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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-7, 9, 12, and 13 in the reply filed on March 30, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 8, 10, and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 30,2026.
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, 4-7, 9, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kajimaru et al. (US 20020061959 A1) in view of Morimoto et al. (US 20030083425 A1).
As to claim 1, Kajimaru discloses aqueous dispersion of polyester resin that is applied to a substrate to form a film with high waterproofness and high solvent resistance (0002). Kajimaru further discloses that the polyester resins have adhesion properties to variety of substrates so that it is used as binder components for adhesives (0004).
Further, as to claim 1, the polyester resin of Kajimaru has acid value of 8 to 40 mgKOH/g (0015), which converts to 142.56 eq/ton to 712.8 eq/ton, respectively. The examiner submits that acid value unit of mgKOH/g to eq/ton (metric ton) conversion is performed using 1 eq/ton = (acid value in mgKOH/g) * 17.82 formula. This formula is derived from the following:
1 mgKOH = 0.001 g KOH
Molecular weight of KOH is 56.11, thus 1 equivalent of KOH = 56.11 grams.
0.001/56.11 = 0.00001782 eq/g
Converting eq/g to eq/ton: 0.00001782 eq/g * (1*106) = 17.82 eq/ton ( using 1 metric ton = 1*106 grams)
Further, as to claim 1, Kajimaru discloses that the polyester resin is a copolymer of terephthalic acid (TPA)/ethylene glycol (EG)/1,2-propanediol (PG) (0027 and 0030). A person having ordinary skill in the art would recognize that ethylene glycol is claimed diol (a) having two primary hydroxy groups and having no alicyclic structure and 1,2-propanediol is a claimed diol (c) having one primary hydroxy group and one secondary hydroxy group and having no alicyclic structure.
Further, as to claim 1 recitation “substantially no curing agent”, this recitation is interpreted as understood by one of ordinary skill in the art as defined in the present specification. The specification states “The phrase “contains substantially no curing agent” means that “the content of a curing agent is less than 1 part by mass (in terms of a solid content) relative to 100 parts by mass (in terms of solid content) of polyester resin (A).” See 0035 of the published application). The examiner submits that the recitation “less than 1 part by mass” means the curing agent is not required (i.e. zero). Thus, “substantially no curing agent” means curing agent amount in the claimed adhesive resin composition is from 0 to less than 1 part by mass.
Kajimaru discloses “While the aqueous dispersion of the present invention may be used as is, it may be mixed further with a curing agent…” (0078). Given that the aqueous dispersion of Kajimaru is used as is, a person having ordinary skill in the art would recognize that the curing agent is not required in the aqueous dispersion of Kajimaru. Alternatively, when the curing agent is present in the aqueous dispersion of Kajimaru, lowest amount disclosed is 1 part by mass of curing agent to 99 parts by mass of the polyester resin (0096). The examiner submits that lowest amount of the curing agent disclosed in Kajimaru (1 part by mass) is very close to “substantially no curing agent” which encompasses value of 0.999 part by mass. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, because one of ordinary skill in the art would have found the adhesive resin composition of Kajimaru to have the same properties as the claimed adhesive resin composition. See MPEP 2144.05 (I).
Further, as to claim 1, regarding the acid value of the polyester resin of 100 eq/ton, if Kajimaru does not disclose the claimed acid value, Morimoto is relied upon to show why it would be obvious to one of ordinary skill in the art to arrive at the claimed acid value.
Morimoto discloses aqueous resin composition containing polyester resin and phenol resin (0002) that can be used as a vehicle for adhesives (0089). Further, Morimoto discloses that the polyester resin has acid value of 150 to 800 eq/106 g (ton), in order to avoid poor dispersibility in water and to avoid reduction in retort resistance (0053).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the polyester resin of Kajimaru having the claimed acid value, motivated by the desire to avoid poor dispersibility in water and to avoid reduction in retort resistance.
As to claim 2, Kajimaru does not explicitly disclose whether the polyester resin has a branched structure. However, Kajimaru discloses that the polyester resin is synthesized using polybasic acid having three or more functional groups such as pyromellitic acid (0023), which is identical to disclosed by the present specification for introducing branched structure (see 0050 of the published application). Thus, absent any factual evidence on the record, it is clear that the polyester resin of Kajimaru inherently has the branched structure.
As to claim 4, Kajimaru discloses acid components used in the synthesis of the polyester resin (0019). Further, Kajimaru discloses terephthalic acid (polycarboxylic acid having benzene skeleton) and aliphatic dicarboxylic acid (aliphatic polycarboxylic acid) (0019).
As to claim 5, Kajimaru discloses that acid components used in the synthesis of the polyester resin include unsaturated dicarboxylic acids (0019).
As to claim 6, Kajimaru discloses that the aqueous coating composition includes a curing catalyst (0087).
As to claim 7, Kajimaru alone or modified by Morimoto is silent as to disclosing amount of THF insoluble matter of less than 10 mass% as claimed. However, as set forth previously no difference is seen between the claimed adhesive resin composition and the adhesive resin composition of Kajimaru alone or modified by Morimoto. As such, it is clear that the adhesive resin composition of Kajimaru alone or modified by Morimoto inherently has the claimed amount of THF insoluble matter of less than 10 mass%.
As to claims 9, 12, and 13, these claims do not recite specific structure of “adhesive sheet”, “laminated film for decorating three-dimensional molded article”, and “a film for laminating metal can”. Kajimaru discloses coating film formed of the aqueous dispersion on a variety of substrate surface (0074). Further, as to claim recitations “laminated film for decorating three-dimensional molded article” and “film for laminating a metal can”, these recitations are deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP 2111.02. Given that the laminated film and the film of Kajimaru render obvious claimed laminated film and film, it meets the intended use.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kajimaru et al. (US 20020061959 A1) in view of Morimoto et al. (US 20030083425 A1), as applied to claim 1 above, and further in view of JP2008024726 A (“JP726A”; translation provided by applicant with the IDS submitted on February 21, 2024).
As to the diol (a) amount (20-80 mol%), Kajimaru discloses that ethylene glycol is contained in the amount of 10 to 65% by mole in the total of three alcohol components (1,2-propanol, neopentyl glycol, and ethylene glycol) (0027 and 0028). The claimed range of 20-80 mol% overlaps or within the range disclosed by Kajimaru such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
Kajimaru is silent as to disclosing the amount of diol (b) (5-50 mol%) or diol (c) (5-75 mol%) as claimed.
JP726A discloses aqueous dispersion of polyester resin (claim 1). JP726A further discloses that the aqueous dispersion is useful as binder component for an adhesive (0001). Further, JP726A discloses that the polyester resin is composed of polybasic acid component and polyhydric alcohol component, wherein the polyhydric component includes 50 mol% or more of 1,2-propanediol (diol (c) having one primary hydroxy group and one secondary hydroxy group and having no alicyclic structure) (0010). The claimed range of 5-75 mol% overlaps or within the range disclosed by JP726A such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
It would have been obvious to select the amount of diol (c) as claimed and as rendered obvious by JP726A, motivated by the desire to form polyester resin of Kajimaru and Kajimaru desires use of 1,2-propanediol in the formation of the polyester resin (0027 of Kajimaru).
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 1-7, 9, 12, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18681172 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 of the reference application render obvious adhesive resin composition of the presently claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 9, 12, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18687156 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of the reference application render obvious adhesive resin composition of the presently claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mieda et al. (US 20250215270 A1) discloses adhesive resin composition, Mieda et al. (US 12637539 B2) discloses polyester resin composition, Mieda et al. (US 20250066651 A1) discloses adhesive resin composition, WO2015087761 A1 discloses polyester resin composition and adhesive composition, JP20211254A discloses polyester resin with excellent pigment dispersibility and thermal stability.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
May 29, 2026
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