DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. JP 2021-191325 filed 11/25/2021, which papers have been placed of record in the file.
This application is a Continuation of application No. PCT/JP2022/043274, filed on Nov. 24, 2022.
Claims 1-8 are pending.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Misra et al. (US 2021/0317346) as evidenced by US 2014/0187895 and US 2023/0026411.
Regarding claim 1: Misra is directed to a hot melt adhesive comprising (A) styrene block copolymers ([0008]) (B) a tackifying resin and (C) a wax ([0072]).
Example 5 comprises SOLPRENE 1205, which is a styrene butadiene block copolymer as evidenced by US 2014/0187895 and SYLVALITE RE 100L (equivalent to a rosin ester tackifier with an acid value of 15 mg KOH/g and softening point of 98 ˚C as defined by the present invention) and SARAWAX SX 105 wax.
Misra doesn't specifically recite an odour detection level less than 30 level when 50 g of the hot melt adhesive is placed in 225 mL glass container with aluminium foil for 1 hour at 23 ˚C and measured with XP-329 IIIR immediately thereafter.
However, the hot melt adhesive in Misra is substantially identical to the hot melt adhesive produced in the instant invention. See Examples 1-13 of the present invention and working Example 6 of Misra.
Case law holds that 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). MPEP 2112.01(I).
Hence, Misra suggests a hot melt adhesive having an odour detection level less than 30 level when 50 g of the hot melt adhesive is placed in 225 mL glass container with aluminium foil for 1 hour at 23 ˚C and measured with XP-329 IIIR immediately thereafter. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claims 2-3: Example 6 comprises SOLPRENE 1205 a styrene butadiene block copolymer and SYLVALITE RE 100L (equivalent to a rosin ester with an acid value of 15 mg KOH/g and softening point of 98 ˚C as defined by the present invention).
Regarding claim 4: Example 5 comprises SOLPRENE 1205 a styrene butadiene block copolymer and SYLVALITE RE 100L (equivalent to a rosin ester with an acid value of 15 mg KOH/g and softening point of 98 ˚C as defined by the present invention).
Regarding claim 5: Example 6 comprises SARAWAX SX 105. Per US 2023/0026411, SARAWAX SX 105 has a melting point of 98 ˚C.
Regarding claim 6: A disposable product having the hot melt adhesive is disclosed.
Regarding claim 7: Misra doesn't specifically recite an odour detection level less than 25 level when 50 g of the hot melt adhesive is placed in 225 mL glass container with aluminium foil for 1 hour at 23 ˚C and measured with XP-329 IIIR immediately thereafter.
However, the hot melt adhesive in Misra is substantially identical to the hot melt adhesive produced in the instant invention. See Examples 1-13 of the present invention and working Example 6 of Misra.
Case law holds that 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). MPEP 2112.01(I).
Hence, Misra suggests a hot melt adhesive having an odour detection level less than 30 level when 50 g of the hot melt adhesive is placed in 225 mL glass container with aluminium foil for 1 hour at 23 ˚C and measured with XP-329 IIIR immediately thereafter. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 8: Example 6 comprises 5 parts by weight SOLPRENE 1205, 63 parts by weight Sylvalite RE 100L, and 1.2 parts by weight SARAWAX SX 105, and therefore Example 6 comprises (B1) in an amount of 20 parts by mass or more based on 100 parts by mass (A) (B) and (C).
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (JP 2018/022194) as evidenced by JPH 05155972 and US 2009/0087773.
Regarding claim 1: Tanaka is directed to a hot melt adhesive comprising (A) a thermoplastic block copolymer of a styrene vinyl type aromatic hydrocarbon and a conjugated diene compound of ethylene, butylene, propylene, isoprene (B) a tackifier resin and (C) a wax.
A rosin ester gum of Ester Gum 105 utilized in the working examples. Per JPH05155972, Ester Gum 105 has an acid value of 18 mg/KOH/g ([0031] JPH05155972).
Tanaka doesn't specifically recite an odour detection level less than 25 level when 50 g of the hot melt adhesive is placed in 225 mL glass container with aluminium foil for 1 hour at 23 ˚C and measured with XP-329 IIIR immediately thereafter.
However, the hot melt adhesive in Tanaka is substantially identical to the hot melt adhesive produced in the instant invention. See Examples 1-13 of the present invention.
Case law holds that 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). MPEP 2112.01(I).
Hence, Misra suggests a hot melt adhesive having an odour detection level less than 30 level when 50 g of the hot melt adhesive is placed in 225 mL glass container with aluminium foil for 1 hour at 23 ˚C and measured with XP-329 IIIR immediately thereafter. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 2: Ester Gum 105 has a softening point of 105 ˚C ([0031] JPH05155972).
Regarding claim 3: A rosin ester tackifier is disclosed by Tanaka.
Regarding claim 4: Example 1 comprises 20 parts by weight SIS, 40 parts rosin ester tackifier, and 5 parts paraffin, and therefore comprises (B1) in an amount of 20 parts or more based on 100 parts by mass (A) (B) and (C).
Regarding claim 5: Fisher Tropsch wax FT-100 was used in Example 2. Per US 2009/0087773, the melting point is 98 ˚C ([0099]).
Regarding claim 6: A label on a garbage bag utilizing the adhesive is disclosed.
Regarding claim 7: Tanaka doesn't specifically recite an odour detection level less than 25 level when 50 g of the hot melt adhesive is placed in 225 mL glass container with aluminium foil for 1 hour at 23 ˚C and measured with XP-329 IIIR immediately thereafter.
However, the hot melt adhesive in Tanaka is substantially identical to the hot melt adhesive produced in the instant invention. See Examples 1-13 of the present invention.
Case law holds that 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). MPEP 2112.01(I).
Hence, Misra suggests a hot melt adhesive having an odour detection level less than 25 level when 50 g of the hot melt adhesive is placed in 225 mL glass container with aluminium foil for 1 hour at 23 ˚C and measured with XP-329 IIIR immediately thereafter. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 8: Example 1 comprises 20 parts by weight SIS, 40 parts rosin ester tackifier, and 5 parts paraffin, and therefore comprises (B1) in an amount of 10 parts or more based on 100 parts by mass (A) (B) and (C).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
Prosecution Insights