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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 11, 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
Election/Restrictions
Claim 34 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 27, 2026.
Applicant's election with traverse in the reply filed on March 27, 2026 is acknowledged. The traversal is on the ground(s) that the shared special technical feature does make a contribution over Ahmed et al. (cited below). Specifically, Applicant argues that Ahmed is directed to a pressure-sensitive adhesive while the instant claims recite a “hot-melt adhesive composition.” Ahmed explicitly teaches a hot-melt pressure sensitive adhesive composition, which is construed to read on the claimed “hot-melt adhesive composition.” Applicant argues that Ahmed is directed exclusively to a hot-melt pressure adhesive composition built on styrenic block copolymers, not metallocene-catalyzed copolymers as base polymers. Ahmed, however, teaches exemplary compositions based on metallocene copolymers (e.g., Example 4, [0087]). Applicant argues that the claimed tackifier and softening temperature is not met by Ahmed, however, Ahmed teaches exemplary tackifiers which meet the claimed structure and softening point (see rejection including evidentiary reference below).
Applicant’s arguments have been considered and are fully addressed in the remarks above and rejections below. The restriction was required on the grounds that the groups of inventions do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding technical feature because the shared technical feature among the inventions does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 18-30 and 32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ahmed et al. (US20080076860, hereinafter referred to as "Ahmed").
As to Claim 18: Ahmed teaches a hot-melt adhesive composition comprising polymer synthesized using a metallocene catalyst ([0015], [0042]) which may be a copolymer of ethylene and at least one C3-C20 α-olefin ([0042]). Ahmed further teaches wherein the composition comprises 5 to 20 wt% of a vegetable wax (i.e., a wax of natural origin) which may have a drop point of 155 to 160 ˚F (about 68 to about 71 ˚C) ([0031]), which is within the claimed range. Ahmed further teaches wherein the composition comprises a tackifier including an exemplary tackifier PICCOTAC 8095 (Example 4, [0087]), which is an aromatic-modified aliphatic C5 resin having a softening point of 95 ˚C.1
Ahmed teaches that the composition may be formulated to exhibit a suitable viscosity and further teaches wherein the composition exhibits a viscosity in the range of from about 200 to 1000 cps at 135 ˚C (wherein 1 cps = 1 mPa.s) ([0029]), however, Ahmed does not explicitly teach the viscosity of the composition measured at 130 ˚C.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. overall composition viscosity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 19-22: Ahmed teaches the composition of claim 18 (supra).
Ahmed teaches a hot-melt adhesive composition comprising polymer synthesized using a metallocene catalyst ([0015], [0042]) which may be a copolymer of ethylene and at least one C3-C20 α-olefin ([0042]) including 1-octene ([0043]).
As to Claim 23: Ahmed teaches the composition of claim 18 (supra).
Ahmed further teaches wherein the composition comprises a vegetable wax ([0031]).
As to Claim 24: Ahmed teaches the composition of claim 18 (supra).
Ahmed further teaches wherein the composition comprises 5 to 20 wt% of a vegetable wax (i.e., a wax of natural origin) ([0031]).
As to Claim 25: Ahmed teaches the composition of claim 18 (supra).
Ahmed further teaches exemplary compositions comprising the commercial product ESCOREZ 5400 ([0089]), the structure2 of which reads on the claimed cycloaliphatic hydrocarbon resin.
As to Claim 26: Ahmed teaches the composition of claim 18 (supra).
Ahmed further teaches wherein the composition comprises a tackifier including an exemplary tackifier PICCOTAC 8095 (Example 4, [0087]) which is present in an amount of 52.8 wt%, which is within the claimed range.
As to Claim 27: Ahmed teaches the composition of claim 18 (supra).
Ahmed teaches that the composition may be formulated to exhibit a suitable viscosity and further teaches wherein the composition exhibits a viscosity in the range of from about 200 to 1000 cps at 135 ˚C (wherein 1 cps = 1 mPa.s) ([0029]), however, Ahmed does not explicitly teach the viscosity of the composition measured at 130 ˚C.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. overall composition viscosity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 28: Ahmed teaches the composition of claim 18 (supra).
Ahmed further teaches wherein the composition comprises 5 to 20 wt% of a vegetable wax, which reads on the claimed “biomaterial” ([0031]), and is therefore within the claimed range.
As to Claim 29: Ahmed teaches the composition of claim 18 (supra).
Ahmed teaches various examples that are not construed to require a polyethylene wax (e.g., Example 4, [0087] consists of a metallocene copolymer, hydrocarbon tackifying resin, oil plasticizer, soy vegetable wax, antioxidant, and processing aid).
As to Claim 30: Ahmed teaches the composition of claim 18 (supra).
Ahmed teaches various examples that are not construed to require a C9 tackifying resin (e.g., Example 4, [0087] comprises PICCOTAC 8095, which is an aromatic modified aliphatic C5 hydrocarbon resin (see evidentiary reference1).
As to Claim 32: Ahmed teaches the composition of claim 18 (supra).
Ahmed teaches various examples that are not construed to require a styrenic block-containing copolymer (e.g., Example 4, [0087] consists of a metallocene copolymer, hydrocarbon tackifying resin, oil plasticizer, soy vegetable wax, antioxidant, and processing aid).
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.
Claims 31 and 33 is rejected under 35 U.S.C. 103 as being unpatentable over Ahmed et al. (US20080076860, hereinafter referred to as "Ahmed").
As to Claim 31: Ahmed teaches the composition of claim 1 (see above).
Ahmed teaches a hot-melt adhesive composition comprising polymer synthesized using a metallocene catalyst ([0015], [0042]) which may be a copolymer of ethylene and at least one C3-C20 α-olefin ([0042]). Ahmed further teaches that the ethylene copolymer may have a melt flow index of from 1 g/10 min to about 2000 g/10 min ([0044]), which overlaps with the claimed range.
As to Claim 33: Ahmed teaches the composition of claim 1 (see above).
Ahmed teaches wherein the composition may optionally include at least one plasticizer ([0052]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to consider excluding the plasticizer component based on processing/viscosity considerations as Ahmed contemplates that the plasticizer is optional.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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, Mark Eashoo can be reached on (571) 272-1197. 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.
/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767
1 Synthomer Technical Data Sheet - PICCOTAC 8095 Hydrocarbon Resin
2 ExxonMobil - ESCOREZ 5400 Product Datasheet
Prosecution Insights