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 .
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.
Claims 16-25 are rejected under 35 U.S.C. 103 as being unpatentable over Lei et al. (US 2018/0134926) in view of Kishi et al. (US 2011/0003947).
Considering Claim 16: Lei et al. teaches an adhesive composition (¶0001) comprising an epoxy resin, a curing agent, and a foaming agent (¶0011), where the epoxy resin comprising a first epoxy resin having a softening temperature of 86 ºC and a epoxy equivalent of 230 g/eq; and a second epoxy resin having a softening temperature of 92 ºC (Table 1, ¶0093-95). Lei et al. teaches the molecular weight of the epoxy resin as being 100 to 60,000 (¶0048).
Lei et al. teaches the adhesive as being substantially non-tacky (¶0067). The original specification describes non-tacky adhesives as having the claimed press-sensitive adhesive force (¶0095).
Lei et al. does not teach adding an acrylic resin to the adhesive composition. However, Kishi et al. teaches adding an acrylic block copolymer having an A block made from methyl acrylate that is compatible with the epoxy resin (¶0099) and a incompatible B block made from butyl acrylate (¶0104), the polymer having a molecular weight of 50,000 to 200,000 (¶0110). Kishi et al. teaches the amount of copolymer as being 17.34 to 39.02 parts per 100 parts of the epoxy (Table 2). Lei et al. and Yamada are analogous art as they are concerned with the same field of endeavor, namely epoxy resin compositions. It would have been obvious to a person of ordinary skill in the art to have added the acrylic resin of Kishi et al. to the adhesive of Lei et al., and the motivation to do so would have been, as Kishi et al. suggests, to provide increased fracture toughness to the adhesive (¶0059).
Considering Claim 17: Lei et al. teaches the first epoxy as being a naphthalene ring epoxy with an epoxy equivalent weight of 230 g/eq (¶0093). Assuming a functionality of 2, the molecular weight would thus be 460 g.
Considering Claims 18-21: Lei et al. teaches both the epoxy resins as being present in an amount of 33 parts per 100 parts epoxy (Table 1), and Lei et al. teaches the acrylic resin as being 5.4 parts per 100 parts of acrylic and epoxy (1:10-25). Thus the amount of the epoxy resin would be 16 to 31 parts per 100 parts of acrylic and epoxy.
Considering Claim 22: Lei et al. is silent towards the melt viscosity of the first epoxy resin. However, Lei et al. teaches the melt viscosity as being an important variable for the epoxy resins, controlling the flowability of the adhesive (¶0046-47). It would have been obvious to a person of ordinary skill in the art to have optimized the melt viscosity of the epoxy resin through routine experimentation, and the motivation to do so would have been, as Lei et al. et al. suggests, to control the flowability of the adhesive.
Considering Claim 23: Lei et al. teaches the epoxy resin as being a bisphenol A type novolac resin (¶0043; 130).
Considering Claim 24: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the storage elastic modulus would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 25: Lei et al. teaches a foaming adhesive sheet comprising the adhesive as a layer (¶0001).
Claims 26-30 are rejected under 35 U.S.C. 103 as being unpatentable over Lei et al. (US 2018/0134926) in view of Kishi et al. (US 2011/0003947).
Considering Claim 26: Lei et al. teaches a foaming adhesive sheet comprising an adhesive as a layer (¶0001); the adhesive composition (¶0001) comprising an epoxy resin, a curing agent, and a foaming agent (¶0011), where the epoxy resin comprising a first epoxy resin having a softening temperature of 86 ºC and a epoxy equivalent of 230 g/eq; and a second epoxy resin having a softening temperature of 92 ºC (Table 1, ¶0093-95). Lei et al. teaches the molecular weight of the epoxy resin as being 100 to 60,000 (¶0048).
Lei et al. teaches the adhesive as being substantially non-tacky (¶0067). The original specification describes non-tacky adhesives as having the claimed press-sensitive adhesive force (¶0095).
Lei et al. does not teach adding an acrylic resin to the adhesive composition. However, Kishi et al. teaches adding an acrylic block copolymer having an A block made from methyl acrylate that is compatible with the epoxy resin (¶0099) and a incompatible B block made from butyl acrylate (¶0104), the polymer having a molecular weight of 50,000 to 200,000 (¶0110). Kishi et al. teaches the amount of copolymer as being 17.34 to 39.02 parts per 100 parts of the epoxy (Table 2). Lei et al. and Yamada are analogous art as they are concerned with the same field of endeavor, namely epoxy resin compositions. It would have been obvious to a person of ordinary skill in the art to have added the acrylic resin of Kishi et al. to the adhesive of Lei et al., and the motivation to do so would have been, as Kishi et al. suggests, to provide increased fracture toughness to the adhesive (¶0059).
Considering Claim 27: Lei et al. teaches a sheet comprising an adhesive layer (2), a substrate (1) and a second adhesive layer in that order in in the thickness direction (Fig. 2; ¶0023).
Considering Claims 28 and 29: Lei et al. teaches the sheet as comprising resin films/stress releasing layers being laminated between the substrate and the adhesive layers (Fig. 2; ¶0023).
Considering Claim 30: Lei et al. teaches including a phenolic resin in the adhesive layer (¶0011).
Response to Arguments
Applicant’s arguments, see pages 1-6, filed March 16, 2026, with respect to the rejection(s) of claim(s) 16-30 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Lei et al. (US 2018/0134926) in view of Kishi et al. (US 2011/0003947).
The applicant’s argument with regard to Yamada et al. are persuasive, and the rejection has been withdrawn.
Applicant's arguments filed March 16, 2026 have been fully considered but they are not persuasive, because:
The applicant’s argument of unexpected results is not persuasive. A showing of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP § 716.02(e). The applicant has not identified a comparative example analogous to Lei et al. that would establish an unexpected result over the closest prior art of record.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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