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 with traverse of Group I (claims 1, 3-14, and 16-20) in the reply filed on 1/8/2026 is acknowledged. The traversal is on the ground(s) that prior art US 5,019,071 relied upon to establish a technical feature that is not a special technical feature does not have an aromatic content of at least 1.5%. This is found persuasive but the restriction is maintained because of the grounds of rejection set forth below.
Arguments regarding the election of species in the reply filed on 1/8/2026 are found persuasive, and the election of species requirement is withdrawn.
The requirement is still deemed proper and is therefore made FINAL.
Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/8/2026.
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.
Claims 4-7 and 18-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claims 4-7 and 18, the amount of aromatic content does not have a basis, i.e., is it based on weight, moles of aromatic groups, moles of carbon atoms in aromatic groups?
With respect to claims 19 and 20, they are rejected for failing to cure the deficiency of the claim from which they depend.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 of this title, 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, 4-6, 9, 10, 17, and 21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tse (WO 97/09393).
With respect to claim 1, Tse discloses hot melt adhesives comprising a thermoplastic base polymer with a tackifier comprising at least one liquid resin and at least one solid resin (page 25, lines 5-13). Example 2 (Table 1) comprises 45 parts by weight (pbw) Escorene 7750 ethylene-vinyl acetate copolymer (i.e., a thermoplastic polymer), 35 pbw Escorez 2393 solid resin tackifier, and 10 pbw Escorez 2520 liquid resin tackifier (page 15, lines 12-25). Tse teaches that the liquid resin tackifiers are obtained from the same processes as for the solid resin tackifiers with the distinction being molecular weight and softening and glass transition temperatures (page 6, lines 16-21)
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, 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.
Alternatively, 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 claims 4-6, Tse teaches that the most preferred aromatic modified aliphatic hydrocarbon liquid resin tackifiers (of which Escorez 2520 is one) have 5-30 % aromatic protons (page 6, lines 34-35).
With respect to claim 9, exemplified Escorene 7750 ethylene-vinyl acetate copolymer is an ethylene-polar comonomer copolymer.
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 17, exemplified Escorez 2520 liquid resin tackifier has a Tg of about -16°C (page 15, lines 23-25).
With respect to claim 21, Tse teaches that preferred liquid resin tackifiers include C5-C9 aromatic modified aliphatic hydrocarbon resins.
Claim Rejections - 35 USC § 103
Claims 3, 7, 8, 11-14, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tse (WO 97/09393).
The discussion with respect to Tse in paragraph 5 above is incorporated here by reference.
With respect to claims 3, 7, and 8, the 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 teaches that the liquid resin tackifiers have a preferred range of Mw of 100-2000 (page 6, lines 26-28)
Tse fails to explicitly teach the z-average molecular weight of the liquid resin tackifiers.
While Mz molecular weights are generally higher than either Mw, it would have been obvious to one of ordinary skill in the art to utilize Mz that overlaps with the claimed range given that Tse teaches Mw of at least 100 in combination with low Mw/Mn of 1.5 of Escorez 2520.
With respect to claims 11-13 and 16, Tse fails to anticipate the claimed amounts because all of the examples (see Tables 1-3) include 45 wt % base polymer. Even so, Tse teaches that the base polymer is present in an amount of 10-90 wt % (page 26, lines 14-16) and that the tackifier includes 10-100 pbw liquid resin tackifier per 100 pbw solid resin tackifier content. The latter amounts provide for relatively higher solid resin tackifier in the total tackifier.
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 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 claim 18, Tse discloses hot melt adhesives comprising a thermoplastic base polymer with a tackifier comprising at least one liquid resin tackifier and at least one solid resin tackifier (page 25, lines 5-13). Example 2 (Table 1) comprises 45 parts by weight (pbw) Escorene 7750 which is an ethylene-vinyl acetate copolymer (page 15, lines 12-15), 35 pbw Escorez 2393 which is a solid resin tackifier (page 15, lines 20-22), 10 pbw Escorez 2520 which is a liquid aromatic modified aliphatic hydrocarbon resin tackifier having Mw of about 430 and Mw/Mn of 1.5 and a Tg of about -16°C (page 15, lines 23-25). Tse teaches that the most preferred aromatic modified aliphatic hydrocarbon liquid resin tackifiers (of which Escorez 2520 is one) have 5-30 % aromatic protons (page 6, lines 34-35). Tse discloses that the exemplified liquid tackifier Escorez 2520 has a Mw (weight-average molecular weight) of 430 and Mw/Mn (weight average / number average) of 1.5. Tse teaches that the liquid resins have a preferred range of Mw of 100-2000 (page 6, lines 26-28)
Tse fails to explicitly teach the z-average molecular weight of the liquid resins.
While Mz molecular weights are generally higher than either Mw, it would have been obvious to one of ordinary skill in the art to utilize Mz that overlaps with the claimed range given that Tse teaches Mw of at least 100 in combination with low Mw/Mn of 1.5 of Escorez 2520.
With respect to claims 19 and 20, Tse fails to anticipate the claimed amounts because all of the examples (see Tables 1-3) include 45 wt % base polymer.
Even so, Tse teaches that the base polymer is present in an amount of 10-90 wt % (page 26, lines 14-16) and that the tackifier includes 10-100 pbw liquid tackifier per 100 pbw solid resin content. The latter amounts provide for relatively higher solid tackifier in the total tackifier.
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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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