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 (i.e., changing from AIA to pre-AIA ) 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.
Priority
3. This application is a CON of PCT/EP2023/062692 05/11/2023.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application EP 22172937.9 05/12/2022 filed on 12/12/24.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 11/05/24 has been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 1-10, 12 in the reply filed on 05/04/26 is acknowledged. Claims 1-15 are pending and claims 11, 13-15 have been withdrawn in an amendment filed on 05/04/26. Claims 1-10, 12 are examined in this Office action.
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 1-6, 8-10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Brandt (WO 2021/180558; for English translation patent family US 2023/0012550 applied) in view of Hensen (US 2011/0052911).
Regarding claims 1, 2, Brandt discloses a pressure-sensitive adhesive composition comprises at least one polymer selected from the group of polymers based on acrylate, polyester, urethane, ethylene acrylate, butyl rubber and (synthetic) (natural) rubber; ethylene-vinyl acetate copolymers (EVA), polyolefin (co)polymers (PO), polyamide (co)polymers (PA), ethylene-propylene copolymers or styrene copolymers, individually or as a mixture, wherein the polymer is contained in an amount of 20 to 70 wt % based on the total weight of the composition, at least one liquid resin comprising polyester polyol based on botulin (read on polyhydric alcohol) comprising betulin, dicarboxylic acid, and colophony such as gum rosin (gum rosin contains abietic acid 90-95%; read on monocarboxylic acid), plasticizer comprising poly(iso)butylenes, (para [0007]-[0009], [0018]-[0019], [0050], [0059], [0068]). Brandt does not disclose plasticizer comprising isobutene/butene copolymer.
However, Hansen discloses a pressure sensitive adhesive comprising isobutene homopolymer and functionally equivalent isobutene-butene copolymer (para [0027], [0040]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the isobutene-butene copolymer of the claims in the composition of Brandt because Hensen teaches that the claimed isobutene-butene copolymer and the isobutene homopolymer of Brandt are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Regarding claims 3-4, Brandt discloses polyester polyol based on botulin (read on polyhydric alcohol) comprising botulin in an amount of 10 to 30 wt%, fall into claimed range of 7 to 35 wt%, dicarboxylic acid in an amount of 1 to 40 wt%, overlapping claimed range of 0 to 4 wt%, and colophony such as gum rosin (gum rosin contains abietic acid 90-95%; read on monocarboxylic acid) in an amount of 15 to 70 wt, overlapping claimed 25 to 85 wt% monocarboxylic acid, wherein content of colophony is 5 to 75 wt% (para [0010], [0069]-[0071]).
A prima facie case of obviousness exists for the adhesive composition, wherein Brandt dicarboxylic acid in an amount of 1 to 40 wt%, overlapping claimed range of 0 to 4 wt%, and colophony such as gum rosin (gum rosin contains abietic acid 90-95%; read on monocarboxylic acid) in an amount of 15 to 70 wt, overlapping the requirement of claim 3. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 5, Brandt discloses the polyester polyol is contained in the pressure-sensitive adhesive composition in an amount of 5 to 30 wt % (para 0014]).
Regarding claim 6, Brandt discloses plasticizer in amount of less than 5 wt% (para [0015]), overlapping claimed range of 1 to 15 wt%.
A prima facie case of obviousness exists for the adhesive composition, wherein Brandt discloses plasticizer in amount of less than 5 wt%, overlapping the requirement of claim 6. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 8, Brandt discloses resin such as tall oil ester, or terpene in an amount of 50 to 60 wt % (para [0018]-[0019]), fall into claimed 15 to 60 wt% based on the total weight of the composition.
Regarding claim 9, Brandt discloses solid cycloaliphatic hydrocarbon resins and alkyl esters of optionally partially hydrogenated colophony having low softening points, such as methyl, diethylene glycol, glycerol and pentaerythritol esters (para [0068], [0071]).
Regarding claim 10, Brandt discloses additives such as antioxidants, stabilizers, waxes, UV protectors, solvents, adhesion promoters, fillers, pigments, flame retardants, UV absorbers, optical brighteners and fragrance, wherein additive is present in an amounts of 0.01 to 20 wt % (para [0020]-[0021]).
Regarding claim 12, Brandt discloses a tape, label, diaper, or flexible packaging (para [0096])
Claims 1-10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Herlfterkamp (US 2017/0226388) in view of Schaapman (US 2017/0190935).
Regarding claims 1, 3-7, Herlfterkamp discloses a pressure-sensitive adhesive composition comprising polymer such as such as poly-alpha olefin in amount of 70 wt%, oligoester resin in amount of 5 wt% comprising glycerol ester colophonies such as Sylvatac RE 85, and plasticizer in amount of 9.5 wt% such as isobutene/butene copolymer, e.g. Polybut 10 (para [0009], [0048], para [0060]; formulation 2). Herlfterkamp dos not disclose liquid oligoester.
However, Schaapman discloses a pressure-sensitive adhesive composition comprising polymer such as such as polyolefin, oligoester resin comprising glycerol ester colophonies such as Sylvatac RE 85 and functionally equivalent oligoester resin comprising from 15 wt % to 75 wt % by weight rosin, wherein rosin is colophony comprising abietic acid, from 36 wt % to 80 wt % by weight one or more monocarboxylic acids, from 9 wt % to 35 wt % by weight one or more polyhydric alcohols, and from 0 wt % to less than 4 wt % by weight one or more polycarboxylic acids, and plasticizer (para [0016], [0042], [0053], [0081], [0209]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the oligoester resin comprising from 15 wt % to 75 wt % by weight rosin, wherein rosin is colophony comprising abietic acid, from 36 wt % to 80 wt % by weight one or more monocarboxylic acids, from 9 wt % to 35 wt % by weight one or more polyhydric alcohols, and from 0 wt % to less than 4 wt % by weight one or more polycarboxylic acids of the claims in the composition of Herlfterkamp because Schaapman teaches that the claimed oligoester and the isobutene homopolymer Sylvatac RE 85 of Herlfterkamp are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Regarding claim 2, Herlfterkamp discloses ethylene-propylene copolymer (para [0021]).
Regarding claim 8, Herlfterkamp discloses resin additive such as Regalite S1100 in amount of 29.6 wt% (para [0062]), fall into claimed range of 15 to 60 wt%.
Regarding claim 9, Herlfterkamp discloses resin comprising cycloaliphatic hydrocarbon and solid colophony ester (para [0022]-[0024]).
Regarding claim 10, Herlfterkamp discloses Irganox 1010 antioxidant in amount of 0.5 wt% (para [0060]), fall into claimed range of 0.01 to 20 wt%.
Regarding claim 12, Herlfterkamp discloses packaging (para [0045]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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