DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the addition of new claims 11-19 in the amendments filed 5/26/2026.
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
Applicant’s arguments, see the claim amendments and the remarks filed 5/26/2026, with respect to the objection to claim 1 as set forth in paragraph 2 of the action mailed 2/25/2026, have been fully considered and are persuasive. The objection to claim 1 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 5/26/2026, with respect to the rejection of claims 1-10 under 35 U.S.C. 112(b) as set forth in paragraph 2 of the action mailed 2/25/2026, have been fully considered and are persuasive. The rejection of claims 1-10 has been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, while the specification as originally filed disclosures that the Tg of the aliphatic polyester polyurethane is less than -10 ℃ (see, for example, para 0009), which is bounded in its lower limit only by a temperature of absolute zero, the lowest Tg specified is -54 ℃ (see, for example, para 0089, Table 1). Thus, the presently recited Tg being less than -54 ℃ is not supported by the specification as originally filed.
Claim 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 19, the recitation that the Tg is less than 54 ℃ (positive temperature value) is not supported by the specification as originally filed as said specification provides for said Tg to be less than -10 ℃.
Claims 15 and 17 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.
Claims 15 and 17 contain the trademarks/trade names IMPRANIL DLN-SD and SYLVAROS DRS 731. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982).
The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademarks/trade names are used to identify/describe the recited aliphatic polyester polyurethane and biodegradable rosin ester tackifier, respectively, and accordingly, the identification/description is indefinite.
Regarding claim 17, it is unclear from the claimed invention what is, and is not, being claimed given that the claim recites that the tackifier is a “rosin ester,” but as demonstrated in Castaing (see para 0053-0054), SYLVAROS DR 731 is a “rosin acid” as distinguished from rosin esters (e.g., AQUATAC 6025).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 8, the recitation that the tackifier is present at 5 to 50 wt.% does not further limit the proportional range of current claim 1.
Claim Rejections - 35 USC § 103
Claim(s) 1-9, 11-13, 15-16 and 18 and claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2017/0247587 A1) in view of Yang et al. (US 2012/0100316 A1), and in light of the evidence provided by Guo et al. (US 20220135818 A1), Kanner et al. (US 7070051 B2) and Holguin et al. (US 6558790 B1).
Regarding claims 1, 4, 6, 8, 11 and 15 and claim 10, Ma teaches adhesive composition comprising:
an aqueous dispersion of an amorphous polyurethane (PU) comprising a (A) polyester polyol obtained via esterification of an aliphatic polyol (e.g., diethylene glycol) and an acid component (para 0010-0012), and an (B) aliphatic isocyanate (para 0013), which said amorphous structure provides a non-crystalline PU (10% or less crystallinity) and which said aqueous dispersion of an amorphous PU is present in an amount of 50 to 90 wt% towards peel adhesion and chemical resistance (para 0008-0009); and an acrylic pressure-sensitive adhesive (PSA) component (part 0040-0041).
Ma also teaches that the amorphous PU comprises a glass transition temperature (Tg) below 25 ℃ (abstract; para 0002) such as that exemplified by DISPERCOLL U42 PU (Tg at 3.5 ℃) (para 0098), which is an anionic aliphatic polyester-PU dispersion (current claim 6) (para 0080) having a weight-average molecular weight (Mw) of 33,000 as evidence via Table 2 of Guo (see para 0045 therein).
Ma does not specify the molecular weight of the PU as a number-average molecular weight (Mn) (i.e., 10,000 to 1,000,000 g/mol), or that the amorphous PU has a Tg less than -54 ℃.
However, the Examiner respectfully submits that case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
In this spirit, Yang teaches a pigmented adhesive composition comprising polyurethane dispersions (abstract, para 0024) such as polyester-based polyurethanes such as, inter alia, IMPRANIL DLN-SD and DISPERCOLL U42 (para 0030-0031), the former of which is identical to the presently claimed as the (current claim 15) recited aliphatic polyester polyurethane (Mn = 10,000 to 1,000,00 g/mol; Tg = -54 ℃).
In addition, the Examiner respectfully notes that it is established in the art that the molecular weight of a polymer is selected based on the balance of coatability, cohesion and tack as evidenced via Holguin (see column 4, lines 17-22 therein). The Examiner further respectfully notes that it is established in the art that the Tg of a polymer, and the resultant Tg of the PSA composition of which the polymer comprises, is selected based on the balance of adequate substrate wetting, tack, peel and cohesion as evidenced via Kanner (see column 8, line 58 to column 9, line 19 therein).
Further, the only deficiency of Ma/Yang is that the disclosed Tg of the PU of the cited prior art is -54 ℃, while the present claims require that the recited aliphatic polyester PU has a Tg of less than -54 ℃. It is apparent, however, that the instantly claimed Tg of less than -54 ℃ and that taught by Ma/Yang are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the IMPRANIL DLN-SD in place of the DISPERCOLL U42 based on the Tg and Mn properties of the PU - and its attendant contributions to the substrate wetting, coatability, tack, peel and cohesion - as required by the prior art’s intended application as in the present invention.
Ma continues to teach that the adhesive composition comprises tackifiers such as rosin esters from AQUATAC (para 0062-0063) such as AQUATAC 6025 (para 0080, Table 2), which is identical to that presently disclosed for providing the presently claimed biodegradable rosin ester tackifier. While the body of the Ma disclosure does not disclose the proportions of the rosin tackifiers included in the adhesive compositions, at least Inventive Example E7 para 0092; Table 3) instructs the skilled artisan that the Ma invention contemplated tackifier proportions identical to that presently claimed; i.e., 30.0 grams per 103.0 grams total components, which provided the tackifier at 30.0 g/103.0 g × 100 ~ 29 wt.% (5 to 50 wt. %, current claim 8).
The Examiner further respectfully notes that it is established in the art that tackifiers are included in PSA compositions to improve the “quick grab” properties, and towards reducing the viscosity (faster and more complete wetting of the substrate) and raising the Tg (prevention of bond failure) as evidenced via Kanner (see column 8, line 58 to column 9, line 19 therein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the disclosed tackifiers of Ma in the presently claimed proportions towards said PSA composition demonstrating the “quick grab,” viscosity and Tg properties as required by the prior art’s intended application as in the present invention.
Moreover, the Examiner respectfully reminds the Applicant that, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Therefore, it is reasonable to conclude that the PSA compositions of the prior art would demonstrate the presently claimed compostable characteristics, and under the presently claimed conditions (current claim 11); and the room temperature peel strength (at least about 0.5 lbs./in at 23 ℃; 0.5 to 1.3 lbs./in at 23 ℃, current claim 4).
Lastly, Ma teaches that the adhesives are coated on a polyester backing (para 0092), which said polyester is identical to that presently disclosed as providing the presently claimed biodegradable substrate (see para 0082 of the instant specification), and in tandem with the presently claimed compostable PSA, forms the presently claimed biodegradable label (current claim 10).
Regarding claims 2-3, as noted above (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.), the Examiner respectfully submits that is reasonable to conclude that the PSA compositions of the prior art would demonstrate the presently claimed biodegradability characteristics under the presently recited test conditions.
Regarding claims 5 and 12-13, as noted above, Ma’s amorphous polyurethane (PU) provides a non-crystalline PU (1% or less crystallinity).
Regarding claims 7 and 16, as noted above, Ma teaches adhesive composition comprises said aqueous dispersion of an amorphous PU in an amount of 50 to 90 wt%, which overlaps that presently claimed (20 to 60 wt.%, 30 to 55 wt.%), towards peel adhesion and chemical resistance.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the adhesive composition of Ma/Yang with said aqueous dispersion of an amorphous PU in an amount identical to that presently claimed based on the peel adhesion and chemical resistance required of the prior art’s intended application as in the present invention.
Regarding claim 9, Ma teaches that the adhesive composition further comprises a plasticizer (para 0064).
Regarding claim 18, as noted above, Ma teaches that the adhesive composition comprises tackifiers such as rosin esters from AQUATAC (para 0062-0063) such as AQUATAC 6025, whereas E7 provides the tackifier at 30.0 grams per 103.0 grams total adhesive components.
Also as cited above, it is established in the art that tackifiers are included in PSA compositions to improve the “quick grab” properties, and towards reducing the viscosity (faster and more complete wetting of the substrate) and raising the Tg (prevention of bond failure) as evidenced via Kanner (see column 8, line 58 to column 9, line 19 therein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the disclosed tackifiers of Ma in the presently claimed proportions (5 to 20 wt.%) towards said PSA composition demonstrating the “quick grab,” viscosity and Tg properties as required by the prior art’s intended application as in the present invention.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2017/0247587 A1) in view of Yang et al. (US 2012/0100316 A1) and in further view of Mantle et al. (US 2011/0039056 A1).
Regarding claim 14, Ma/Yang teaches the adhesive composition as in the rejection of at least current claims 1 and 9 set forth above but is silent to said plasticizer comprising a polycaprolactone oligomer.
However, Mantle teaches adhesives (title) comprising plasticizers such as, inter alia, polycaprolactone (para 0120).
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the polycaprolactone of Mantle for the plasticizer contemplated by Ma/Yang, and thereby arrive at the presently claimed invention from the disclosures of the cited prior art.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2017/0247587 A1) in view of Yang et al. (US 2012/0100316 A1) and in further view of Castaing et al. (US 2022/0251421 A1).
Regarding claim 17, Ma/Yang teaches the adhesive composition comprising tackifiers such as rosin esters from AQUATAC such as AQUATAC 6025 as in the rejection of at least current claim 1 set forth above, but is silent to the tackifiers comprising SYLVAROS DRS 731.
However, the Examiner respectfully submits that case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
In this spirit, Castaing demonstrates that AQUATAC 6025 and SYLVAROS DRS 731 are equivalent to each other in formulations comprising rosin-based resins (abstract, para 0053-0054).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ SYLVAROS DRS 731 for the tackifiers contemplated by Ma/Yang, and thereby arrive at the presently claimed invention from the disclosures of the cited prior art.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2017/0247587 A1) in view of Yang et al. (US 2012/0100316 A1) and in further view of Mantle et al. (US 2011/0039056 A1).
Regarding claim 19, Ma/Yang/Mantle teaches or renders obvious the adhesive composition comprising the aqueous dispersion of an amorphous polyurethane (PU), rosin ester tackifier and polycaprolactone plasticizer as in the rejection of at least current claims 1, 7, 14 and 16 set forth above, which is equally applicable to the present claims, to include the presently claimed wt.% proportions. It is noted that the upper limit of the presently claimed PU (i.e., 50 wt.%) overlaps with the lower limit disclosed in Ma.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 5/26/2026, with respect to the rejection of claims 1-8 and 10 over Ma et al. in view of Sellin et al. under 35 U.S.C. 103 and claim 9 over Ma et al. in view of Sellin et al. and in further view of Mantle et al. under 35 U.S.C. 103 as set forth in paragraphs 10-11 of the action mailed 2/25/2026, have been fully considered but they are not persuasive.
The Applicant’s attention is respectfully directed to the updated prior art rejections set forth above in response to the amendments to the claimed invention. In regards to the Applicant’s criticality assertions towards the presently claimed Tg value of the recited PU, the Examiner respectfully reminds the Applicant that the presently claimed invention of current claim 1 requires that the Tg value is less than -54 ℃ rather than the -54 ℃ disclosed in the inventive example of PSA 1 presently disclosed. In addition, current claim 19 only requires that the Tg is less than +54 ℃.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of Tg values less than -54 ℃ (current claim 1) or less than +54 ℃ (current claim 19). The Examiner also notes that the proportions (polyurethanes, tackifiers) presently claimed appear to recite the “non-solids” numerical values rather than the “solids” values of at least Table 1 presently disclosed. For example, current claim19 requires that the aliphatic polyester PU (and not the aliphatic polyester PU aqueous dispersion) has a lower limit of 40 wt.%, which is well above the solid content of PSA 1 (i.e. 16 wt.%).
Also, given that the Applicant’s assertions suggest that PSA 2-4 are relegated to comparative examples, it is also unclear if the PU components of PSA 2-4 have (i.e., DISPERCOLL U XP 2682, EPITOL ECO 3702, and BAYHYDROL U2891), or don’t have, crystallinity values with the presently claimed range or crystallinity values outside of it. Further, the peel values in Table 1 are provided in oz-f/in as opposed to the pounds per linear inch (at room temperature) values of the claimed invention.
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 7/15/2026
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