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 .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
NEW REJECTIONS: NECESSITATED BY AMENDMENT
Claim Rejections - 35 USC § 103
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, 3-10, and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0127614 (Jiang et al.) in view of US 20130090421 A1 (Vitrano et al.) and further in view of US 2018/0086945 (Harada et al.).
Re claims 1, 3-10, and 12-19, Jiang essentially teaches the claimed invention within overlapping ranges (see [49, 96, 443, 446]), save the exact range and styrene elastomer as claimed, re claim 15, see [57]. Given the same material and amounts are taught, the properties not recited are inherent (i.e. claim 17).
Vitrano teaches [12, 23-26] – hydrogenated petroleum resin, [32], [65] the hot melt adhesive composition within overlapping ranges of that claimed to provide low viscosity, superior adhesion characteristics, increased creep resistance and reduced oil migration, over traditionally formulated hot melt bottle labeling adhesives.
Further re claim 1, Jiang doesn’t teach the composition ingredients.
Harada teaches overlapping ranges of the [35] styrene elastomer (10-25 wt%), [37] polyolefin (25-50%), composition for at least low-temperature properties, miscibility and overlapping [70-71] tackifier (100 parts by weight or less per 100 parts resin (100+200=50 wt% or less) for aiding in unwinding force.
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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of wt% of claimed materials for improving adhesion, miscibility or unwinding force as taught by the reference above because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 18-19, the claims are directed to intended use.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection is based on the new reference as set forth above. The previous references are used but differently. See Action above.
Conclusion
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.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787