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 .
In view of the Pre-Appeal Brief filed on 07/20/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments.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.
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, 12-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Schroeyers et al. (US 2011/0104487) as evidenced by Exxon.
Re claims 1, 3-6 , and 8, Schroeyers discloses hot melt pressure sensitive adhesive comprising block copolymer component, hydrocarbon tackifier resin, and a propylene-based component [12]. The block copolymer component includes styrenic block copolymer such as SIS and SBS, i.e. styrene elastomer, and is present in an amount of 25-65 wt.% [14, 19, 34]. The tackifier is present in an amount of 5-50 wt.% [49]. The propylene-based component includes propylene-ethylene elastomer known under the tradename Vistamaxx 6202 [113] and is present in an amount of 5-50 wt.% [67]. As evidenced Exxon, the softening point of Vistamaxx 6202 is 45.2 C (page 2).
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.
In light of the overlap between the claimed adhesive and that disclosed by Schroeyers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an adhesive that is both disclosed by Schroeyers and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Re claim 7, Schroeyers discloses the styrene content of the styrene elastomer is 10-45 wt.% [21].
Re claims 9-10, Schroeyers discloses the styrene elastomer has 10-20 wt.% diblock content [21].
Re claim 12, Schroeyers discloses that the tackifier includes hydrogenated petroleum resin [40, 44].
Re claims 13-14, Schroeyers discloses the adhesive comprises 5-50 wt.% oil [76, 79].
Re claim 15, Schroeyers discloses the adhesive has viscosity of greater than about 500 mPa-s at 175 C [96]. Although there is no disclosure of the viscosity at 160C as claimed, given that as temperature increases, viscosity decreases, it is clear that the viscosity of Schroeyers would fall within the claimed range.
Re claim 17, given that Schroeyers discloses adhesive as presently claimed including amounts that overlap that presently claimed, within the overlapping ranges, the adhesive would necessarily inherently have adhesive strength as claimed.
Re claim 18, the recitation in the claims that the adhesive is “used as a sealing material for resealing” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Schroeyers disclose adhesive as presently claimed, it is clear that the adhesive of Schroeyers would be capable of performing the intended use, i.e. used as a sealing material for resealing, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Re claim 19, the recitation in the claims that the adhesive is “used for a packaging material including a printed portion” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Schroeyers disclose adhesive as presently claimed, it is clear that the adhesive of Schroeyers would be capable of performing the intended use, i.e. used for a packaging material including a printed portion, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Schroeyers et al. (US 2011/0104487) as evidenced by Exxon and further in view of Wang et al. (US 2014/0335299).
Re claim 16, Schroeyers discloses hot met pressure sensitive adhesive as set forth above.
Schroeyers discloses tape [11] comprising the adhesive used on a substrate [89] but does not disclose the thickness of the adhesive.
Wang discloses hot melt pressure sensitive adhesive comprising olefinic block copolymer, styrene elastomer, and tackifier [Abstract, 32], The adhesive has thickness of 13 microns to 1.27 mm depending on the desired end use, nature of the substrate, etc. [62-63].
In light of the motivation for using hot met pressure sensitive adhesive having thickness disclosed by Wang as set forth above, it would have been obvious to one of ordinary skill in the art to use hot met pressure sensitive adhesive with such thickness in Schroeyers in order to produce an effective adhesive depending on the desired end use.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection is based on the new references as set forth above. See Action above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JPH11349745 to Kawachi discloses not melt adhesive comprising 20-80 wt.% styrene elastomer, 20-80 wt.% ethylene based elastomer, and tackifying resin.
US 20160002508 A1 and US 20080306214 A1 both to Kanderski teach overlapping ranges of the composition including tackifier is 0 to 50% .
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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