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 without traverse of Group I, claims 1-16, in the reply filed on 6/23/2026 is acknowledged.
Claims 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/23/2026.
Claim Objections
Claim 7 is objected to because of the following informalities: it appears that the claim should be amended to include a comma between “acrylamide” and “mono-“. Appropriate correction is required.
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 11-12 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.
Regarding claim 11, it is unclear what is intended via the “modulus” as it is unclear what specific property (tensile modulus, shear modulus, etc.) is being claimed .
Claim 12 recites the limitation " the shrinkage test" in line 2. There is insufficient antecedent basis for this limitation in the claim as a shrinkage test has not been previously introduced.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright et al. (US 2018/0037775 A1) in view of Clapper et al. (US 2013/0260149 A1), and in light of the evidence provided via Kanner et al. (US 7070051 B2).
Regarding claims 1-5, 10 and 12, Wright teaches an adhesive article comprising a flexible backing layer (substrate) and a radiation crosslinked hot melt processable pressure-sensitive adhesive (abstract) comprising a polymerized reaction product of components ((meth)acrylate-based polymer) (para 0034) comprising:
an alkyl (meth)acrylate with an alkyl group comprising 1 to 24 carbon atoms such as a combination of monomers such as, inter alia, isobornyl acrylate, 2-propylheptyl acrylate and a branched dodecyl acrylate in an amount of 50 to 100 parts by weight of the monomer mixture of the reaction product components (para 0025, 0035).
The combination of the alkyl (meth)acrylate monomers teaches an at least one first (meth)acrylate monomer, and in proportions that overlap that presently claimed (89.0 to 99.49% by weight). The monomer mixture is irradiated with radiation in the presence of a photopolymerization initiator in an amount of 0.1 to 0.5 parts by weight per 100 parts by weight of the total monomer (0.01 to 1.0 parts by weight of at least one initiator) (para 0036).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
The polymerized reaction product of components also comprises one or more acid-functional ethylenically unsaturated monomers such as, inter alia, (meth)acrylic acid, and in an amount of 0.5 to 25 parts by weight (para 0038-0039), which overlaps that presently claimed (up to 1% by weight); and one or more non-acid-functional ethylenically unsaturated monomers such as, inter alia, N-vinylpyrrolidone (NVP), and in an amount of 0.5 to 5 parts by weight (para 0040-0042), which overlaps that presently claimed (0.5 to 5.0% by weight).
Wright continues to teach that the acrylic polymer comprises copolymerizable benzophenone UV crosslinkers (at least one crosslinking moiety) (para 0043-0045) in an amount of 0.2 to 0.5 parts by weight per 100 parts by weight of the polymerized reaction product of components (0.2 to 0.5% by weight). The Examiner notes that the isobornyl acrylate and 2-propylheptyl acrylate monomers, and a branched dodecyl acrylate monomer, teach a mixture of secondary alkyl (meth)acrylates with both of propylheptyl acrylate and isobornyl acrylate comprising 13 carbon atoms, and with the branched dodecyl acrylate comprising 15 carbon atoms.
The Examiner also notes that the branched dodecyl acrylate teaches Formula (I) with one of R1 and R2 providing a C1 to C11 saturated linear alkyl group, and the other of R1 and R2 providing a C11 to C1 saturated linear alkyl group; the sum of R1 and R2 is 11; and R3 is H. Also, the 2-propylheptyl acrylate monomer teaches Formula (I) with one of R1 and R2 providing a C1 to C9 saturated linear alkyl group, and the other of R1 and R2 providing a C9 to C1 saturated linear alkyl group; the sum of R1 and R2 is 9; and R3 is H (current claims 2 and 4-5).
Wright is silent to the adhesion ratio between a wet PROTEIN LEATHER versus a dry PROTEIN LEATHER (at least 50 %, current claim 1); to the mixture of secondary alkyl (meth)acrylates comprising a mixture of at least 5 isomers (current claim 3); to the adhesion to the wet PROTEIN LEATHER (1 N/25 mm, current claim 10); and to the shrinkage (less than 10%, current claim 12).
However, Clapper teaches PSAs comprising a mixture of structural isomers of secondary alkyl (meth)acrylate monomer, with the adhesives exhibiting an overall balance of adhesive and cohesive characteristics and exceptional adhesion to low surface energy substrates such as HDPE. Clapper further teaches that the mixture of isomers results in a depressed crystalline temperature (Tc) towards permitting the use of long chain alkyl(meth)acrylates and thus the employment with non-polar tackifiers (abstract, para 0010).
Clapper also instructs that the depression of the Tc also provides a broader use temperature range, improved rheology and greater compatibility with a wide range of PSA additives (para 0058). Clapper demonstrates that 1-dodecene provided 2-dodecyl acrylate, 3-dodecyl acrylate, 4-dodecyl acrylate , 5-dodecyl acrylate and 6-dodecyl acrylate (i.e., 5 isomers) (para 0230).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the acrylic polymer of the Wright PSA compositions with the five dodecyl acrylate isomers of Clapper based on the Tc (and its disclosed advantages) of the PSA required of the prior art’s intended application as in the present invention.
The Examiner respectfully reminds the Applicant that,
Where the claimed and prior art products are identical or substantially identical in
structure or composition, a prima facie case of either anticipation or obviousness has
been established. "Products of identical chemical composition cannot have mutually
exclusive properties." A chemical composition and its properties are inseparable.
Therefore, if the prior art teaches the identical chemical structure, the properties applicant
discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Thus, given that the cited prior art teaches the presently claimed HMPSA (see also the rejections of claims 6-9 and set forth below), to include identical components (e.g., acrylic polymer), and in identical proportions, it is reasonable to conclude that the HMPSA of the cited prior art would demonstrate the presently claimed adhesion value to wet PROTEIN LEATHER, and the ratio versus dry PROTEIN LEATHER, and the presently claimed shrinkage % as measured under DMA conditions.
Regarding claim 6, as noted above, Wright teaches that the acrylic polymers comprises copolymerizable benzophenone UV crosslinkers (photocrosslinker).
Regarding claim 7, as noted above, Wright teaches that the one or more non-acid-functional ethylenically unsaturated monomers is N-vinylpyrrolidone (NVP).
Regarding claim 8, as noted above, Wright teaches the adhesive article comprising a flexible backing layer, and includes a tape backing (para 0095).
Regarding claims 9 and 11, Wright teaches that the PSA composition comprises a tackifier in an amount of greater than 10 parts by weight per 100 parts by weight of the total monomers (para 0034, 0060-0062), which overlaps that presently claimed (i.e., 2 to 25 parts by weight), towards adjusting the glass transition temperature (Tg) and storage modulus of a PSA (para 0013). Wright also teaches that the elastomer of PSAs comprise a storage modulus at room temperature (i.e. approximately 25 ℃) of 3 × 106 dynes/cm2 (para 0013), or 300,000 Pascals (i.e., greater than 10,000 Pascals).
The Examiner notes that it is established in the art that the Tg of hot melts and PSAs is a consideration in regards to the adhesion, cohesion, flexibility, etc., and is adjusted based on a balance of tack, peel and cohesion. Further, it is established that tackifiers improve the “quick grab” of an adhesive and lower its viscosity while increasing its Tg (see Kanner at column 8, line 28 to column 9, line 19 therein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the proportions of the tackifier in Wright’s adhesive compositions to that presently claimed and towards the PSA demonstrating the presently claimed storage modulus based on the properties of storage modulus, adhesion, cohesion, flexibility, tack and peel required of the prior art’s intended application as in the p resent invention.
Claim(s) 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright et al. (US 2018/0037775 A1) in view of Clapper et al. (US 2013/0260149 A1), and in light of the evidence provided via Kanner et al. (US 7070051 B2).
Regarding claim(s) 13-16, Wright/Clapper teach the presently claimed invention as in the rejection of current claim 1-12 set forth above, which is equally applicable to the current claims.
Wright also teaches that the HMPSA is surrounded with a plastic packaging material towards a molten mixture of the adhesive and the plastic packaging material; or is contained within a plastic film and meltable (hot melt processable) with adhesive composition and blendable into the molten adhesive composition (para 0067-0089).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A 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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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 8/8/2026
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