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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8 December 2025, per the request for continued examination filed 23 January 2026, has been entered.
Response to Amendment
The Amendment filed 8 December 2025 has been entered. Claims 1, 3 – 6, 15, and 21 remain pending in the application.
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 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.
Claims 1, 3 – 5, 15, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sherman (WO 2016/106040 A1) in view of Wang (US 6,232,366 B1), Iseki (WO 2012/053349 A1, referencing a machine translation thereof provided with the Office Action mailed 17 April 2025) and Traser (US 2013/0273362 A1).
Regarding claim 1, Sherman discloses an adhesive sheet (“adhesive article”, e.g. “adhesive article” 100 as a tape” e.g. Fig. 1A, 1B, 2, 3; p. 1, l. 15, to p. 7, l. 11) comprising”
a substrate (“substrate”, e.g. “substrate layer” 400: e.g. Fig. 1A, 1B, 2, 3; p. 34, ll. 6 – 11; p. 35, ll. 25 – 26; p. 39, ll. 26 – 27; p. 40, ll. 1 – 2);
a heteroatom-containing polymer, wherein the heteroatom-containing polymer is in contact with at least at a portion of a surface of the substrate (“first crosslinked pressure sensitive adhesive layer”, e.g. “first crosslinked pressure sensitive adhesive layer” 100” e.g. Fig. 1A, 1B, 2, 3; p. 3, II. 6 – 11, 15 - 17; p. 3, I. 31, to p. 4, I. 9; p. 4, I. 19, to p. 5, I. 2; p. 5, I. 25, to p. 6, I. 4; p. 6, I. 30, to p. 7, I. 8; p. 8, II. 13 – 23; p. 11, II. 20 - 30; p. 12, I. 1, to p. 21. I. 26; p. 32, I. 18, to p. 34, I. 5; p. 35, I. 16, to p. 36, I. 9; p. 38, I. 14, to p. 40, I. 6; p. 41, I. 1, top. 45, I. 27),
the heteroatom-containing polymer being obtained from the polymerization of Monomer A and Monomer B,
with Monomer A is methyl acrylate or vinyl acetate (as a monomer with a Tg greater than 0°C equivalent to methyl methacrylate: e.g. p. 19, ll. 14 – 22; p. 20, ll. 1 – 11; p. 12, ll. 11 – 19; Wang notes methyl acrylate and vinyl acetate have a Tg greater than 10 °C: e.g. Col. 5, ll. 50 – 57 ), and
with Monomer B comprising a side chain having a heterocyclic group (“heteroarylene”, e.g. N-vinyl pyrrolidone or N-vinyl caprolactam, as “monomer B” in the “first crosslinked pressure sensitive adhesive layer”, the examples given having nitrogen in their respective rings” e.g. p. 10, II. 26 – 28; p. 12, I. 29, to p. 13, I. 5; p. 13, I. 22, to p. 14, I. 8); and
a silicone adhesive layer, wherein the silicone adhesive layer is in contact with the heteroatom-containing polymer (“second siloxane-based pressure sensitive
adhesive layer” 200” e.g. Fig. 1A, 1B, 2, 3; p. 3, I. 6, to p. 5, I. 2; p. 5, I. 25, to p. 6, I. 4; p. 6, I. 29, to p. 7, I. 8; p. 8, II. 13 – 24; p. 9, II. 24 – 26; p. 11, I. 20, to p. 12, I. 21; p. 21, I. 20, to p. 30, I. 8; p. 31, II. 4 – 11; p. 32, I. 31, to p. 34, I. 5; p. 35, I. 21, to p. 36, I. 17; p. 37, II. 8 – 10; p. 38, I. 14, to p. 40, I. 6; p. 41, I. 1, to p. 45, I. 27),
wherein the adhesive sheet is characterized by an interfacial adhesion between the substrate and the silicone adhesive layer that is greater than an interfacial adhesion for a comparable adhesive sheet with a silicone adhesive layer but without the heteroatom-containing polymer (e.g. p. 3, ll. 15 – 17; p. 6, ll. 12 – 15; p. 6, l. 29, to p. 7, l. 8; p. 8, ll. 13 – 23; p. 11, ll. 20 – 32; p. 33, ll. 19 – 21; p. 41, ll. 1 – 11; p. 43, ll. 1 – 16).
With respect to the claimed interfacial adhesion, Sherman discloses the “first crosslinked pressure sensitive adhesive layer” adheres to the “substrate” due to having similar surface energies (“first surface energy”: e.g. p. 3, ll. 15 – 17; p. 6, ll. 12 – 15; p. 6, l. 29, to p. 7, l. 8; p. 8, ll. 13 – 23; p. 11, ll. 20 – 32; p. 33, ll. 19 – 21; p. 41, ll. 1 – 11; p. 43, ll. 1 – 16).
Meanwhile, Sherman also discloses the “second siloxane-based pressure sensitive adhesive layer” adheres to a second surface due to having similar surface energies which are relatively higher (“second surface energy”, where the “first surface energy” is lower than the “second surface energy”: e.g. p. 3, ll. 15 – 17; p. 6, ll. 12 – 15; p. 6, l. 29, to p. 7, l. 8; p. 8, ll. 13 – 23; p. 11, ll. 20 – 32; p. 33, ll. 19 – 21; p. 41, ll. 1 – 11; p. 43, ll. 1 – 16). The examiner understands these descriptions such that, due to the mismatch of surface energy between the “substrate” and the “second siloxane-based pressure sensitive adhesive layer”, the interfacial adhesion therebetween would be worse without the presence of the “first crosslinked pressure sensitive adhesive layer”.
Accordingly, Sherman provides the claimed interfacial adhesion of the substrate and the silicone adhesive layer.
Although Sherman is not explicit as to the substrate comprising polyvinyl chloride, this feature would have been obvious in view of Iseki and Traser.
MPEP § 2143, I, B, states the following regarding simple substitution of one known element for another to obtain predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
(2) a finding that the substituted components and their functions were known in the art;
(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), Sherman discloses an adhesive substrate, but differs by the presence of a substrate comprising polyvinyl chloride.
With respect to (2) and (3), Iseki discloses substrate for adhesive sheets comprising polyvinyl chloride which are equivalent to species such as polyester and polyolefin, e.g. as nonwoven substrates (e.g. p. 10, l. 422, to p. 11, l. 436).
Traser notes substrates for adhesive sheets which have low surface energies, where species such as polyvinyl chloride are equivalent to species such as polyester and polyolefin (e.g. ¶¶ [0005], [0035], [0037] [0088] – [0091], [0095]).
Sherman makes similar disclosures about surface energy with respect to their substrate, which can be a nonwoven and/or a polyester or polyolefin (e.g. p. 3, ll. 15 – 17; p. 6, ll. 12 – 15; p. 6, l. 29, to p. 7, l. 8; p. 8, ll. 13 – 23; p. 11, ll. 20 – 32; p. 33, ll. 19 – 21; p. 34, ll. 7 – 11; p. 41, ll. 1 – 11; p. 43, ll. 1 – 16).
Accordingly, the components for substitution and their respective functions are known in the art and would have a predictable result for their substitution, namely suitability as low surface energy substrates.
With respect to (4), Sherman’s adhesive sheet is suitable for bonding, among other things, optical articles (e.g. p. 7, l. 32, to p. 8, l. 1; p. 11, ll. 7 – 19; p. 12, ll. 1 – 4; p. 18, ll. 7 – 10; p. 30, ll. 18 – 24; p. 33, ll. 21 – 23, 29 – 31; p. 34, ll. 7 – 30; p. 35, ll. 7 – 15; p. 41, ll. 16 – 18). Iseki makes a similar disclosure with respect to their uses (e.g. p. 10, ll. 411 – 416; p. 12, ll. 479 – 481; p. 15, ll. 627 – 628), so a substitution for Iseki’s substrates would have been understood to be suitable for the intended use of Sherman’s disclosure.
Therefore, it would have been obvious to substitute a substrate as Sherman discloses, e.g. a polyester or polyolefin substrate, for one comprising polyvinyl chloride as Iseki and Traser suggest. The rationale for this modification is to provide an alternative adhesive sheet which has a suitable low surface energy substrate and which is compatible for use in optical articles.
Regarding claim 3, in addition to the limitations of claim 1, Sherman discloses the heteroatom-containing polymer component forms a layer on the substrate (e.g. Fig. 1A, 1B, 2, 3; p. 3, l. 21, to p. 4, l. 9; p. 4, l. 19, to p. 5, l. 2; p. 5, l. 25, to p. 6, l. 4; p. 6, l. 29, to p. 7, l. 8; p. 39, l. 14, to p. 40, l. 6).
Regarding claim 4, in addition to the limitations of claim 1, Sherman discloses the heteroatom-containing polymer is present on the surface of the substrate and within the substrate (the “primer layer” is spread over the “base material” such as a web or fabric, where penetration into surface imperfections caused by the fiber construction thereof would have been understood, particularly when processed through the nip of a pair of rollers: e.g. Fig. 1A, 1B, 2, 3; p. 3, l. 21, to p. 4, l. 9; p. 4, l. 19, to p. 5, l. 2; p. 5, l. 25, to p. 6, l. 4; p. 6, l. 29, to p. 7, l. 8; p. 34, ll. 6 – 11; p. 37, l. 27, to p. 38, l. 13; p. 39, l. 14, to p. 40, l. 6).
Regarding claim 5, in addition to the limitations of claim 1, Sherman discloses the substrate is a fabric (e.g. p. 34, ll. 6 – 11) as does Iseki (e.g. p. 11, ll. 435 – 436).
Regarding claim 15, in addition to the limitations of claim 1, Sherman discloses the substrate is non-woven (e.g. p. 34, ll. 6 – 11) as does Iseki (e.g. p. 11, ll. 435 – 436).
Regarding claim 21, although Sherman is not explicit as to the heteroatom-containing copolymer being a copolymer of (I) 1-vinyl-2-pyrrolidine or 1-vinylimidazole and (II) methylacrylate, Iseki notes a copolymer of 1-vinylimidazole (as an example of a heterocyclic vinyl monomer) and methylacrylate (as an example of (meth)acrylic acid ester) are suitable for forming an “undercoat” which is useful for its coatability and anchoring power even in high temperature and high humidity atmospheres that can be expected when used with electronic devices (e.g. p. 1, l. 30, to p. 12, l. 500).
Considering Sherman’s adhesive sheet can be used with electronic devices (e.g. p. 34, ll. 14 – 16), it would have been obvious to provide a heteroatom-containing copolymer which is a copolymer of, e.g., 1-vinylimidazole and methylacrylate as Iseki suggests, the motivation being to provide an electronic device which can withstand high temperature and high humidity.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sherman, Iseki, and Traser as applied to claim 1 above, and further in view of Leir (US 5,512,650 A).
Regarding claim 6, although Sherman does not explicitly state the silicone adhesive is a crosslinked silicone adhesive, this feature would have been obvious in view of Leir.
Leir discloses crosslinked silicone adhesives afford added stability, solvent resistance, and additional strength in comparison to non-crosslinked silicone adhesives (e.g. Col. 12, ll. 22 – 27).
Sherman identifies stability and strength as beneficial aspects of silicone adhesives (e.g. p. 27, ll. 8 – 22; p. 34, ll. 1 – 4).
Furthermore, Sherman states silicone adhesives as Leir discloses are useful for forming the silicone adhesive layer (per a citation to Leir’s patent number: e.g. p. 23, ll. 23 – 25).
Therefore, it would have been obvious to modify Sherman’s silicone adhesive to be a crosslinked silicone adhesive, the motivation being to improve and/or ensure stability, solvent resistance, and strength for the silicone adhesive.
Response to Arguments
Applicant’s arguments, see pp. 4 – 5, filed 8 December 2025, with respect to the rejections of claims 1, 3 – 6, 15, and 21 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
The examiner presented the discussion following this paragraph in the Advisory Action mailed 9 January 2026. Applicant’s request for continued examination submitted 23 January 2026 does not include any response to this discussion. Accordingly, the examiner maintains the following:
Applicant asserts Sherman requires a Monomer A to be a high Tg monomer, which Applicant asserts methyl acrylate and vinyl acetate are not.
The examiner observes the specification does not use the terms “Monomer A” or “Monomer B” in the specification and therefore appears to borrow such nomenclature from Sherman.
“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See MPEP § 2111.01, II.
Since neither “Monomer A” nor “Monomer B” are used in the specification, it would be improper to consider either to have any particular properties, e.g. a Tg or hydrophobic properties as Applicant mentions in the Arguments. The same applies to the resulting polymer.
Therefore, a polymer containing a combination of a monomer comprising a side chain having a heterocyclic group with either (or both) of methyl acrylate or vinyl acetate will be considered to meet proposed claim 1.
To this end, Sherman mentions (meth)acrylate-based pressure sensitive adhesives which can include a plurality of monomers under a “Monomer B” category where the homopolymer Tg is at least 10°C. Sherman mentions “heteroarylene”, e.g. N-vinyl pyrrolidone or N-vinyl caprolactam, as “monomer B”, both of which have nitrogen in their respective rings, and methyl methacrylate (e.g. p. 10, II. 26 – 28; p. 12, I. 29, to p. 13, I. 5; p. 13, I. 22, to p. 14, I. 8).
N-vinyl pyrrolidone or N-vinyl caprolactam therefore satisfy “Monomer B” as proposed. Sherman notes methyl methacrylate is an equivalent to both methyl acrylate and methyl acrylate as a monomer with a Tg greater than 0°C (e.g. p. 19, ll. 14 – 22). Wang (US 6,232,366 B1) notes all three have a Tg greater than 10°C (e.g. Col. 5, ll. 50 – 57) and therefore would fall into the category of Sherman’s “Monomer B”.
Given Sherman’s disclosure of using plurality species of their “Monomer B” (e.g. p. 14, ll. 7 – 8) and no particular amounts of either of the proposed Monomer A or Monomer B are required, it follows that Sherman necessarily includes heteroatom-containing polymers in contrast to Applicant’s assertions. Sherman’s “Monomer B” covering species which are within Monomer A and Monomer B as Applicant asserts does not change the fact a heteroatom-containing polymer with such materials is disclosed.
As to the substrate materials, Applicant asserts Iseki mentions nylon as a substrate material which does not have low surface energy and therefore cannot be used to rely on equivalence for use with methyl acrylate and 1-vinylimidazole.
First, the methyl acrylate/1-vinylimidzole embodiment Applicant considers for Iseki’s deficiencies is narrower than proposed claim 1 permits. Moreover, the examiner notes the rejections do not rely on nylon in any context. Additionally, due to the requirements of matching surface energy, Traser is reasonable to consider for purposes of establishing equivalency between polyvinyl chloride with polyester and polyolefin nonwoven substrates. This fact about Traser is particularly true in light of Traser’s considerations for matching surface energy, meaning any monomers which Traser discloses are necessarily compatible with the polyvinyl chloride substrate. Due to other established equivalencies of monomers for the heteroatom-containing polymer, compatibility on the basis of surface energy is expected within the art.
Therefore, the examiner finds the cited art to read on the claimed invention.
Conclusion
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783