9:30 - 5:00.
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/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789