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 .
Response to Amendment
All outstanding rejections from the final rejection mailed 6/26/2026 have been withdrawn because allowable subject matter from said final rejection has been incorporated into the independent claims.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 4/15/2026. Thus, the following action is properly made final for a second time.
Claim Rejections - 35 USC § 103
Claims 1, 4-10, 13, 14, 17, 18, and 20-25 are rejected under 35 U.S.C. 103 as being unpatentable over Tse (WO 97/09393) in view of Evans (US 4,677,176).
With respect to claims 1, 9, 13, Tse discloses hot melt adhesives comprising a thermoplastic base polymer such as polyethylene homo- or copolymers (i.e., thermoplastic) with a tackifier comprising at least one liquid resin and at least one solid resin (page 25, lines 5-13). Tse teaches the hot melt adhesive comprises 10-90 wt % of the base polymer and 10-90 wt % of total tackifier (page 10, lines 9-18), wherein the total tackifier includes 1-100 parts by weight liquid resin per 100 parts by weight of solid resin (page 10, lines 1-4), which provides for hot melt adhesive comprising 10-90 wt % base polymer, 0.1-45 wt % liquid resin (claimed liquid resin oil), and 5-89 wt % solid resin (claimed tackifying agent).
Tse fails to disclose (i) a liquid resin oil that is derived from a waste stream of a tackifier resin polymerization process, (ii) with sufficient specificity amount of polymer, solid resin, and liquid to anticipate the claimed ranges, or (iii) a liquid resin oil having Mz of up to 400 g/mol and a polydispersity index of up to 1.25.
With respect to (i), while Tse des not explicitly disclose deriving the liquid resin tackifier (claimed liquid resin oil) from a waste stream of a tackifier resin (a process step) such as a solid resin tackifier, it does teach that the liquid resin tackifier is based on C5-C9case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). It is the examiner’s position that Tse’s liquid resin tackifier is the same as that claimed whether made from the waste when making a solid resin tackifier resin or from a separate process of making the liquid resin tackifier or, in the event any differences can be shown for the product of the product-by-process claims, as opposed to the product taught by Tse, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results.
With respect to (ii), given that Tse discloses a range of suitable amounts that overlap with the claimed ranges, it would have been obvious to one of ordinary skill in the art to prepare a hot melt adhesive like claimed. 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).
With respect to (iii), Tse discloses that the liquid resin has a weight-average molecular weight of 100-2000, preferably 200-1000. An exemplified liquid resin tackifier Escorez 2520 has a Tg of -16°C and Mw (weight-average molecular weight) of 430 and Mw/Mn (weight average / number average) of 1.5 (page 15, lines 23-25). Tse incorporates by reference the disclosure of US 4,677,176 (Evans) (page 7, lines 8-21).
Evans discloses low softening point petroleum hydrocarbon resins (i.e., liquid resin) for use in adhesives and teaches that the molecular weight the number-average molecular weight is 100-600 and Mw/Mn is 1.1-2.7 (col. 2, lines 5-22). While neither Tse nor Evans teaches z-average molecular weight, the narrow Mw/Mn down to 1.1 suggests that Mn, Mw, and Mz are all about the same. Both Mw and Mz give more weight to the longest chains but a narrow Mw/Mn does not provide a significant increase in Mw or Mz.
Given that Evans teaches a Mw/Mn down to 1.1 and Mn of 100-600, it would have been obvious to one of ordinary skill in the art to utilize a liquid resin having a z-average molecular weight of no greater than 400 g/mol—absent a showing of unexpected or surprising results.
With respect to claims 4-6, Tse teaches that the liquid resin has percent of aromatic protons of 5-30 (page 6, lines 34-36).
With respect to claims 7, 8, and 17, Tse teaches that the liquid resin as Tg of -80 to 20°C (page 6, lines 21-23) and percent of aromatic protons of 5-30 (page 6, lines 34-36). Also Mz-Mn and Mz-Mw are expected to be up to 300 (or up to 200) because the polydispersity is very low and the molecular weight is less than 400 g/mol as discussed above.
With respect to claim 10, liquid plasticizers are optional in this claim because the amount of plasticizer can be 0 wt %.
With respect to claim 14, Tse teaches that the adhesive composition has a shear adhesion failure temperature (SAFT) of 70° or more which suggests that softening occurs greater than 60°C (page 11, lines 1-3).
With respect to claims 18, 20, and 22, Tse discloses hot melt adhesives comprising a thermoplastic base polymer such as polyethylene homo- or copolymers (i.e., thermoplastic) with a tackifier comprising at least one liquid resin and at least one solid resin (page 25, lines 5-13). Tse teaches that the liquid resin has Tg of -80 to 20°C (page 6, lines 21-23) and percent of aromatic protons of 5-30 (page 6, lines 34-36). Tse teaches the hot melt adhesive comprises 10-90 wt % of the base polymer and 10-90 wt % of total tackifier (page 10, lines 9-18), wherein the total tackifier includes 1-100 parts by weight liquid resin per 100 parts by weight of solid resin (page 10, lines 1-4), which provides for hot melt adhesive comprising 10-90 wt % base polymer, 0.1-45 wt % liquid resin (claimed liquid resin oil), and 5-89 wt % solid resin (claimed tackifying agent).
Tse fails to disclose (i) with sufficient specificity amount of polymer, solid resin, and liquid to anticipate the claimed ranges or (ii) a liquid resin oil having Mz of up to 400 g/mol and a polydispersity index of up to 1.25.
With respect to (ii), Tse discloses that the liquid resin has a weight-average molecular weight of 100-2000, preferably 200-1000. An exemplified liquid resin tackifier Escorez 2520 has a Tg of -16°C and Mw (weight-average molecular weight) of 430 and Mw/Mn (weight average / number average) of 1.5 (page 15, lines 23-25). Tse incorporates by reference the disclosure of US 4,677,176 (Evans) (page 7, lines 8-21).
Evans discloses low softening point petroleum hydrocarbon resins (i.e., liquid resin) for use in adhesives and teaches that the number-average molecular weight is 100-600 and Mw/Mn is 1.1-2.7 (col. 2, lines 5-22). While neither Tse nor Evans teaches z-average molecular weight, the narrow Mw/Mn down to 1.1 suggests that Mn, Mw, and Mz are all about the same. Both Mw and Mz give more weight to the longest chains but a narrow Mw/Mn does not provide a significant increase in Mw or Mz.
Given that Evans teaches a Mw/Mn down to 1.1 and Mn of 100-600, it would have been obvious to one of ordinary skill in the art to utilize a liquid resin having a z-average molecular weight of no greater than 400 g/mol—absent a showing of unexpected or surprising results.
With respect to claim 21, Tse des not explicitly disclose deriving the liquid resin tackifier (claimed liquid resin oil) from a waste stream of a tackifier resin (a process step) such as a solid resin tackifier but does teach C5 and C9 hydrocarbon resins (page 6, lines 28-31). Even so, case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). It is the examiner’s position that Tse’s liquid resin tackifier is the same as that claimed whether made from the waste when making a solid resin tackifier resin or from a separate process of making the liquid resin tackifier or, in the event any differences can be shown for the product of the product-by-process claims, as opposed to the product taught by Tse, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results.
With respect to claim 23, Mz-Mn and Mz-Mw are expected to be up to 200 because the polydispersity is very low and the molecular weight is less than 400 g/mol as discussed above.
With respect to claims 24 and 25, Tse teaches that the liquid resin is a low Gardner color less than 5 (page 7, lines 8-14), which suggests that the liquid resin is “water white.”
Response to Arguments
Applicant's arguments filed 9/16/2026 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
Conclusion
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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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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