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 .
Claim Objections
Claim 1 is objected to because of the following informalities: please amend the claim to recite “…adhesive composition is [[is ]]compostable when the…”. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 and claim 10 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.
Regarding claim 1, it is unclear from the claim limitations to what specific molecular weight measurement is being recited for the claimed PPU; for example, the weight-average molecular weight (Mw) number-average molecular weight (Mn), etc.
Regarding claim 1, it is unclear from the claimed invention what the Applicants are claiming as their invention as the recitation of “at least about 0.5 pounds per linear inch” has ambiguously recited the lower limit of the peel strength.
The Examiner notes that it is unclear, at least from the perspective of applying prior art to the claimed invention, how close to 0.5 pounds per linear inch the prior art must teach or suggest in order to anticipate or overlap the peel strength in the presently claimed invention. See MPEP 2173.05(b), Item (A).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation 60% biodegradability, and the claim also recites 70% biodegradability, 80% biodegradability and 90% biodegradability which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation 10% or less crystallinity, and the claim also recites 5% or less crystallinity, 3% or less crystallinity and 1% or less crystallinity which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation plasticizer, and the claim also recites a polycaprolactone oligomer which is the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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) 1-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2017/0247587 A1) in view of Sellin et al. (US 2017/0173858 A1), and in light of the evidence provided by Guo et al. (US 20220135818 A1).
Regarding claim 1 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), 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).
The PU is represented by DISPERCOLL U42, which is an anionic aliphatic polyester-PU dispersion (para 0080), and which demonstrates a weight-average molecular weight (Mw) of 33,000 as evidence via Table 2 of Guo (see para 0045 therein).
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. Inventive Example E7 of Ma provides the DISPERCOLL 42 and AQUATAC 6025 in proportions that demonstrate a peel at 23 ℃ (para 0082-0083), or room temperature, (see Tables 3-4) to stainless steel (SS) and glass of 0.78 and 0.61 N/mm, respectively, or approximately, 3.57 and 3.47 lbs./in (at least about 0.5 pounds per linear inch).
Ma is silent to the presently claimed glass transition temperature (Tg) for disclosed the amorphous aliphatic polyester PU, but does disclose that it is below 25 ℃ (abstract; para 0002), and that the DISPERCOLL U42 PU has a Tg at 3.5 ℃ (para 0098).
However, the Examiner 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). In addition, 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, Sellin teaches that comprising anionic, high molecular PU dispersions comprising adhesives are selected from DISPERCOLL U42 and DISPERCOLL U XP 2682 (para 0026), the latter of which is identical to that presently disclosed as providing the presently claimed Tg = -48 ℃ (see para 0071 and 0089 of the instant specification).
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 DISPERCOLL U XP 2682 in place of the DISPERCOLL U42 based on the Tg of the PU, and its attendant contributions to the substrate wetting, tack, peel and cohesion, as required by the prior art’s intended application as in the present invention.
Lastly, 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 under the presently recited test conditions. Further, 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 claim 4, as noted above, Inventive Example E7 of Ma teaches a peel at 23 ℃ to stainless steel (SS) and glass of 0.78 and 0.61 N/mm, respectively, or approximately, 3.57 and 3.47 lbs./in , which is outside that presently claimed. It is significant to note that the prior art peel values were obtained against stainless steel and glass, while the presently claimed peel strengths do not recite material employed for demonstrating the recited peel strengths.
However, also as set forth above, 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, as well as the inclusion of tackifiers is selected based on adjusting the peel properties and bond failure.
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 PU polymers and the tackifiers in proportions commensurate with providing the presently claimed room temperature peel strength (0.5 to 1.3 lbs. per linear inch) based on the peeling properties and bond strengths required by the prior art’s intended application as in the present invention.
Regarding claim 5, as noted above, Ma’s amorphous polyurethane (PU) provides a non-crystalline PU (1% or less crystallinity).
Regarding claim 6, as noted above, Ma teaches that the aliphatic PU dispersion is anionic.
Regarding claim 7, 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, 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 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 8, Example 7 of Ma (para 0092) teaches that the AQUATAC 6025 tackifier is present at approximately 29 wt% (i.e., 30 grams ÷ (70 grams + 30 grams + 3 grams) × 100).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US 2017/0247587 A1) in view of Sellin et al. (US 2017/0173858 A1), and in further view of Mantle et al. (US 2011/0039056 A1).
Regarding claim 9, Ma/Sellin teaches adhesive composition as in the rejection of at least current claim 1 set forth above; and also teaches that the adhesive composition further comprises a plasticizer (para 0064), 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/Sellin, and thereby arrive at the presently claimed invention from the disclosures of the cited prior art.
Conclusion
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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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/17/2026