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 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.
Claim 9 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. Claim 9 recites the olefinic block copolymer is ethylene-propylene copolymer or ethylene-butene copolymer. There is nowhere in the specification that supports such and in fact the specification recites the APAO is ethylene-propylene copolymer or ethylene-butene copolymer. It is believed Applicant intended to recite the APAO is ethylene-propylene copolymer or ethylene-butene copolymer and has been examined as such. Applicant is advised to amend or cancel the claim.
Claim 16 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 16 recites shear tan delta of 1 at a temperature range, but neither the claims nor the specification provide test conditions. Shear tan delta is dependent on the test conditions since heating rate affect transitions and frequency affect crossover temperature and strain amplitude affect structure. Without specifying these conditions, it is unclear what is being claimed and further many adhesives with varying conditions such as these could achieve the claimed shear tan delta. To further clarify the rejection, the present claim language recites “The hot melt adhesive composition according to claim 1, wherein the hot melt adhesive composition comprises a shear tan delta (G" / G') in a dynamic mechanical analysis is that is equal to 1 in the range of from 60 °C to 100 °C.” The unclear language has been underlined. The grammar is unclear and does not make sense as it appears words were left out or misplaced as a first issue. Further, “equal to 1 at some temperature in the range of 60̊C to 100̊C” is ambiguous. Such language could mean tan delta equals 1 at some temperature somewhere between 60̊ and 100̊C or it could mean tan delta equals 1 throughout the entire range of 60̊-100̊C. Applicant has stated that Applicant intended to recite tan delta crossover occurs somewhere in that temperature range therefore language that would make this more clear would be “…wherein the hot melt adhesive composition has a shear tan delta (G”/g’) equal to 1 at a temperature in the range of 60̊-100̊C, as determined by dynamic mechanical analysis.” For purposes of examination, the cited art is considered to read on the claimed shear tan delta. Applicant is advised to amend the claim language or delete the claim.
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.
Claims 1-8, 10-19 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Davis (PG Pub. 2012/0328805) in view of Wang (PG Pub. 2018/0208874).
Regarding claims 1-5, 7, 15 and 26, Davis teaches a hot melt adhesive composition comprising based on the total weight of the hot melt adhesive composition the claimed amount of polymer (greater than 50% polyolefin first polymer is taught) [claim 1], the claimed amount (up to above 15% is taught) of additive comprising a hydrocarbon wax and an alcohol and/or carboxylic acid and the claimed amount of resin (tackifying resin can be construed as the resin and is taught as being up to 40% ) [0032-0034, 0036 and 0041-0043]. An antioxidant is taught as optional and is including up to 2 wt % [0044]. Davis also teaches a laminate using the hot melt composition of claim 1.
Davis is silent regarding the specifics of the alcohol or carboxylic acid. However, Wang et al. teaches functionalized hydrocarbon wax with carboxylic with the claimed amount of carbons and alcohol with the claimed amount of carbons in order to improve biodegradability and still maintain good properties including hardness, melting point, cohesiveness, clarity and water repellency among other properties [0027 and 0116 and claim 35]. It would have been obvious to one of ordinary skill in the art to use the wax of Wang et al. in Davis in order to improve biodegradability and still maintain good properties including hardness, melting point, cohesiveness, clarity and water repellency among other properties and arrive at the claimed invention.
Regarding claim 6, the hot melt adhesive has the claimed amount of processing oil as the claim recites up to 15% which includes 0%.
Regarding claim 8, the polyolefin is taught as amorphous poly-alpha olefin copolymer including ethylene-propylene copolymer [0016 and US Pat. 4859757 which is incorporated].
Regarding claim 10, Davis teaches the polyolefin has a Brookfield viscosity at 190 degrees Celsius according to ASTM 3236 in the claimed range [0005].
Regarding claim 11, Davis is silent regarding the specifics of the additive. However, Wang et al. teaches wax with hydrocarbon wax and carboxylic acid (PEG 200D) in the claimed amounts in order to improve biodegradability and still maintain good properties including hardness, melting point, cohesiveness, clarity and water repellency among other properties [0161]. It would have been obvious to one of ordinary skill in the art to use the wax of Wang et al. in Davis in order to improve biodegradability and still maintain good properties including hardness, melting point, cohesiveness, clarity and water repellency among other properties and arrive at the claimed invention.
Regarding claim 12, the hydrocarbon wax has a congealing point in the claimed range as Davis teaches polyethylene wax with ring and ball of 50-150 degrees Celsius and a molecular weight of 500-10,000 [0037].
Regarding claim 13, Davis is silent regarding the penetration. However, Wang et al. teach penetration according to ASTM 1321 at 23 degrees Celsius of below 10 1/10 mm in order to provide improved strength. It is noted that even though Davis teaches at 23 degrees Celsius, it believed the penetration would remain in the claimed range at a mere 2 degrees more. Further, it would have been obvious to arrive at the claimed penetration in order to improve strength and arrive at the claimed invention. It would have been obvious to one of ordinary skill in the art to use the penetration as taught by Wang et al. in Davis in order to improve strength and arrive at the claimed invention.
Regarding claim 14, the hydrocarbon wax is a Fischer-Tropsch wax [0037].
Regarding claim 16, the previous combination is silent regarding the claimed shear tan delta. However, given the previous combination teaches such similar composition in such similar amounts and such similar wax and wax amounts, the claimed shear tan delta is necessarily inherent.
Regarding claim 17, the previous combination is silent regarding the claimed sprayable temperature. However, given the previous combination teaches such similar composition in such similar amounts and such similar wax and wax amounts, the claimed sprayable temperature is necessarily inherent. It is further noted that even the comparative examples in the present specification have sprayable temperatures in the claimed range.
Regarding claim 18, Although the previous combination does not disclose the claimed method, it is noted that “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed method and given that the previous combination meets the requirements of the claimed adhesive composition, the previous combination clearly meet the requirements of present claims adhesive composition.
Regarding claim 19, Davis teaches a method to produce a laminate, the method comprising: providing a first layer and a second layer; coating the first layer and/or the second layer with the hot melt adhesive composition arranging the first layer and the second layer such that the hot melt adhesive composition coating on the first layer and/or on the second layer is positioned between the first layer and the second layer; and pressing the first layer and second layer together-thereby to produce the laminate [0046 and 0059].
Claims 20-27 are rejected under 35 U.S.C. 103 as being unpatentable over Davis (PG Pub. 2012/0328805) in view of Wang (PG Pub. 2018/0208874) in view of De Jonge et al. (WO 2020/049454).
Regarding claims 20-27, the previous combination is silent regarding the claimed spray temperature, nozzle pressure, spray coating amount and pressing between rollers. However, De Jonge et al. teach spray temperature in the claimed range and spray coating and nozzle pressure in the claimed range and pressing the first and second layers (nonwoven first and second layers with hot melt adhesive therebetween to make a laminate) by feeding the layers between rollers in order to achieve adequate sprayability and adhesion to produce a laminate. Moreover, given the previous combination teaches such similar composition in such similar amounts and such similar wax and wax amounts, the claimed sprayable temperature is necessarily inherent. It is further noted that even the comparative examples in the present specification have sprayable temperatures in the claimed range. It would have been obvious to one of ordinary skill in the art to use the spray temperature, nozzle pressure, spray coating amount and pressing between rollers taught by De Jonge et al. in the previous combination in order to achieve adequate sprayability and in order to achieve adequate adhesion to produce a laminate and arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 08/13/2026 have been fully considered but they are not persuasive.
Applicant argues claim 16 is not indefinite. As set forth above, the rejection has been maintained and Applicant’s arguments were not found to be convincing. To further clarify the rejection, the present claim language recites “The hot melt adhesive composition according to claim 1, wherein the hot melt adhesive composition comprises a shear tan delta (G" / G') in a dynamic mechanical analysis is that is equal to 1 in the range of from 60 °C to 100 °C.” The unclear language has been underlined. The grammar is unclear and does not make sense as it appears words were left out or misplaced as a first issue. Further, “equal to 1 at some temperature in the range of 60̊C to 100̊C” is ambiguous. Such language could mean tan delta equals 1 at some temperature somewhere between 60̊ and 100̊C or it could mean tan delta equals 1 throughout the entire range of 60̊-100̊C. Applicant has stated that Applicant intended to recite tan delta crossover occurs somewhere in that temperature range therefore language that would make this more clear would be “…wherein the hot melt adhesive composition has a shear tan delta (G”/g’) equal to 1 at a temperature in the range of 60̊-100̊C, as determined by dynamic mechanical analysis.” Applicant is advised to amend the claim language or delete the claim.
Applicant argues nothing in Wang or Davis directs a person of ordinary skill in the art to the claimed composition or selecting the missing elements. Davis teaches the claimed hot melt adhesive of claim 1 with the exception of the specifics or the carboxylic acid and alcohol. Wang teaches functionalized hydrocarbon wax with carboxylic with the claimed amount of carbons and alcohol with the claimed amount of carbons in order to improve biodegradability and still maintain good properties including hardness, melting point, cohesiveness, clarity and water repellency among other properties [0027 and 0116 and claim 35] with the aim of providing biodegradability as admitted by Applicant in the Remarks dated 08/13/2026 and also teaches improved properties of hardness and cohesiveness.
Applicant argues the Davis and Wang do not recognize nor aim to improve the flexibility, reduce wax-induced rigidity and other properties argued in the Remarks dated 08/13/2026. Per MPEP 2144 IV, Rational different from Applicant’s is permissible. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Therefore, Applicant’s arguments are not found to be convincing. Applicant is invited to amend the claims over the cited art.
Art Not Used but Relevant
PG Pub. 2014/0378924 teaches a laminate for absorbent articles with first and second nonwoven adhesively bonded by a hot melt adhesive.
Conclusion
THIS ACTION IS MADE FINAL. 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 SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789
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