DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 07/22/2026 is acknowledged. All outstanding rejections, except as set forth below are withdrawn in light of amendments. Claims 20-38 are examined on the merits in this office action.
Claim Rejections - 35 USC § 103
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.
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.
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 20, 21, 24-30, 32-34, 36 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (WO 2021/127351 A1 cited in IDS) in view of Akai et al. (EP2112180A1 cited in IDS).
Regarding claims 20, 21 and 24-29, Davis et al. disclose a hot-melt adhesive composition comprising at least 40 wt% of metallocene-catalyzed polybutene-1 comprising at least 30 wt% of a first-metallocene-catalyzed polybutene-1, a semi-crystalline polymer and a tackifying agent (see page 33, claim 1 and page 34, claim 14).
The metallocene-catalyzed polybutene-1 includes a metallocene-catalyzed polybutene-1-copolymer derived from at least 50 wt% of butene and less than 50 wt% of a-olefin comonomer such as ethylene (see page 7, lines 20-25). Given that the first-metallocene-catalyzed polybutene-1 can be 100 wt%, the hot-melt adhesive composition comprises at least 40 wt% of the first-metallocene-catalyzed polybutene-1 as the metallocene-catalyzed polybutene-1, wherein the metallocene-catalyzed polybutene-1 can be a metallocene-catalyzed polybutene-1/ethylene copolymer (copolymer A).
The semi-crystalline polymer includes propylene copolymers derived from propylene and a-olefin commoners such as ethylene and butene that can be used in combination (see page 9, lines 10-16). Therefore, the semi-crystalline polymer is propylene-ethylene-butene copolymer (copolymer T). The amount of semi-crystalline polymer is 0 to 30 wt% in the hot-melt adhesive composition (see pages 10-11, lines 31-3). The semi-crystalline polymer has a heat of fusion from greater than 10 J/g to no greater than 58 J/g (page 5, lines 8-9).
The tackifying agent includes ESCOREZ 1310LC (see page 13, line 16), which is identical to that utilized in the present invention (see page 5, lines 34-35 of present specification). Further, ESCOREZ 1310LC is nonhydrogenated tackifying resin as presently claimed (see page 13, lines 9-11 of present specification). The amount of tackifying agent is 5 to 35 wt% in the hot-melt adhesive composition (see page 13, lines 25-29).
While Davis et al. disclose semi-crystalline propylene-ethylene-butene copolymer, Davis et al. do not disclose semi-crystalline propylene-ethylene-butene copolymer comprising more than 50 wt% of units derived from propylene.
Akai et al. disclose a propylene-based polymer comprising 65 to 80 mol% of a structural unit derived from propylene, 5 to 10 mol% of a structural unit derived from ethylene and 15 to 25 mol% of a structural unit derived from C4-C20 a-olefin (C4 reads on butene), and having a crystal fusion of 5 to 45 J/g (see Abstract and paragraphs 0018, 0019). That is, propylene-based polymer is propylene-ethylene-butene copolymer. As evidenced by Davis et al., the semi-crystalline polymer has a heat of fusion from greater than 10 J/g to no greater than 58 J/g (page 5, lines 8-9). Given that the propylene-based polymer has a crystal fusion of 5 to 45 J/g, the propylene-based polymer is a semi-crystalline polymer. The propylene-based polymer when used as adhesive to various adherends, shows a desired initial adhesion and will not contaminate adherends, and has excellent handling properties and good workability (see Abstract and paragraphs 0003, 0004).
Based on 65 to 80 mol% of propylene, the mass of propylene is 2735 to 3366 (2735 = 65 x 42.08 and 3366 = 80 x 42.08, 42.08 is MW of propylene). Based on 5 to 10 mol% of ethylene, the mass of ethylene is 140 to 281 (140 = 5 x 28.05 and 281 = 10 x 28.05, 28.05 is MW of ethylene). Based on 15 to 25 mol% of butene, the mass of butene is 842 to 1403 (842 = 15 x 56.11 and 1403 = 25 x 56.11, 56.11 is MW of butene). Accordingly, the total mass is 4419 (65 mol% propylene - 2735, 10 mol% ethylene - 281 and 25 mol% butene - 1403) to 4348 (80 mol% propylene - 3366, 5 mol% ethylene - 140 and 15 mol% butene - 842). Based on these amounts, the mass% of propylene is 61.9 to 77.4 wt% (61.9 = 2735/4419 x 100 and 77.4 = 3366/4348 x 100), mass of ethylene is 3.2 to 6.4 wt% (3.2 = 140/4348 x 100 and 6.4 = 281/4419 x 100) and mass of butene is 19.4 to 31.7 wt% (19.4 = 842/4348 x 100 and 31.7 = 1403/4419 x 100).
In light of motivation for using propylene-ethylene-butene copolymer disclosed by Askai et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use propylene-ethylene-butene copolymer of Akai et al. as the semi-crystalline propylene-ethylene-butene copolymer in hot-melt adhesive composition of Davis et al. in order to provide a desired initial adhesion that does not contaminate adherends, and provide excellent handling properties and good workability, and thereby arrive at the claimed invention.
While Davis et al. disclose the hot-melt adhesive composition, Davis et al. in view of Akai et al. do not disclose the hot-melt self-adhesive composition. However, given that hot-melt adhesive composition of Davis et al. in view of Akai et al. comprises polybutene-1/ethylene copolymer (copolymer A), semi-crystalline propylene-ethylene-butene copolymer (copolymer T) and non-hydrogenated tackifying resin identical to that presently claimed, with their amounts overlapping with that presently claimed, the hot-melt adhesive composition of Davis et al. in view of Akai et al. is identical to that presently claimed. Therefore, the hot-melt adhesive composition of Davis et al. in view of Akai et al. is necessarily inherently hot-melt self-adhesive composition.
Regarding claim 30, Davis et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. As noted above, Davis et al. disclose ESCOREZ 1310LC as the nonhydrogenated tackifying resin in the hot-melt adhesive composition. Given that ESCOREZ 1310LC can be the only tackifying agent present in the hot-melt adhesive composition (see page 13, line 5 and line 16), the hot-melt adhesive composition does not comprise a tackifying resin other than ESCOREZ 1310LC.
Regarding claim 32, Davis et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. As noted above, Davis et al. disclose at least 40 wt% of polybutene-1/ethylene copolymer (copolymer A) and 0 to 30 wt% of propylene-ethylene-butene copolymer (copolymer T). Accordingly, a total content of copolymer A and copolymer T is 40 to 100 wt%.
Regarding claim 33, Davis et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. As noted above, Davis et al. disclose at least 40 wt% of polybutene-1/ethylene copolymer (copolymer A), 0 to 30 wt% of propylene-ethylene-butene copolymer (copolymer T) and 5 to 35 wt% of tackifying resin. That is, a total content of copolymer A and copolymer T is 40 to 100 wt% and a content of tackifying resin is 5 to 35 wt%. According to the present claim, a weight ratio of polymers (copolymer A and copolymer T) is 40 to 90 wt% and tackifying resin is 10 to 60 wt%. Accordingly, Davis et al. meets present claim.
Regarding claim 34, Davis et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. Further, Davis et al. disclose 0 wt% of amorphous polymers such as styrene block copolymers (see page 11, lines 4-12 and line 22).
Regarding claims 36 and 38, Davis et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. Further, Davis et al. disclose hot-melt adhesive composition is useful to bond substrates (layers B and C) made from synthetic polymer fibers such as polypropylene fibers (thermoplastic material) (see page 14, line 26, line 30 and lines 17-19). Therefore, Davis et al. disclose a multilayer film comprising a first substrate made of thermoplastic material/hot-melt adhesive composition/a second substrate made of thermoplastic material. Although there is no explicit disclosure that the substrates are “thin”, given that the claim only broadly require “thin” layers with no specific recitation of thickness and given that the multilayer film of Davis et al. is used in packaging (see page 15, lines 2-3), the substrates are considered to be thin layers. The multilayer film (first substate/hot-melt adhesive/second substrate) is used to prepare boxes, i.e. reclosable packaging (see page 15, lines 2-3). That is, reclosable packaging comprises the multilayer film.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (WO 2021/127351 A1 cited in IDS) in view of Akai et al. (EP2112180A1 cited in IDS) as applied to claim 20 above, further in view of Wust et al. (EP0347741A2 cited in IDS). It is noted that the disclosures of Wust et al. are based on a machine translation (cited in IDS).
Regarding claim 35, Davis et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. Davis et al. in view of Akai et al. do not disclose the hot-melt self-adhesive composition in form of granules of ellipsoidal shape as presently claimed.
Wust et al. discloses hot melt adhesives prepared having geometric shape including ellipsoidal shape (see paragraphs 0018-0019). The use of geometric shape reduces agglomeration and ensures pourability (see paragraph 0018).
Although there is no disclosure of the dimension of the major axis and minor axis of the ellipsoid, it would have been an obvious to one having ordinary skill in the art at the time the invention was made to modify the size of the adhesive ellipsoid including to dimensions of the major axis and minor axis as presently claimed, based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In light of motivation for using hot melt adhesive having ellipsoidal shape disclosed by Wust et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use hot melt adhesive having ellipsoidal shape, including having dimension of the major axis and minor axis as presently claimed, in Davis et al. in view of Akai et al. in order to produce a hot melt adhesive with reduced agglomeration and pourability, and thereby arrive at the claimed invention.
Claims 20-29, 31-34, 36 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Heemann et al. (EP 3260512 A1 cited in IDS) in view of Akai et al. (EP2112180A1 cited in IDS).
Regarding claims 20-29, Heemann et al. disclose a pressure sensitive adhesive composition comprising 35 to 74 wt% of a butene-1-copolymer, 5 to 50 wt% of a liquid tackifier and 0 to 30 wt% of an olefin copolymer (see page 6, claim 1 and claim 6, and page 7, claim 10).
The butene-1-copolymer (copolymer A) comprises 85 to 100 mol% of butene and comonomer is ethylene (see page 6, claim 1 and page 2, lines 50-54). Accordingly, the amount of ethylene is 0 to 15 mol%. The broad range of mol% of butene and mol% of ethylene will necessarily overlap with wt% of butene and wt% of ethylene as presently claimed. The butene-1-copolymer has Mw/Mn (polydispersity index) of lower than 4 (see page 2, lines 57-58). The butene-1-copolymer has a shore A hardness of lower than 90 (see page 3, lines 7-8). The butene-1-copolymer has a melt index of at most 10 (see page 2, lines 55-56).
The liquid tackifier includes liquid hydrocarbon resin comprising polymerized structure derived from aliphatic petroleum derivatives containing 4 to 6 carbons, which can be optionally further hydrogenated (see paragraph 0014). That is, the liquid tackifier can be non-hydrogenated hydrocarbon resin comprising polymerized structure derived from aliphatic petroleum derivatives containing 4 to 6 carbons. This reads on non-hydrogenated tackifying resin as presently claimed.
While Heemann et al. disclose the olefin copolymer, Heemann et al. do not disclose the olefin copolymer is propylene-ethylene-butene copolymer.
Akai et al. disclose a propylene-based polymer comprising 65 to 80 mol% of a structural unit derived from propylene, 5 to 10 mol% of a structural unit derived from ethylene and 15 to 25 mol% of a structural unit derived from C4-C20 a-olefin (C4 reads on butene) (see Abstract and paragraphs 0018, 0019). That is, propylene-based polymer is propylene-ethylene-butene copolymer. The propylene-based polymer when used as adhesive to various adherends, shows a desired initial adhesion and will not contaminate adherends, and has excellent handling properties and good workability (see Abstract and paragraphs 0003, 0004).
Based on 65 to 80 mol% of propylene, the mass of propylene is 2735 to 3366 (2735 = 65 x 42.08 and 3366 = 80 x 42.08, 42.08 is MW of propylene). Based on 5 to 10 mol% of ethylene, the mass of ethylene is 140 to 281 (140 = 5 x 28.05 and 281 = 10 x 28.05, 28.05 is MW of ethylene). Based on 15 to 25 mol% of butene, the mass of butene is 842 to 1403 (842 = 15 x 56.11 and 1403 = 25 x 56.11, 56.11 is MW of butene). Accordingly, the total mass is 4419 (65 mol% propylene - 2735, 10 mol% ethylene - 281 and 25 mol% butene - 1403) to 4348 (80 mol% propylene - 3366, 5 mol% ethylene - 140 and 15 mol% butene - 842). Based on these amounts, the mass% of propylene is 61.9 to 77.4 wt% (61.9 = 2735/4419 x 100 and 77.4 = 3366/4348 x 100), mass of ethylene is 3.2 to 6.4 wt% (3.2 = 140/4348 x 100 and 6.4 = 281/4419 x 100) and mass of butene is 19.4 to 31.7 wt% (19.4 = 842/4348 x 100 and 31.7 = 1403/4419 x 100).
In light of motivation for using propylene-ethylene-butene copolymer disclosed by Akai et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use propylene-ethylene-butene copolymer (copolymer T) of Akai et al. as the olefin copolymer in the pressure sensitive adhesive composition of Heemann et al. in order to provide a desired initial adhesion that does not contaminate adherends, and provide excellent handling properties and good workability, and thereby arrive at the claimed invention.
Accordingly, Heemann et al. in view of Akai et al. disclose the pressure-sensitive adhesive composition. Heemann et al. in view of Akai et al. do not disclose a pressure-sensitive adhesive composition is a hot-melt self-adhesive composition.
While there is no disclosure that the pressure-sensitive adhesive composition is a hot-melt self-adhesive composition as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. hot-melt self-adhesive composition, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art pressure sensitive adhesive composition and further that the prior art structure which is a pressure sensitive adhesive composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding clam 31, Heemann et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. Given that hot-melt self-adhesive composition of Heemann et al. in view of Akai et al. comprises polybutene-1/ethylene copolymer (copolymer A), propylene-ethylene-butene copolymer (copolymer T) and non-hydrogenated tackifying resin identical to that presently claimed, with their amounts overlapping with that presently claimed, the hot-melt adhesive composition of Heemann et al. in view of Akai et al. is identical to that presently claimed. Therefore, the hot-melt adhesive composition of Heemann et al. in view of Akai et al. within the overlapping ranges, necessarily inherently has a melt flow index as presently claimed.
Regarding claim 32, Heemann et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. As noted above, Heemann et al. in view of Akai et al. disclose 35 to 74 wt% of polybutene-1/ethylene copolymer (copolymer A) and 0 to 30 wt% of propylene-ethylene-butene copolymer (olefin copolymer or copolymer T). Accordingly, a total content of copolymer A and copolymer T is 35 to 100 wt%.
Regarding claim 33, Heemann et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. As noted above, Heemann et al. in view of Akai et al. disclose 35 to 74 wt% of polybutene-1/ethylene copolymer (copolymer A), 0 to 30 wt% of propylene-ethylene-butene copolymer (olefin copolymer or copolymer T) and 5 to 50 wt% of tackifying resin. That is, a total content of copolymer A and copolymer T is 35 to 100 wt% and a content of tackifying resin is 5 to 50 wt%. According to the present claim, a weight ratio of polymers (copolymer A and copolymer T) is 40 to 90 wt% and tackifying resin is 10 to 60 wt%. Accordingly, Heemann et al. in view of Akai et al. meets present claim.
Regarding claim 34, Heemann et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. Given that there is no disclosure of styrene block copolymer in Heemann et al., the amount of styrene block copolymer is 0 wt%.
Regarding claims 36 and 38, Heemann et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. Further, Heemann et al. disclose the pressure sensitive adhesive composition applied between two substrates made of polyethylene (thermoplastic material) (see paragraph 0025). The adhesive layer between two substrates reads on a multilayer film. Although there is no explicit disclosure that the substrates are “thin”, given that the claim only broadly require “thin” layers with no specific recitation of thickness and given that the multilayer film of Heemann et al. is used in packaging (see page 4, claims 12 and 13), the substrates are considered to be thin layers. Further, an article such as reclosable packaging can be prepared from the multilayer film (see page 4, claims 12 and 13).
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Heemann et al. (EP 3260512 A1 cited in IDS) in view of Akai et al. (EP2112180A1 cited in IDS) as applied to claim 20 above, further in view of Wust et al. (EP0347741A2 cited in IDS). It is noted that the disclosures of Wust et al. are based on a machine translation of the reference (cited in IDS).
Regarding claim 35, Heemann et al. in view of Akai et al. disclose the hot-melt self-adhesive composition as set forth above. Heemann et al. in view of Akai et al. do not disclose the hot-melt self-adhesive composition in form of granules of ellipsoidal shape as presently claimed.
Wust et al. discloses hot melt adhesives prepared having geometric shape including ellipsoidal shape (see paragraphs 0018-0019). The use of geometric shape reduces agglomeration and ensures pourability (see paragraph 0018).
Although there is no disclosure of the dimension of the major axis and minor axis of the ellipsoid, it would have been an obvious to one having ordinary skill in the art at the time the invention was made to modify the size of the adhesive ellipsoid including to dimensions of the major axis and minor axis as presently claimed, based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In light of motivation for using hot melt adhesive having ellipsoidal shape disclosed by Wust et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use hot melt adhesive having ellipsoidal shape, including having dimension of the major axis and minor axis as presently claimed, in Heemann et al. in view of Akai et al. in order to produce a hot melt adhesive with reduced agglomeration and pourability, and thereby arrive at the claimed invention.
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Heemann et al. (EP 3260512 A1 cited in IDS) in view of Akai et al. (EP2112180A1 cited in IDS) as applied to claim 36 above, further in view of Genske et al. (5,071,686 cited in IDS).
Regarding claim 37, Heemann et al. in view of Akai et al. disclose a multilayer film comprising first substrate made of polyethylene/adhesive layer/second substrate made of polyethylene. Heemann et al. in view of Akai et al. do not disclose the multilayer film as presently claimed.
Genske et al. disclose a multiple layer film comprising a first layer comprising polypropylene polymer, a second layer comprising polyethylene and a third layer comprising polypropylene layer (see col. 10, claims 1 and 2).The multilayer film has excellent tolerance to shock abuse (see col. 2, lines 21-23).
In light of motivation for using multiple layer film disclosed by Genske et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use multiple layer film as both the first substrate and the second substrate instead of the first substrate comprising polyethylene film and the second substrate comprising polyethylene film, respectively in Heemann et al. in view of Akai et al. in order to provide excellent tolerance to shock abuse, and thereby arrive at the claimed invention.
Accordingly, Heemann et al. in view of Akai et al. and Genske et al. disclose the multilayer film comprising polypropylene layer/polyethylene layer (layer B)/polypropylene layer (layer D)/adhesive layer (layer A)/polypropylene layer (layer E)/polyethylene layer (layer C)/polypropylene layer.
Response to Arguments
Applicant's arguments filed 07/22/2026 have been fully considered but they are not persuasive.
Applicant acknowledges that Davis's "TACKIFYING AGENT" section lists various classes of tackifying agents and trade-named products, including ESCOREZ 1310LC (a nonhydrogenated resin), among a broader list of roughly a dozen products spanning several supplier families (EASTOTAC, ESCOREZ, WINGTACK, PICCOTAC, ARKON, REGALITE/REGALREZ), Applicant does not contend that Davis fails to disclose a nonhydrogenated resin. It is listed as one option among many. However, Davis's disclosure does not differentiate or distinguish this nonhydrogenated resin from the many hydrogenated resins in the same list, and Davis's framing expressly identifies suitable tackifying agents as "fully hydrogenated aliphatic and cycloaliphatic hydrocarbon resins, fully hydrogenated aromatic modified aliphatic hydrocarbon resins, and combinations thereof."
While applicants argue that ESCOREZ 1310LC is among a broader list of tackifying agents, the fact remains that Davis et al. disclose ESCOREZ 1310LC as tackifying resin (see page 13, line 16), which is identical to that utilized in the present invention (see page 5, lines 34-35 of present specification). It would have been obvious to one of ordinary skill in the art to select any tackifying resin, including that presently claimed, absent evidence to the contrary. As evidenced by the present specification, ESCOREZ 1310LC is nonhydrogenated tackifying resin (see page 13, lines 9-11 of present specification).
While Davis disclose suitable classes of tackifying agents include, e.g. "fully hydrogenated aliphatic and cycloaliphatic hydrocarbon resins, fully hydrogenated aromatic modified aliphatic hydrocarbon resins, and combinations thereof", Davis also disclose ESCOREZ 1310LC as tackifying resin (see page 13, lines 7-16). Further, “nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
Applicants argue that significantly, every one of Davis's actual working examples (Comparative C1-C2 and Examples E1-E29, across Tables 1-3) uses only ESCOREZ 5400 or EASTOTAC H130W as the tackifying agent, which is consistent with Davis's "fully hydrogenated" framing, and Davis never uses ESCOREZ 1310LC in any example. ESCOREZ 5400 and EASTOTAC H130W are hydrogenated tackifying resins. Technical data sheets for ESCOREZ 5400 and EASTOTAC H130W, confirming their hydrogenated character, are being submitted concurrently herewith for the Examiner's consideration as Appendix A and Appendix B. Moreover, Davis's examples are evaluated only for fiber tear, viscosity, set time, specific gravity, PAFT, SAFT, and heat stress resistance (IOPP), which are properties relevant to fiber-tearing bonds to case/carton substrates. Davis never measures, discusses, or evaluates peel rupture quality, stick-slip behavior, or opening/reclosing strength, which are the specific functional properties that the present specification identifies as depending on the nonhydrogenated character of the tackifying resin (see, e.g., specification paragraphs [0009]-[0012], [0135]-[0138], and working Examples 1- 2/Table 1, which compare a composition containing a hydrogenated resin (Regalite S1100) exhibiting stick-slip and weak reclosing strength versus compositions containing a nonhydrogenated resin (Escorez 1310LC) achieving homogeneous opening and improved reclosing strength).
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). As noted above, Davis also disclose ESCOREZ 1310LC as tackifying resin (see page 13, lines 7-16).
While present specification compares a composition containing hydrogenated resin (Regalite S1100) and nonhydrogenated resin (Escorez 1310LC) have different results (see Table 1), there are no examples in Davis that establishes criticality of hydrogenated resins over Escorez 1310LC, a nonhydrogenated resin.
Regarding the data set forth in the specification, the data is not persuasive given that it is not commensurate in scope with the scope of the present claims. Specifically, the examples use (i) one specific but-1-ene-ethylene copolymer in specific amounts while the present claims encompass broader but-1-ene-ethylene copolymer in broader amounts, (ii) one specific propylene-ethylene-butene copolymer in specific amounts while the present claims encompass broader specific propylene-ethylene-butene copolymer in broader amounts, and (iii) one specific nonhydrogenated tackifying resin in a specific amount, while the present claims encompass broader nonhydrogenated tackifying resin in any amount. There is no data at the upper and lower end of the claimed amounts of but-1-ene-ethylene copolymer or propylene-ethylene-butene.
Regarding “Davis never measures, discusses, or evaluates peel rupture quality, stick-slip behavior, or opening/reclosing strength, which are the specific functional properties that the present specification identifies as depending on the nonhydrogenated character of the tackifying resin”, it is noted that these properties are not claimed and therefore, it is not required that Davis disclose such properties to be properly applied against the present claims. Given that Davis in view of Akai disclose hot melt adhesive composition as presently claimed, such composition would necessarily inherently possess the same properties as the present invention, absent evidence to the contrary.
Applicants argue that Akai, relied upon for the propylene content of copolymer T, likewise does not address rupture quality, stick-slip, or reclosing strength, nor does it employ any tackifying resin in its working examples (Akai's Examples 1-11 and Comparative Examples 1-2 include no tackifier ingredient).
However, note that while Akai do not disclose all the features of the present claimed invention, Akai is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely a specific semi-crystalline propylene-ethylene-butene copolymer, and in combination with the primary reference, discloses the presently claimed invention.
Further, “obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation”, In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1966).
Applicants argue that Wust is relied upon only for the ellipsoidal granule shape and does not address, discuss, or remedy the deficiency identified above with respect to the Davis/Akai combination.
However, note that while Wust do not disclose all the features of the present claimed invention, Wust is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely hot-melt adhesive composition in form of granules of ellipsoidal shape, and in combination with the primary reference, discloses the presently claimed invention.
Applicants argue that Heemann's composition includes a liquid tackifier (component ii) and a solid tackifier (component iii). Heemann's preferred embodiments state that the liquid tackifier is "preferably a hydrocarbon resin; more preferably a hydrogenated hydrocarbon resin," and similarly that the solid tackifier is "preferably a hydrocarbon resin; more preferably a hydrogenated hydrocarbon resin." Heemann further provides an express technical rationale for this preference, stating: "The use of hydrogenated hydrocarbon resin as tackifier (solid as well as liquid) leads to an improved compatibility with the polymer i) of the present invention" (i.e., with Heemann's butene-1 (co)polymer).
However, Heeman disclose that the liquid tackifier includes liquid hydrocarbon resin comprising polymerized structure derived from aliphatic petroleum derivatives containing 4 to 6 carbons, which can be optionally further hydrogenated (see paragraph 0014). That is, the liquid tackifier can be non- hydrogenated hydrocarbon resin comprising polymerized structure derived from aliphatic petroleum derivatives containing 4 to 6 carbons. This reads on non-hydrogenated tackifying resin as presently claimed.
Further, “nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
Applicants argue that all Heemann's working examples demonstrating successful reclosability (Examples 1-3, Table 1) use only hydrogenated resins (Regalite R1010, Regalite R1090, Regalite S1100). Heemann's Comparative Example 5, which uses an aromatic modified resin (Wingtack Extra), fails to achieve acceptable performance. No example uses a nonhydrogenated tackifying resin of the type recited in claim 20. Heemann's reclosability testing evaluates only compositions based on these hydrogenated (or aromatic-modified) tackifiers and does not evaluate or compare a nonhydrogenated tackifying resin of the kind presently claimed, nor does it address the opening strength/rupture-quality behavior discussed in the present specification.
As set forth above, Heeman discloses non-hydrogenated tackifying resin. While applicants point to examples, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Further, the examples of Heeman do not establish criticality of hydrogenated tackifiers over nonhydrogenated tackifiers.
Applicants argue that Akai is relied upon only for copolymer T's propylene content and does not address or remedy this deficiency.
However, note that while Akai do not disclose all the features of the present claimed invention, Akai is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely a specific olefin copolymer, and in combination with the primary reference, discloses the presently claimed invention.
Applicants argue that Wust is relied upon only for the ellipsoidal granule shape and does not address or remedy the deficiency identified above with respect to the Heemann/Akai combination.
However, note that while Wust do not disclose all the features of the present claimed invention, Wust is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely hot-melt adhesive composition in form of granules of ellipsoidal shape, and in combination with the primary reference, discloses the presently claimed invention.
Applicants argue that Genske is relied upon only for the multilayer substrate structure (B/D/A/E/C sequence) and does not address, discuss, or remedy the deficiency identified above with respect to the Heemann/Akai combination.
However, note that while Genske do not disclose all the features of the present claimed invention, Genske is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely a specific multilayer film, and in combination with the primary reference, discloses the presently claimed invention.
In light of amendments, claim objections are withdrawn.
In light of amendments, 112(b) paragraph rejections are withdrawn.
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.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
