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All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 4/15/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 4/15/2026. In particular, claim 1 has been amended to limit the amounts of polymer and liquid resin oil and to limit the Mz and polydispersity index of the liquid resin oil, and claims 22-25 are new. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1, 4-11, 14, 16-18, and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai (US 4,785,043).
With respect to claims 1, 10, and 21, Kawai discloses a pressure-sensitive adhesive that can be used as a hot melt (col. 5, lines 28-31) comprising 100 parts by weight (pbw) of a base block copolymer having styrene and diene blocks, 50-200 pbw of a resinous tackifier, 5-50 pbw softener, and 1-40 pbw of an aromatic synthetic oil (col. 2, lines 18-34). Inventive Example 2 in Table 1 includes 43 wt % polymer, 43 wt % resinous tackifier, 9 wt % aromatic synthetic oil, and 4 wt % mineral oil softener (i.e., liquid plasticizer). The aromatic synthetic oil includes a compound having formula Ar1—R—Ar2 having molecular weight of 173-263, a compound having formula Ar1—R1—Ar2—R2—Ar3 having a molecular weight of 300-398, and/or a compound having formula Ar1—R(Ar2)(Ar3) having molecular weight of 300-398 (col. 2, lines 33-64). Because these molecular weights of the aromatic synthetic oil are not disclosed as an average, the molecular weights meet Mw, Mn, and Mz and thus overlaps with Mz of no greater than 400 g/mol.
Kawai does not disclose the polydispersity of the aromatic synthetic oil, however, the ranges of molecular weight (173-263 for the first compound and 300-398 for the second and third compounds) provide a range no greater than 1.5 (263 ÷ 173) and 1.3 (398 ÷ 300).
While these values are not the same as polydispersity because Kawai does not explicitly disclose weight-average and number-average molecular weights, it would have been obvious to one of ordinary skill in the art to utilize a low polydispersity given that Kawai discloses a narrow range of suitable molecular weights.
While Kawai des not explicitly disclose deriving the aromatic synthetic oil from a waste stream of a tackifier resin (a process step) such as a solid resin tackifier, 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). Therefore, Kawai’s aromatic synthetic oil appears to be the same as a product derived from waste stream.
With respect to claims 4-6, the aromatic synthetic oil inherently has aromatic content of at least 4% given that the it is based on aromatic compounds having structure with substantial aromatic portions.
With respect to claims 7 and 8, the aromatic synthetic oil inherently has aromatic content of at least 4% given that the it is based on aromatic compounds having structure with substantial aromatic portions. Also, given that the difference in minimum and maximum molecular weights for the aromatic synthetic oil disclosed by Kawai, Mz-Mn and Mz-Mw would be inherently no greater than 300.
Kawai does not disclose the glass transition temperature of the aromatic synthetic oil.
Even so, because the oil is liquid at room temperature (23°C), the Tg is necessarily less than 23°C. Therefore, it would have been obvious to one of ordinary skill in the art to select an aromatic synthetic oil that has a Tg that is less than 23°C and which overlaps with claimed range of -60 to 0°C.
With respect to claim 9, the exemplified polymer is a block copolymer of polystyrene and polyisoprene (col. 5, lines 45-47).
With respect to claim 11, Kawai discloses a pressure-sensitive adhesive comprising 100 parts by weight (pbw) of a base block copolymer having styrene and diene blocks, 50-200 pbw of a resinous tackifier, 5-50 Parts by weight of softener (plasticizer), and 1-40 pbw of an aromatic synthetic oil (col. 2, lines 18-34). While Kawai does not exemplify a single embodiment having the combination of claimed amounts, Kawai discloses relative amounts that provide for the claimed amounts in wt %. For instance, when 100 pbw block copolymer is mixed with 200 parts by weight tackifier, 5 parts by weight softener, and 40 pbw aromatic synthetic oil, the amounts in wt % are 29, 58, 1, and 12, respectively.
With respect to claim 14, Kawai teaches that the hot-melt coating is used at temperatures of 130-250°C (col. 5, lines 28-31). Therefore, it would have been obvious to one of ordinary skill in the art to prepare a hot melt adhesive having a softening point greater than 60°C.
With respect to claim 16, when 100 pbw block copolymer is mixed with 200 parts by weight tackifier, 50 parts by weight softener, and 40 pbw aromatic synthetic oil, the amounts of polymer is 26 wt %.
With respect to claim 17, Kawai does not disclose the glass transition temperature of the aromatic synthetic oil.
Even so, because the oil is liquid at room temperature (23°C), the Tg is necessarily less than 23°C. Therefore, it would have been obvious to one of ordinary skill in the art to select an aromatic synthetic oil that has a Tg that is less than 23°C and which overlaps with claimed range of -40 to 0°C.
With respect to claim 18, Kawai discloses a pressure-sensitive adhesive that can be used as a hot melt (col. 5, lines 28-31) comprising 100 parts by weight (pbw) of a base block copolymer having styrene and diene blocks, 50-200 pbw of a resinous tackifier, 5-50 pbw softener, and 1-40 pbw of an aromatic synthetic oil (col. 2, lines 18-34). Inventive Example 2 in Table 1 includes 43 wt % polymer, 43 wt % resinous tackifier, 9 wt % aromatic synthetic oil, and 4 wt % mineral oil softener (i.e., liquid plasticizer). The aromatic synthetic oil includes a compound having formula Ar1—R—Ar2 having molecular weight of 173-263, a compound having formula Ar1—R1—Ar2—R2—Ar3 having a molecular weight of 300-398, and/or a compound having formula Ar1—R(Ar2)(Ar3) having molecular weight of 300-398 (col. 2, lines 33-64). Because these molecular weights of the aromatic synthetic oil are not disclosed as an average, the molecular weights meet Mw, Mn, and Mz and thus overlaps with Mz of no greater than 400 g/mol.
Kawai does not explicitly disclose (i) the glass transition temperature of the aromatic synthetic oil or (ii) the polydispersity of the aromatic synthetic oil.
With respect to (i), because the oil is liquid at room temperature (23°C), the Tg is necessarily less than 23°C. Therefore, it would have been obvious to one of ordinary skill in the art to select an aromatic synthetic oil that has a Tg that is less than 23°C and which overlaps with claimed range of -40 to 0°C.
With respect to (ii) Kawai discloses the ranges of molecular weight (173-263 for the first compound and 300-398 for the second and third compounds) provide a range no greater than 1.5 (263 ÷ 173) and 1.3 (398 ÷ 300), respectively.
While these values are not the same as polydispersity because Kawai does not explicitly disclose weight-average and number-average molecular weights, it would have been obvious to one of ordinary skill in the art to utilize a low polydispersity given that Kawai discloses a narrow range of suitable molecular weights.
With respect to claims 22 and 23, the aromatic synthetic oil inherently has aromatic content of at least 4% given that the it is based on aromatic compounds having structure with substantial aromatic portions. Also, given that the difference in minimum and maximum molecular weights for the aromatic synthetic oil disclosed by Kawai, Mz-Mn and Mz-Mw would be inherently no greater than 300.
With respect to claims 24 and 25, Kawai fails to disclose that the synthetic aromatic oil is “water white.” Even so, case law holds that purer forms of known products may be patentable, but the mere purity of a product, by itself, does not render the product unobvious. Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). Therefore, it would have been obvious to one of ordinary skill in the art to purify the synthetic aromatic oil to be water white after purification.
Allowable Subject Matter
Claims 12, 13, 19, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the amounts base block copolymer, resinous tackifier, and aromatic synthetic oil fails to oerlap with the claimed combination of amounts of polymer, tackifying agent, and liquid resin oil.
Response to Arguments
Applicant's arguments filed 4/15/2026 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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