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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 3 of copending Application No. 18812260 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims disclose the same aqueous adhesive for ink jet printing having an overlapping range of the storage modulus [claim 3].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 6 is 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.
Claim 6 does not specify what testing conditions (say, a 180° peel test) nor the substrate to which the adhesive layer is attached (say, a non-woven fabric of polyester). The adhesive strength will vary widely for different substrates and different testing conditions, so the scope of the claim is not clear.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 5 and 7-8 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Kamiya et al (JP 2003082307 A).
Kamiya discloses an aqueous dispersion type acrylic adhesive sheet [abstract]] comprising an acrylic polymer emulsion and having a storage modulus in the claimed range with examples having storage modulus at 23°C of 3.4 and 3.7 x105 Pa [p11, p14 [0047-0050] Examples]. The adhesive composition does not contain the resins excluded from the claims or an organic solvent or a colorant.
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.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamiya et al (JP 2003082307 A).
Kamiya does not explicitly disclose an example containing two different acrylic polymers. However, Kamiya does disclose several examples of acrylic polymers used to make pressure sensitive adhesives, each having different glass transition temperatures [Examples 1-4, p14 et seq]. It would have been obvious to one having ordinary skill in the art before the effective filing date of Applicant’s invention to have used a combination of two acrylic polymers in Kamiya in order to tailor the properties such as glass transition temperature, storage modulus and gel fraction, and adjust the physical properties of the adhesive [0031 p10-11].
Polymer A of Example 1 include acrylic acid [0047] which has a homopolymer Tg of 105 to 120°C [see attached evidentiary reference by Sigma Aldrich].
Claim(s) 1-5 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nobuyuki et al (WO 2019150728 A1) in view of Kamiya et al (JP 2003082307 A).
Nobuyuki discloses an aqueous emulsion type pressure sensitive adhesive composition comprising a Vinyl Polymer (A) and an Acrylic Polymer (B) [claim 1] wherein the Polymer (A) has a higher Tg than the Polymer (B) [Tables 1 and 2] and the composition comprises 0.5 to 60 parts by mass or less of the higher Tg Polymer (A) based on 100 parts by mass of the acrylic adhesive polymer (B) [claim 5].
Nobuyuki does not explicitly disclose the storage modulus of the adhesive layer, but does disclose the shear storage modulus in the same range as the claimed storage modulus [claim 1, examples].
Kamiya, discussed above, discloses an aqueous pressure senstivif3e adhesive based on acrylic polymers, similar to Nobuyuki and the claims. Kamiya teaches that the storage modulus should be between 2.0 x 105 to 3.0 x 106 Pa, and preferably 3.4 to 3.7 x 105 Pa [0031, Examples] and that below this range the transfer of contaminants from adhesive to adherence may increase and above this range the adhesiveness to the adherend may decrease [0031, pp10-11].
It would have been obvious to one having ordinary skill in the art before the effective filing date of Applicant’s invention to have used the claimed storage modulus in the adhesvie layer of Nobuyuki because Kamiya teaches that the claimed storage modulus range optimizes the adhesiveness and purity of the adhesive layer.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takashima et al (US 20140242384 A1) in view of Kamiya et al (JP 2003082307 A).
Takashima discloses a water dispersible acrylic pressure sensitive adhesive composition comprising an acrylic emulsion polymer [abstract] wherein the pressure sensitive adhesive has an adhesive strength between 0.52 and 1.41 N/25mm [Table 1].
Takashima does not explicitly disclose the storage modulus of the adhesive layer, but does disclose the shear storage modulus in the same range as the claimed storage modulus [0156].
Kamiya, discussed above, discloses an aqueous pressure senstivif3e adhesive based on acrylic polymers, similar to Takashima and the claims. Kamiya teaches that the storage modulus should be between 2.0 x 105 to 3.0 x 106 Pa, and preferably 3.4 to 3.7 x 105 Pa [0031, Examples] and that below this range the transfer of contaminants from adhesive to adherence may increase and above this range the adhesiveness to the adherend may decrease [0031, pp10-11].
It would have been obvious to one having ordinary skill in the art before the effective filing date of Applicant’s invention to have used the claimed storage modulus in the adhesvie layer of Takashima because Kamiya teaches that the claimed storage modulus range optimizes the adhesiveness and purity of the adhesive layer.
Takashima discloses that the acrylic polymer may be used alone or in combination [0034] and several of the examples include a monomer of acrylic acid having a homopolymer Tg of 105 to 120°C [see attached evidentiary reference by Sigma Aldrich].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M DOLLINGER whose telephone number is (571)270-5464. The examiner can normally be reached 10am-6:30pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MICHAEL M. DOLLINGER
Primary Examiner
Art Unit 1766
/MICHAEL M DOLLINGER/Primary Examiner, Art Unit 1766
Prosecution Insights