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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Application Status
This is a first action on the merits. A preliminary amendment was filed on 11 November 2024 amending claims 2-9, 11 and 12. Claims 1-13 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 November 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities. Appropriate correction is required.
The disclosure misspells the chemical name of “2-acrylamido-2-methylpropane sulfonic acid” in multiple occurrences.
The abstract of the disclosure is objected to because it misspells the chemical name of “2-acrylamido-2-methylpropane sulfonic acid”.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-8, 12, and 13 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of copending Application No. 18/864,808. The claims filed on 11 May 2026 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, claim 1 of the ‘808 application recites an article with a pressure-sensitive adhesive layer comprising a hydrophilic monomer (acrylic acid, methacrylic acid, or C1-C3 alkyl acrylate), a hydrophobic monomer (C4-C18 alkyl acrylate), inorganic neutralizer, and surfactant. Claim 5 specifies that the acrylic polymer is a 2-ethylhexyl acrylate/ethyl acrylate/acrylic acid terpolymer. The ethyl acrylate and acrylic acid each read on hydrophilic monomers, and one may be considered to be a specialty hydrophilic monomer within the broadest reasonable interpretation of the scope of claim 1 consistent with the specification. See MPEP § 2111.
Regarding claim 2, claim 6 of the ‘808 application recites using 50-71 wt. % of ethylhexyl acrylate which reads on the hydrophobic monomer and 25-40 wt. % of ethyl acrylate and 1-10 wt. % of acrylic acid which read on the claimed hydrophilic monomer and specialty hydrophilic monomer. These are within the claimed ranges.
Regarding claim 3, claim 9 of the ‘808 application recites using from 0.1 to 5 wt. % of the surfactant which overlaps the claimed range.
Regarding claim 4, claim 6 of the ‘808 application recites using 25-40 wt. % of ethyl acrylate and 1-10 wt. % of acrylic acid which read on the claimed hydrophilic monomer and specialty hydrophilic monomer. These are within the claimed ranges.
Regarding claim 5, claims 5 and 6 of the ‘808 application recites using both ethyl acrylate and acrylic acid.
Regarding claim 6, claims 1 and 3 of the ‘808 application recite alkyl acrylates.
Regarding claim 7, claim 7 of the ‘808 application recites NaOH neutralizer.
Regarding claim 8, claim 8 of the ‘808 application recites this limitation.
Regarding claim 12, the claims of the ‘808 application do not require vinyl acetate or vinyl acetate derivatives in the adhesive layer composition.
Regarding claim 13, claim 1 of the ‘808 application recites an article with a substrate layer and a pressure-sensitive adhesive layer comprising a hydrophilic monomer, hydrophobic monomer, neutralizer, and surfactant. Claim 5 specifies that the acrylic polymer is a 2-ethylhexyl acrylate/ethyl acrylate/acrylic acid terpolymer. The ethyl acrylate and acrylic acid each read on hydrophilic monomers, and one may be considered to be a specialty hydrophilic monomer within the broadest reasonable interpretation of the scope of claim 1 consistent with the specification. This reads on the claimed label. See also claim 10 in which one of the substrates is a label.
Claim Objections
Claims 5 and 9 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 5, the claim recites “(meth)ethyl acrylate”, however the correct term is “ethyl (meth)acrylate” as the acrylic group is either an acrylate or methacrylate functional group, thus representing either ethyl acrylate or ethyl methacrylate.
Regarding claim 9, the claim misspells the chemical name of “2-acrylamido-2-methylpropane sulfonic acid” in two occurrences.
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.
Claims 1-8 and 10-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 1 and 13, the claims each refer to both a hydrophilic monomer and a “specialty” hydrophilic monomer. It is unclear from the context of the claims as to what is intended by a “specialty” hydrophilic monomer. The specification describes that the specialty hydrophilic monomer may have a number average molecular weight greater than 150 and gives non-limiting examples of suitable specialty monomers. However, limitations from the specification are not read into the claims.
Claims 2-8 and 10-12 depend on claim 1 and thus incorporate the indefinite subject matter.
Note: claim 9 is not rejected as this claim specifies the identity of the specialty hydrophilic monomer.
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 1, 2, 4-7, and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 1,935,953 A1.
Regarding claim 1, EP ‘953 discloses emulsion-type pressure-sensitive adhesive articles, see p. 2, [0001]. The article is used as an adhesive tape, see claim 8. The Examples employ a combination of butyl acrylate monomer (reading on the claimed hydrophobic monomer), ethyl acrylate and methacrylic acid (reading on the claimed hydrophilic monomer), TRITON X-405 surfactant (reading on the claimed surfactant), and aqueous ammonia neutralizer, see Comparative Example 1 at p. 7, [0048] and p. 8, [0052] and notably Example 1 at p. 8, [0059] which substitutes some of the butyl acrylate used in Comparative Example 1 with ethyl acrylate.
Various components of EP ‘953 may be considered to be the specialty hydrophilic monomer. As both ethyl acrylate and methacrylic acid are used in the examples, one may be considered as the hydrophilic monomer and the other as the specialty hydrophilic monomer. Polymerizable surfactant monomers specified at p. 5, [0029] of EP ‘953 also read on the claimed specialty hydrophilic monomer.
Example 1 thus anticipates the claimed invention.
Regarding claim 2, Example 1 employs 216.6 g of ethyl acrylate and 1552.3 g of butyl acrylate (see p. 7, [0048] and p. 8, [0059]), 36.1 g of methacrylic acid, 95 g of 1,3-butylene glycol dimethacrylate (see p. 8, [0054]), and about 51 g combined of surfactants, neutralizers, and chasers for a total of 1,951 g of solid materials. The Examiner has considered these components on a dry basis and thus excluded the mass of deionized water from the calculation. The ethyl acrylate reads on the claimed hydrophilic monomer and is present in the amount of 216.6/1951 or about 11 wt. % of the adhesive polymer composition. The butyl acrylate reads on the claimed hydrophobic monomer and is present in the amount of 1552.3/1951 or 80 wt. % of the composition.
Regarding claim 4, the amount of methacrylic acid used in Example 1 (see detail above in regards to claim 2) is 36.1 g out of 1951 g total, which is about 1.9 wt. % of the composition.
Regarding claim 5, Example 1 of EP ‘953 employs both ethyl acrylate and methacrylic acid monomers.
Regarding claim 6, Example 1 of EP ‘953 employs butyl acrylate which reads on the claimed hydrophobic monomer.
Regarding claim 7, the reference uses aqueous ammonia as a neutralizer in the examples, see p. 8, [0052].
Regarding claim 10, EP ‘953 teaches that rheology modifiers may be added to the composition, see p. 6, [0037]. The examples use 5.47 g of iron sulfate out of 1951 g total, see p. 8, [0052], which is about 0.28 wt. % of the modifier. Vanadyl sulfate is also employed in the amount of 152 g of a 3% solution, see p. 8, [0054], which is about (0.03 × 152 g / 1951 g) = 0.23 wt. % of this rheology modifier.
Regarding claim 11, the Examples of the reference use both TRITON X-405 surfactant and sodium dodecylbenzene sulfonate surfactants, see p. 7 [0048]. One of these may be considered as the surfactant and the other as the emulsifier. The amounts of these materials are in excess of 0.3 wt. % as claimed.
Regarding claim 12, the Examples of EP ‘953 do not employ any viny acetate or vinyl acetate derivative.
Regarding claim 13, The reference teaches using the adhesive composition in a label application, see p. 3, [0013]. The example adhesives are coated onto polyethylene terephthalate, see p. 7, [0043], reading on the claimed substrate.
Regarding the adhesive composition, the Examples employ a combination of butyl acrylate monomer (reading on the claimed hydrophobic monomer), ethyl acrylate and methacrylic acid (reading on the claimed hydrophilic monomer), TRITON X-405 surfactant (reading on the claimed surfactant), and aqueous ammonia neutralizer, see Comparative Example 1 at p. 7, [0048] and p. 8, [0052] and notably Example 1 at p. 8, [0059] which substitutes some of the butyl acrylate used in Comparative Example 1 with ethyl acrylate.
Various components of EP ‘953 may be considered to be the specialty hydrophilic monomer. As both ethyl acrylate and methacrylic acid are used in the examples, one may be considered as the hydrophilic monomer and the other as the specialty hydrophilic monomer. Polymerizable surfactant monomers specified at p. 5, [0029] of EP ‘953 also read on the claimed specialty hydrophilic monomer.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1,935,953 A1.
Regarding claim 3, EP ‘953 is relied upon as described above. While the examples of EP ‘953 do not employ the claimed amount of surfactant, the broader disclosure of the reference teaches using from 0.1 to 6.0 wt. % of surfactants based on the total weight of monomer components, see p. 5, [0029].
Regarding claim 9, EP ‘953 teaches that polyethylene glycol dimethacrylate is a suitable monomer that may be employed in the composition, see p. 5-6, [0032].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1,935,953 A1 in view of Mueller (U.S. Pub. 2010/0051200).
Regarding claim 8, EP ‘953 is relied upon as described above. While EP ‘953 teaches using from 0.1 to 6.0 wt. % of surfactants based on the total weight of monomer components, see p. 5, [0029], the reference does not expressly state using a sodium salt of a fatty alcohol ether sulfate as the surfactant.
Mueller describes an acrylic emulsion adhesive for a washable film, see title and abstract and p. 1, [0002]. A combination of surfactants is used in the course of polymerizing the monomers, including a sodium lauryl ether sulfate, see p. 2, [0022].
EP ‘953 and Mueller are analogous because they are similar in composition and structure and function, as each describes acrylic emulsion adhesives formed using a combination of surfactants. It would have been obvious to one of ordinary skill in the art at the time of the invention to include a sodium salt of a fatty alcohol ether sulfate such as sodium lauryl ether sulfate as taught in Mueller in the emulsion used to form the adhesive of EP ‘953 to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include such a surfactant as they are readily commercially available as described in Mueller at p. 2, [0022]. There is a reasonable expectation of success as EP ’953 and Mueller each describe forming acrylic emulsion adhesives for labels.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1,935,953 A1 in view of EP 0,770,655 A2.
Regarding claim 8, EP ‘953 is relied upon as described above. The reference does not teach or suggest using 2-acrylamido-2-methylpropane sulfonic acid or its sodium salt as a monomer in the adhesive polymer composition.
EP ‘655 describes a latex acrylic adhesive polymer used for preparing a pressure sensitive adhesive label, see p. 2, lines 2-7. Example 2 employs 1% of 2-acrylamido-2-methylpropanesulfonic acid as a monomer along with butyl acrylate, acrylic acid, sodium dodecyl benzene sulfonate, and lauryl ethylene oxide sulfonate sodium salt components, see p 5, lines 20-42. This acid monomer is employed to make an age resistant adhesive which improves stability of the polymer and reduces or eliminates crosslinking of carboxylic acid groups in the polymer adhesive by cations its filler, see p. 2, lines 8-28.
EP ‘953 and EP ‘655 are analogous because they are similar in composition and structure and function, as each describes acrylic emulsion adhesives formed using a combination of surfactants. The example compositions each employ butyl acrylate and acrylic acid as monomer components as well as sodium dodecyl benzene sulfonate surfactant. It would have been obvious to one of ordinary skill in the art at the time of the invention to include 2-acrylamido-2-methylpropanesulfonic acid as a monomer as taught in EP ‘655 in the emulsion used to form the adhesive of EP ‘953 to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include such an acid monomer as EP ‘655 teaches using such a monomer to improve the stability of the adhesive as described at p. 2, lines 8-28. There is a reasonable expectation of success as EP ’953 and EP ‘655 each describe forming acrylic emulsion adhesives for labels and each employ butyl acrylate and acrylic acid monomer components in the adhesive copolymer.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Binder (U.S. Pub. 2021/0071042, now U.S. Pat. 11,905,353) describes pressure sensitive adhesive compositions having an acrylic copolymer, surfactant, and sodium hydroxide. The reference is co-owned by the same assignee as the present application and has a common inventor.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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