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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/18/2025 has been entered.
Response to Amendment
Applicant’s arguments, see the claim amendments filed 12/18/2025, with respect to the objections to claim 1 as set forth in paragraphs 9-10 of the action mailed 9/24/2025, have been fully considered and are persuasive. The objections to claim 1 have been withdrawn.
Applicant’s arguments, see the claim amendments and remarks filed 12/18/2025, with respect to the rejection of claims 1-2, 5 and 9-10 under 35 U.S.C. 112(b) as set forth in paragraphs 12-13 of the action mailed 9/24/2025, have been fully considered and are persuasive. The rejection of claims 1-2, 5 and 9-10 has been withdrawn, EXCEPT for the rejection of claim 2 as set forth below.
Applicant’s arguments, see the specification amendments filed 11/24/2025, with respect to the objections to the specification as set forth in paragraphs 7-8 of the action mailed 9/24/2025, have been fully considered and are persuasive. The objections to the specification have been withdrawn.
Claim Objections
Claim 1 is objected to because of the following informalities: please amend the claim to recite “…comprising a copolymer of a diene[[,]] and an olefin-based compound…” to denote that the olefin-based compound comprises said copolymer and is not is addition to said copolymer, if that was what was intended (see, for example, page 5 of the substitute specification filed 11/13/2025). Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-2, 5 and 9 and claim 10 are 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.
Regarding claim 1, the current claim requires the alkyl (meth)acrylate, the hard comonomer and the crosslinkable monomer, and also requires that the alkyl (meth)acrylate is present in the recited polymer of the second adhesive composition at 80% or greater in weight. The current claim further requires for the alkyl (meth)acrylate to be present at 80-95 parts by weight per 100 parts by weight of said polymer, which is identical to the alkyl (meth)acrylate present at 80-85% by weight of the total weight of said polymer.
The recited hard comonomer and the crosslinkable monomer are required to be present at 1-30 parts by weight and 1-40 parts by weight, respectively, per 100 parts by weight of said polymer, which is identical to the hard comonomer and the crosslinkable monomer present at 1-30% by weight and 1-40 % by weight, respectively, of the total weight of said polymer. The proportional recitations for the hard comonomer and the crosslinkable monomer are not supported by the specification as originally filed.
See, for example, page 8 of the substitute specification filed 11/13/2025, wherein it is noted that said parts by weight quantities for each compound is based on 100 parts by weight of the alkyl (meth)acrylate and not the polymer. Page 9 of said substitute specification provides the presently recited parts by weight of the hard comonomer and the crosslinkable monomer, but the proportions are based on 55-95 parts by weight of the alkyl (meth)acrylate and not 100 parts by weight as presently claimed.
Claims 1-2, 5 and 9 and claim 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not reasonably provide enablement for the recited polymer of the second adhesive composition to comprise 80 % or greater in weight of the alkyl (meth)acrylate, and simultaneously comprise more than 20 parts by weight of the combined amounts of the recited hard comonomer and the crosslinkable monomer per 100 parts by weight of said polymer. Similarly, the specification does not reasonably provide enablement for the recited polymer of the second adhesive composition to comprise 80-95 parts by weight of the alkyl (meth)acrylate, and simultaneously comprise more than 20 parts by weight of the combined amounts of the recited hard comonomer and the crosslinkable monomer per 100 parts by weight of said polymer.
The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
In this instance, the Examiner omits the In re Wands analysis because the scope of the claimed invention encompassed by each of the two above-noted scenarios (80% in weight and 80-95 parts by weight for the alkyl (meth)acrylate) provides for the three recited monomers to be present in the recited polymer in amounts that total more than 100% by weight, which is theoretically impossible.
Claims 1-2, 5 and 9 and claim 10 are 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.
Regarding claim 1, it is unclear from the claim limitations if the alkyl (meth)acrylate, hard comonomer and crosslinkable monomer comprising the recited parts by weight limitations are the same alkyl (meth)acrylate, hard comonomer and crosslinkable monomer recited previously in the claim; or if the alkyl (meth)acrylate, hard comonomer and crosslinkable monomer comprising the recited parts by weight limitations are in addition to the alkyl (meth)acrylate, hard comonomer and crosslinkable monomer recited previously in the claim.
Regarding claim 2, it is unclear from the claim limitations if the recited barrier layer is the same barrier layer recited previously in current claim 1; or if the recited barrier layer is in addition to the barrier layer recited previously in current claim 1.
Regarding claim 10, see the rejections under the current stature noted above for current claims 1-2. Similarly, current claim 10 should be amended to:
“…[[an]]the adhesive sheet…” and,
“…preparing [[a]]the barrier film…” and,
“…forming [[a]]the first adhesive layer…” and,
“…forming [[a]]the second adhesive layer…” and,
“…forming [[a]]the barrier layer of the barrier film.”
The first recited instance of the “…on the barrier layer…” acknowledges the antecedent basis provided in current claim 1 for said barrier layer.
Response to Arguments
Applicant’s arguments, see the claim amendments and remarks filed 12/18/2025, with respect to the rejection of claim 2 under 35 U.S.C. 112(b) as set forth in paragraph 12 of the action mailed 9/24/2025, have been fully considered but they are not persuasive.
The Examiner notes that said claim amendments and said remarks have not amended the claim not argued the merits of said rejection; thus, the rejection is maintained and repeated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 1/10/2026