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 .
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 1-4, 6, 8-11, 13-18 and 20-23 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 1, the newly claimed specific range of T-peel adhesion strength of about 100 g to about 200 g is unclear because the substrate materials used for the test, the testing conditions such as the rate of peeling, and the width of the substrate materials have not been specified. The width is important because doubling the width doubles the peel strength. The substrate materials are also important because adhesion to different substrates varies widely. While ASTM D-903 has been specified, ASTM tests are proprietary. Applicant has not provided a copy of the test specifications, nor has Applicant provided a clear description of the test. Accordingly, it is entirely unclear how to reproduce the claimed T-peel adhesion strength or how to compare it to the prior art.
Similar problems to those noted above are found in claims 10 and 16.
Regarding claim 13, one or more C18+ LAOs are recited in the dimer alternative at lines 5-8 of parent claim 1; and one or more C18+ LAOs are also recited in the paraffin alternative at lines 9-12 of parent claim 1. In claim 13, it is unclear which “one or more C18+ LAOs” is being referenced by “the one or more C18+ LAOs”.
Claim 20 has a similar problem to that noted above in claim 13.
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 1-2, 4, 6, 8-11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2004/0081795 A1) in view of Kramer (WO 2021/183326 A1).
Regarding claim 1, Wang teaches an adhesive composition comprising an ethylenically unsaturated polymer or copolymer, a tackifier and a diluent (Abstract; paragraphs 24, 30-31, 34-37 and 40).
Wang differs from claim 1 in that:
i. Wang does not teach the diluent comprises at least one of:
one or more LAO dimers formed from one or more C18+ LAOs, the one or more LAO dimers having an internal olefin and a kinematic viscosity (ASTM D-445) of about 6 cSt or less at 135°C, wherein the one or more C18+ LAOs comprise predominantly C20-C24 LAOs or C24+ LAOs; or
one or more paraffinic hydrocarbons having an even carbon number distribution and formed through dimerization of one or more C18+ LAOs and subsequent reduction, the one or more C18+ LAOs having a kinematic viscosity (ASTM D-445) before dimerization of about 4 cSt or less at 135°C, wherein the one or more C18+ LAOs comprise predominantly C20-C24 LAOs or C24+ LAOs.
ii. Wang does not teach the adhesive composition has a T-peel adhesion strength at 1 day as measured by ASTM D-903 of about 100 g to about 200 g.
(i) Wang is directed to a hot melt adhesive composition (Abstract). Wang teaches a variety of wax diluents for reducing the melt viscosity of the hot melt adhesive (paragraph 63) and is not limited to a particular wax (paragraphs 64-68). Kramer teaches high quality waxes useful for hot melt adhesives comprising one or more linear alpha olefin (LAO) dimers formed from one or more C18+ LAOs, the LAO dimers having an internal olefin, wherein the one or more C18+ LAOs may comprise predominantly C20-C24 LAOs or C24+ LAOs; or one or more paraffinic hydrocarbons having an even carbon number distribution and formed through dimerization of one or more C18+ LAOs and subsequent reduction, wherein the one or more C18+ LAOs comprise predominantly C20-C24 LAOs or C24+ LAOs (paragraphs 14-15, 17, 35, 40, 48, 70, 104-105 and 129). Additionally, Kramer teaches the waxes are useful in packaging and hygiene formulations, and the waxes enhance the hot melt properties, including flow and substrate wetting (paragraph 105). Wang is drawn to packaging and hygiene applications (paragraphs 1-2). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in Wang because one having ordinary skill in the art would have been motivated to use a known suitable high quality wax for hot melt adhesives as the wax component of Wang and/or to achieve the above noted advantages in accordance with the teachings of Kramer.
As to the claimed viscosities, the LAO dimers and paraffinic hydrocarbons taught by Kramer fall within the claimed range of C18+ comprising predominantly C20-C24 LAOs or C24+ LAOs or overlap therewith. Accordingly, it is reasonable to expect they have a viscosity within or overlapping with the corresponding claimed ranges since they are the same materials as claimed. Additionally, Kramer teaches viscosities of 2 to 20 cSt, 4 to 15 cSt, 3 to 10 cSt, or 3.5 to 4 cSt at 100°C (paragraph 42), which would naturally be lower at the higher claimed temperature of 135°C since viscosity decreases with temperature. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Alternatively, Wang provides wax in order to reduce melt viscosity of the hot melt adhesive (paragraph 63). Accordingly, one having ordinary skill in the art would have selected the viscosity of the wax as a matter of routine experimentation to provide the hot melt adhesive composition with a suitable viscosity. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide a viscosity in the claimed range in the modified adhesive composition of Wang because one having ordinary skill in the art would have been motivated to select such viscosity as a matter of routine experimentation in view of the above noted teachings of Wang and Kramer, for the reasons provided above.
(ii) Wang recognizes that excellent peel strength is desirable (paragraph 30) and provides values in excess of 300 g (Table 3). As noted above, the values of Wang cannot be compared to the claimed range because the claims do not specify substrate materials, testing conditions such as rate of peeling, or substrate width. Moreover, the modified composition of Wang is substantially similar to the claimed composition and thus similar peel strength values would be expected. Since it is clear from Wang that suitable peel strength is desired, the person having ordinary skill in the art would have engaged in routine experimentation to provide such a suitable peel strength. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this addition limitation in the modified adhesive composition of Wang because one having ordinary skill in the art would have been motivated to provide a suitable peel strength in the claimed range as a matter of routine experimentation for the reasons provided above.
Regarding claim 2, Wang clearly teaches a polypropylene copolymer as the ethylenically unsaturated polymer or copolymer.
Regarding claim 4, Kramer was applied above for suggesting a suitable wax component in Wang. Kramer suggests blending additional known waxes (paragraph 47), and Wang suggests the use of paraffinic hydrocarbon wax (paragraph 65). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified adhesive composition of Wang because one having ordinary skill in the art would have been motivated to provide an additional known wax component as suggested by Kramer, such as the paraffinic hydrocarbon wax of Wang. Alternatively, the blends of different paraffins (hydrogenated reaction products) suggested by Kramer also satisfy this additional component (paragraphs 14, 46 and 70).
Regarding claim 6, Wang teaches spray coating requires sufficiently low viscosity and suggests 2000 to 15000 cP at application temperature (paragraph 4), but does not recite measuring the viscosity at 140°C. However, it is clear that a suitable viscosity should be selected as a matter of routine experimentation for spray coating applications. Moreover, since Applicant also seeks to provide a hot melt adhesive composition suitable for spray coating, it is reasonable to expect that similar viscosities are desired. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified adhesive composition of Wang because one having ordinary skill in the art would have been motivated to select a suitable viscosity in the claimed range as a matter of routine experimentation to provide suitable viscosity for spray coating applications in view of the above noted teachings of Wang.
Claims 8-9 are satisfied for the reasons provided above.
Regarding claim 10, Wang teaches 5 to 50 wt% polypropylene copolymer and 0 to 60 wt% additional poly alpha olefin which naturally includes polypropylene, a poly alpha olefin (paragraphs 33, 35, 37). These ranges reasonably suggest values near or above 60 wt% polypropylene polymer or copolymer. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. The additional limitations of claim 10 are satisfied from the reason provided above.
Claims 11 and 13-15 are satisfied for the reasons provided above.
Claims 1-4, 6, 8-9, 16-18 and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over vanDrongelen (US 6103814) in view of Kramer.
Regarding claim 1, vanDrongelen teaches an adhesive composition comprising a styrenic block copolymer, which is an ethylenically unsaturated copolymer, a tackifier and a diluent (Abstract; column 8, lines 19-34; column 17, line 65 to column 18, line 36).
VanDrongelen differs from claim 1 in that:
i. VanDrongelen does not teach the diluent comprises at least one of:
one or more LAO dimers formed from one or more C18+ LAOs, the one or more LAO dimers having an internal olefin and a kinematic viscosity (ASTM D-445) of about 6 cSt or less at 135°C, wherein the one or more C18+ LAOs comprise predominantly C20-C24 LAOs or C24+ LAOs; or
one or more paraffinic hydrocarbons having an even carbon number distribution and formed through dimerization of one or more C18+ LAOs and subsequent reduction, the one or more C18+ LAOs having a kinematic viscosity (ASTM D-445) before dimerization of about 4 cSt or less at 135°C, wherein the one or more C18+ LAOs comprise predominantly C20-C24 LAOs or C24+ LAOs.
ii. VanDrongelen does not teach the adhesive composition has a T-peel adhesion strength at 1 day as measured by ASTM D-903 of about 100 g to about 200 g.
(i) VanDrongelen is directed to a hot melt adhesive composition (Abstract). VanDrongelen teaches a variety of wax diluents for reducing the melt viscosity of the hot melt adhesive (column 17, line 65 to column 18, line 36) and is not limited to a particular wax (paragraphs 64-68). Kramer teaches high quality waxes useful for hot melt adhesives comprising one or more linear alpha olefin (LAO) dimers formed from one or more C18+ LAOs, the LAO dimers having an internal olefin, wherein the one or more C18+ LAOs may comprise predominantly C20-C24 LAOs or C24+ LAOs; or one or more paraffinic hydrocarbons having an even carbon number distribution and formed through dimerization of one or more C18+ LAOs and subsequent reduction, wherein the one or more C18+ LAOs may comprise predominantly C20-C24 LAOs or C24+ LAOs (paragraphs 14-15, 17, 35, 40, 48, 70, 104-105 and 129). Additionally, Kramer teaches the waxes are useful in packaging and hygiene formulations, and the waxes enhance the hot melt properties, including flow and substrate wetting (paragraph 105). VanDrongelen is drawn to hygiene applications (column 1, lines 8-55). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this limitation in vanDrongelen because one having ordinary skill in the art would have been motivated to use a known suitable high quality wax for hot melt adhesives as the wax component of vanDrongelen and/or to achieve the above noted advantages in accordance with the teachings of Kramer.
As to the claimed viscosities, the LAO dimers and paraffinic hydrocarbons taught by Kramer fall within the claimed range of C18+ comprising predominantly C20-C24 LAOs or C24+ LAOs or overlap therewith. Accordingly, it is reasonable to expect they have a viscosity within or overlapping with the corresponding claimed ranges since they are the same materials as claimed. Additionally, Kramer teaches viscosities of 2 to 20 cSt, 4 to 15 cSt, 3 to 10 cSt, or 3.5 to 4 cSt at 100°C (paragraph 42), which would naturally be lower at the higher claimed temperature of 135°C since viscosity decreases with temperature. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05. Alternatively, vanDrongelen provides wax in order to reduce melt viscosity of the hot melt adhesive (column 17, lines 65-67). Accordingly, one having ordinary skill in the art would have selected the viscosity of the wax as a matter of routine experimentation to provide the hot melt adhesive composition with a suitable viscosity. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide a viscosity in the claimed range in the modified adhesive composition of vanDrongelen because one having ordinary skill in the art would have been motivated to select such viscosity as a matter of routine experimentation in view of the above noted teachings of vanDrongelen and Kramer, for the reasons provided above.
(ii) VanDrongelen recognizes that high peel strength is desirable and provides values well in excess of 100 g (Tables 1-3 and 5; Examples). As noted above, the values of VanDrongelen cannot be compared to the claimed range because the claims do not specify substrate materials, testing conditions such as rate of peeling, or substrate width. Moreover, the modified composition of vanDrongelen is substantially similar to the claimed composition and thus similar peel strength values would be expected. Further, since vanDrongelen seeks high peel strength, the person having ordinary skill in the art would have engaged in routine experimentation to provide a suitable peel strength. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this addition limitation in the modified adhesive composition of vanDrongelen because one having ordinary skill in the art would have been motivated to provide a suitable peel strength in the claimed range as a matter of routine experimentation for the reasons provided above.
Claim 2 is satisfied for the reasons provided above.
Regarding claim 3, vanDrongelen clearly teaches this additional limitation.
Regarding claim 4, Kramer was applied above for suggesting a suitable wax component in vanDrongelen. Kramer suggests blending additional known waxes (paragraph 47), and vanDrongelen suggests the use of paraffinic hydrocarbon wax (column 18, line 8). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified adhesive composition of vanDrongelen because one having ordinary skill in the art would have been motivated to provide an additional known wax component as suggested by Kramer, such as the paraffinic hydrocarbon wax of vanDrongelen. Alternatively, the blends of different paraffins (hydrogenated reaction products) suggested by Kramer also satisfy this additional component (paragraphs 14, 46 and 70).
Regarding claim 6, vanDrongelen teaches spray coating requires sufficiently low viscosity and suggests less than 60000 cP at 120°C (Abstract; column 2, lines 31-54), but does not recite measuring the viscosity at 140°C. However, it is clear that a suitable viscosity should be selected as a matter of routine experimentation for spray coating applications. Moreover, since Applicant also seeks to provide a hot melt adhesive composition suitable for spray coating, it is reasonable to expect that similar viscosities are desired. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional limitation in the modified adhesive composition of vanDrongelen because one having ordinary skill in the art would have been motivated to select a suitable viscosity in the claimed range as a matter of routine experimentation to provide suitable viscosity for spray coating applications in view of the above noted teachings of vanDrongelen.
Claims 8-9, 16-18 and 20-22 are satisfied for the reasons provided above.
Regarding claim 23, in vanDrongelen it is clear from the component amounts taught at column 9, lines 28-55, for example using the preferred amounts, that a styrenic block copolymer content may fall within about 40 wt% or less of the adhesive composition. It is noted that a prima facie case of obviousness exists when a claimed range overlaps, falls within or is near a prior art range. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 02 April 2026 have been fully considered but they are not persuasive.
With respect to the current 35 USC 112(b) rejection of claims 13 and 20, which refer to “the one or more C18+ LAOs” when their respective parent claims recite one or more C18+ LAOs in the dimer alternative; and additionally recite one or more C18+ LAOs in the paraffin alternative; Applicant argues “the one or more C18+ LAOs” clearly refers to each alternative which recites one or more C18+ LAOs. The examiner maintains it is unclear which “one or more C18+ LAOs” is being referenced by “the one or more C18+ LAOs” in claims 13 and 20. There is no clear explicit or implicit indication as to which of the previously recited “one or more C18+ LAOs” is being referenced. Accordingly, the mere assertion that this language clearly refers to each alternative is insufficient to clarify the claims. The examiner suggests more clearly indicating the alternative(s) which are being modified by this language in the claim language.
The arguments directed to new limitations in the claims are not persuasive in view of the new grounds of rejection which have been applied above to satisfy these new limitations.
Applicant argues 2-20 cSt at 100°C encompasses materials that would be unsuitable for certain applications. First, the person of ordinary skill in the art would be expected to use values in the range which are suitable for a given application. Moreover, Kramer does not only teach 2-20 cSt but also teaches 4 to 15 cSt, 3 to 10 cSt and 3.5 to 4 cSt (paragraph 42). Additionally, the values at the claimed temperature of 135°C would naturally be somewhat lower than Kramer’s reported values at 100°C since viscosity decreases with increasing temperature. Further, Kramer suggests the same LAOs which are claimed, and thus the same materials would naturally be expected to have the same viscosities.
Applicant argues unexpected results with respect to achieving improved peel strength while also providing lower adhesive viscosity, as compared to using conventional diluents. In response, Kramer has been used to modify the primary references to use the same LAO dimer or paraffinic diluents which are claimed. Accordingly, such results would naturally flow from the modification with Kramer. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Additionally, Kramer specifically suggests the use of the LAO waxes in hotmelt adhesives and indicates that waxes are used to control viscosity of the adhesive and improve bond strength (paragraph 5). Accordingly, providing a desired viscosity and bond strength when using such LAO waxes does not appear to be an unexpected result.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
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