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 . 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.
Response to Amendment
The Amendment filed 02/25/2026 has been entered. Claims 25-34, 36-48 remain pending in the application.
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) 25-26, 28-30, 36-37, 39-44, 46-47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schroeyers et al (U.S PG Pub 20160177142A1) and Kanderski (U.S PG Pub 20150087760A1).
Regarding claim 25, Schroeyers, drawn also to the art of an adhesive composition (Abstract), discloses an adhesive composition that contains a first metallocene propylene-based copolymer (PBC1), and a second metallocene propylene based copolymer (PBC2), wherein each polymer is a copolymer of propylene and ethylene ([0104]; Table 1). Schroeyers discloses the adhesive composition containing a tackifier in the weight range of 10 to 50 wt.% [0072-0073]. Schroeyers also discloses a functionalized polyolefin copolymer in the weight range of less than or equal to 5 wt.%, wherein the functionalized polymer is a maleic anhydride-modified polypropylene [0076]. Schroeyers has disclosed as well that the ethylene content in PBC1 is 12.4 wt.% and in PBC2 is 5.8 wt.% [0104]. The ranges as disclosed by Schroeyers form overlapping and encompassing ranges with the ranges instantly claimed, and the courts have held that 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)). Schroeyers further discloses that multiple propylene polymers can be a part of the composition, in exact words “one or more”, which would suggest that a third metallocene based propylene copolymer can be present in the composition ([0024-0026]; [0071]). It is noted for the sake of clarifying the record, that while discussed above, the third metallocene remains optional in the claim.
Further, Schroeyers has disclosed the composition with the weight ranges for the components as claimed (see above). Schroeyers also discloses examples C & D (Table 1) which contain 15 wt.% tackifier (Escorez), 3 wt.% maleic anhydride modified polypropylene (AC 596), 71 wt.% PBC1, and 10 wt.% PBC2 [0104], thus disclosing a composition with the components in overlapping and encompassing ranges to the instantly claimed ranges. The courts have held that 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
Schroeyers has not explicitly disclosed the viscosity of the acid-modified polyolefin copolymer, however, it is known from Kanderski, for a maleic anhydride modified polyolefin to have a viscosity in the instantly claimed range.
Kanderski, drawn also to the art of an adhesive composition comprising a metallocene catalyzed polyolefin (Abstract), discloses a polyolefin that is grafted i.e. modified with maleic anhydride and discloses such a polyolefin to have a viscosity that is 13000 cP (equivalent to 13000 mPas). While Kanderski discloses this viscosity at a temperature of 177oC, it is known generally for the viscosity to decrease as the temperature increases, thus the viscosity as disclosed by Kanderski would still meet the instantly claimed range of higher than or equal to 2000mPas. The courts have held that 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Schroeyers, with the acid modified polyolefin having a viscosity in the range as claimed, as disclosed by Kanderski, to arrive at the instant invention, in order to have an adhesive that has good adhesion to bond hard to bond substrates or films [0015].
Regarding claim 26, Schroeyers has disclosed PBC1 having an ethylene content of 12.4 wt.%, and given that the copolymer is a blend of propylene and ethylene, it would mean necessarily mean that the rest of the polymer by weight is propylene, thus giving a propylene wt.% of 87.6, which forms an overlapping range with the instantly claimed range and therefore renders obvious the claimed ranges.
Regarding claim 28, Schroeyers has disclosed a melt viscosity for PBC1 of 4110 cP which translates to 4110 mPas [0104] (thus falling within the instantly claimed range).
Regarding claim 29, Schroeyers has disclosed an enthalpy of fusion (another term for enthalpy of melting) to be 23 J/g [0104], which forms an encompassing and overlapping range with the instantly claimed range and therefore renders obvious the claimed enthalpy of fusion.
Regarding claim 30, Schroeyers has disclosed PCB2 having an ethylene content of 5.8 wt.%, and as noted above in the rejection of instant claim 26, the copolymer is a blend propylene and ethylene, thus it would necessarily mean that the remaining 94.2 wt.% of the copolymer is propylene, and such an amount forms an overlapping and encompassing range with the instantly claimed range. The foregoing therefore renders obvious the claimed contents.
Regarding claims 36-37, Schroeyers has disclosed a functionalized polyolefin copolymer being a maleic anhydride modified propylene [0076]; [0094].
Regarding claim 39, as noted above in the rejection of instant claim 25, Schroeyers has disclosed multiple propylene copolymers being a part of the composition, i.e. first, second, third (see claim 25 rejection above). Schroeyers has disclosed a melt flow rate of the propylene copolymer to be 100 to 1000g/min, thus forming an overlapping and encompassing range and rendering obvious the instantly claimed range.
Regarding claim 40, Schroeyers has disclosed a tackifier as instantly claimed [0073-0074].
Regarding claim 41, Schroeyers has disclosed a tackifier that is not an acid modified tackifier (‘terpene and alkylphenolic’) [0073-0074].
Regarding claim 42, Schroeyers has disclosed a plasticizer being present [0075].
Regarding claim 43, Schroeyers has disclosed no acid-modified wax being present [0094]. Schroeyers discloses one of a maleic acid anhydride modified polypropylene or a maleic acid anhydride modified polypropylene wax being present, thus one of the two above are present. An ordinarily skilled artisan can accordingly choose one of the two components, which would ensure a composition without a maleic acid anhydride modified polypropylene wax.
Regarding claim 44, Schroeyers has disclosed the adhesive composition having a viscosity in the instantly claimed range (Abstract; [0006]). While Schroeyers has disclosed the viscosity at a temperature of 190oC, it is generally known for viscosity to decrease with an increase in temperature and as such, the range disclosed by Schroeyers is a broad range which encompasses the instantly claimed range and would encompass the instantly claimed range at a higher temperature as well. The courts have held that 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
Regarding claim 46, Schroeyers has disclosed the composition not containing a propylene homopolymer (see examples C & D in Table 1).
Regarding claim 47, Schroeyers has disclosed the use of the composition as an adhesive and has disclosed using the adhesive to adhere a substrate to a material (claim 17-18).
Claim(s) 27, 31, 33-34, 38 & 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schroeyers et al (U.S PG Pub 20160177142A1) and Kanderski (U.S PG Pub 20150087760A1) and Hussein et al (U.S PG Pub 20170114257A1).
Regarding claims 27 & 31, Schroeyers has not explicitly disclosed the glass transition temperature of the propylene copolymer (adhesive composition in general) as instantly claimed. However, the glass transition temperature being in the range as instantly claimed, is known from Hussein.
Hussein, drawn also to the art of an adhesive composition containing multiple metallocene propylene copolymers (Abstract; [0269-0270]), discloses the glass transition temperature to be in the instantly claimed range (Table 3). The courts have held that 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Schroeyers with the glass transition temperature as disclosed by Hussein, to arrive at the instant invention, in order to have an adhesive with high cohesion and elasticity [0010].
Regarding claims 33-34, Hussein, drawn also to the art of an adhesive composition containing multiple metallocene propylene copolymers (Abstract; [0269-0270]), discloses the composition containing a carboxylic acid and/or an anhydride modified polyolefin copolymer, which has a density of greater than or equal to 0.890g/cm3, and a molecular weight higher 10000 g/mol [0016], wherein both the density and molecular weight form encompassing and overlapping ranges with the instantly claimed ranges. The courts have held that 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05(I)).
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Schroeyers with the density and weight average molecular weight of the carboxylic acid/anhydride modified polyolefin copolymer as disclosed by Hussein, to arrive at the instant invention, in order to have an adhesive with high cohesion and elasticity [0010].
Regarding claim 38, Hussein, drawn also to the art of an adhesive composition containing multiple metallocene propylene copolymers (Abstract; [0269-0270]), discloses the composition containing a carboxylic acid and/or an anhydride modified polyolefin copolymer, wherein the carboxylic acid and/or anhydride modified copolymer has 60 to 95% by weight of ethylene or propylene monomers [0088], and 0.5 to 10% by weight of carboxylic acid and/or anhydride modified functions [0090], thus disclosing a copolymer with less than 10% by weight of unsaturated monomer containing acid groups or anhydride groups.
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Schroeyers with the weight range of the carboxylic acid/anhydride modified groups to be in weight range as claimed, as disclosed by Hussein, to arrive at the instant invention, in order to have an adhesive with high cohesion and elasticity [0010].
Regarding claim 48, Schroeyers has already disclosed the use of the composition as an adhesive in bonding two substrates (a substrate to a material) (claims 17-18). Schroeyers has not explicitly disclosed heating the adhesive, however, this is known in the art from Hussein.
Hussein, drawn also to the art of an adhesive composition containing multiple metallocene propylene copolymers (Abstract; [0269-0270]), discloses using the adhesive to bond two substrates [0232-0238], and discloses the adhesive being heated while being applied [0240] and being applied by a nozzle (spraying) or contact [0243-0245], thus disclosing application of a liquid adhesive.
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Schroeyers, with the adhesive being heated on application and being liquid on application, as taught by Hussein, to arrive at the instant invention, in order to have a bonding with good creep resistance and good ageing [0038].
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schroeyers et al (U.S PG Pub 20160177142A1) and Kanderski (U.S PG Pub 20150087760A1), as evidenced by Hussein et al (U.S PG Pub 20170114257A1).
Regarding claim 32, Schroeyers has disclosed a higher enthalpy of melting for the second metallocene propylene copolymer than the instantly claimed range [0104]. However, Schroeyers teaches that highly crystalline polymers have a higher enthalpy of fusion than semi-crystalline or low crystalline polymers [0031]. Further, as evidenced by Hussein, semi-crystallinity provides cohesive strength to the composition [0116].
Thus, it is established by Schroeyers and Hussein that the heat of melting is a result effective variable which affects the crystallinity of the polymer which in turn affects the cohesive strength imparted to the polymer, thus it would be within the purview of an ordinarily skilled artisan to appropriately modify the heat of melting, in order to have a desired crystallinity, in order to have a desired cohesive strength. The courts have held that the routine optimization of result effective variables is obvious in the absence of new or unexpected results (MPEP 2144.05(II)).
Response to Arguments
Applicant's arguments filed 02/25/2026 have been fully considered but they are not persuasive.
Applicant argues that Schroeyers does not disclose a polyolefin copolymer that is acid grafted with a viscosity higher than or equal to 2000 mPa*s at 190C and that Schroeyers would not be modified by Kanderski to obtain such a polyolefin copolymer.
The examiner disagrees. Firstly the polyolefin copolymer can be one of an acid grafted polyolefin copolymers having a viscosity higher than or equal to 2000 mPa*s at 190C or a copolymer based on olefins and unsaturated monomers containing acid or anhydride groups or mixtures thereof. Thus the instant claim as recited is claiming one of the two or a mixture of the two, but not all two together at the same time. Thus, Schroeyers at the very least discloses a copolymer based on olefins and unsaturated monomers containing acid or anhydride groups. Further, Kadnerski is also drawn to the art of adhesive and adhesives that contain metallocene polypropylene, thus being analogous art. Kanderski also discloses an explicitly advantage to having a viscosity of a maleic acid anhydride modified polymer to be in the range as claimed (see claim 25 rejection above). Finally, given that the instant claim is claiming one of an acid-grafted polyolefin and a copolymer based on olefins and unsaturated monomers containing acid or anhydride groups, and given that all of Schroeyers, Kanderski, and Hussein, discloses such a copolymer being a part of an adhesive that contains multiple metallocene polypropylene copolymers, it can be reasonably expected that the same or similar properties of the adhesive are present and further thus disclosing or at the very least obviating the adhesive as claimed to an ordinarily skilled artisan.
Applicant argues that the adhesive of Schroeyers does not display the wet peel strength of the instant adhesive.
The examiner disagrees. As a first point, an adhesive having a specific wet peel strength is not instantly being claimed, and further once the same or similar components/composition is present (as disclosed by Schroeyers as modified by Kanderski), the same or similar properties will also inherently be present. It is also noted that while the claims are read in light of the specification, limitations from the specification are not imported into the claims.
In response to applicant's argument that Kanderski is drawn to using adhesive in articles different from hygienic articles, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., wet peel strength) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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