DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 2-3 in the amendments filed 12/11/2025.
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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 12/11/2025, with respect to the rejection of claim 2 under 35 U.S.C. 112(d) as set forth in paragraph 7 of the action mailed 11/20/2025, have been fully considered and are persuasive. The rejection of claim 2 has been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1, 6 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanno et al. (US 2016/0032154 A1).
Regarding claim(s) 1, 6 and 9-10, Kanno teaches a pressure-sensitive adhesive (PSA) sheet comprising a cured PSA layer (current claim 10) comprising a PSA composition (para 0016-0017) comprising cross-linkers (curing agents) (para 0078), and comprising a polymer (A) comprising a polyurethane (para 0022), or an acrylic polymer comprising a urethane acrylate polymer (urethane polymer) (para 0038-0039). Kanno also teaches that the PSA comprises polymer (B) comprising monomer (B1) comprising a functional groups and a polyorganosiloxane skeleton towards easy peelability and is selected from, inter alia, X-22-174DX (para 0052-0053), which is identical to that presently disclosed for the presently claimed (acryl-based polymer comprising (meth)acrylate-silicone monomer, 500 to 10,000 g/mol; Chemical Formula 3).
Kanno further teaches that the polymer (B) comprises hydroxy group containing (meth)acrylates monomers (B2), and that monomer (B2) is present at 10 to 80 % by weight, which overlaps that presently claimed (1 to 20 % by weight) towards a balance of reduced initial adhesion and adequate adhesion over time (para 0052, 0664-0065, 0069-0070); that the monomer (B1) is present at 5 to 50 % by weight, which overlaps that presently claimed (0.1 to 10 % by weight), towards a balance the reduction of adhesion and adequate adhesion over time (para 0062).
Kanno continues to teach that polymer (B) comprises, other than the monomers (B1) and (B2), monomer(s) such as, inter alia, n-butyl acrylate (alkyl (meth)acrylate having less than 8 carbon atoms) (para 0067-0068) in an amount up to 85% by mass (para 0071), which overlaps that presently claimed (70 to 98.9 % by weight).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide polymer (B) with monomer (B1), monomer (B2) and monomer(s) other than monomers (B1) and (B2), such as n-butyl acrylate, and in amounts identical to that presently claimed, towards a balance of reduced initial adhesion and adequate adhesion over time as in the present invention.
Kanno continues to teach that the weight-average molecular weight (Mw) of polymer (A) is 30,000 to 5,000,000, which overlaps that for the presently claimed urethane polymer (60,000 to 160,000 g/mol), towards a balance of cohesion and flow property (para 0026); and that the Mw of polymer (B) is 10,000 to 100,000, which overlaps that for the presently claimed acryl-based polymer (10,000 to 60,000 g/mol, current claim 6), towards a balance of initial adhesion and adhesion over time (para 0072).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the polymers (A) and (B) with the presently claimed Mw’s towards a balance of cohesion, flow, reduced initial adhesion and adequate adhesion over time as in the present invention.
Kanno moreover teaches that polymer (B) is present at 0.5 to 12 parts by mass per 100 parts by mass of polymer (A), which overlaps that presently claimed (acryl-based polymer at 1-10 parts by weight per 100 parts by weight urethane polymer), towards a balance of maintaining PSA properties over times and rework PSA force (para 0077), and that the cross-linking agent is present at 0.5 to 10 parts by mass per 100 parts by mass of polymer (A) (current claim 9) (para 0083).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the polymers (A) and (B) in the presently claimed proportions towards a balance of maintaining PSA properties over times and rework PSA force as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 12/11/2025, with respect to the rejection of claims 1-3, 6 and 9-10 over Kanno et al. under 35 U.S.C. 103 as set forth in paragraph 8 of the action mailed 11/20/2025, have been fully considered but they are not persuasive.
The Examiner respectfully disagrees with the Applicant’s assertions that the prior art rejection of the previous action, which is re-asserted above, relies on the “fragmentary extraction and recombination of disparate elements” from the Kanno disclosure. Indeed, the Examiner is uncertain as to what these assertions are intended to convey in regards to the patentability, or lack thereof, of the presently claimed invention over the invention disclosed in the cited prior art. The Examiner acknowledges that the entirety of the Kanno reference was not cited in said rejection, but the Examiner did not feel that it was necessary or coherent to do so. Instead, the prior art rejection attempted to cite (extract) those portions of Kanno (i.e., fragments) and to cited those portions of the reference (recombine) relevant to the presently claimed invention (i.e., disparate) in the most comprehensive and succinct manner towards demonstrating that Kanno teaches or renders obvious said claimed invention.
The Examiner also respectfully acknowledges that the currently amended claim 1 has been amended to include, verbatim, all the limitations of previous claim 3 (now canceled). However, as provided in the previous prior art rejection, the Kanno reference was employed to reject both previous claim 1 and previous claim 3. The current prior art rejection set forth above, in response to the noted claim amendments, reiterates that the Kanno reference is identically applicable to the presently claimed invention. Indeed, the Examiner respectfully submits that there is no difference between the “structural limitation” of the claimed invention recited in current claim 1 versus that previously recited in claims 1 and 3, to include the recited “Chemical Formula 3” and it its specific limitations (e.g., R1-R7 substitution patterns).
Kanno specifically teaches said Chemical Formula 3 via its conspicuous disclosure of the X-22-174DX compound, which is identical to one of the trademarked compounds provided by the present disclosure as enabling the disputed Chemical Formula 3 (see, for example, the paragraph bridging pages 16-17 of the Substitute Specification filed 5/7/2021). Also disclosed in Kanno is X-22-2426, which is another of the trademarked compounds provided by the present disclosure as enabling the disputed Chemical Formula 3. Further, Chemical Formula 4 and Chemical Formula 5 of Kanno (see para 0054) instruct the skilled artisan as to the scope of the structure(s) contemplated for use as monomer (B1), which demonstrates a significant overlap with the structure of said Chemical Formula 3.
Continuing, the Examiner acknowledges that the character of the recited acryl-based polymer of previous claim 1, in and of itself, has been altered due to the inclusion of the limitations of previous claim 3. However, as noted above, Kanno was employed in the previous action to reject both previous claim 1 and previous claim 3 identically to the manner currently rejected as set forth above, to include the monomeric components of the single acryl-based polymer. There was no attempt in the previous or current actions suggesting that the presently claimed alkyl, hydroxy-containing and the CF3-defined silicone (meth)acrylates were components separate from the claimed acryl-based polymer.
The Examiner further acknowledges the presently claimed invention’s requirements, to include the acryl-based polymer and the urethane polymer with each of its attendant proportions and properties. However, the Examiner respectfully, albeit vehemently, disagrees with the Applicant’s contention that the polymer (A) and polymer (B) are “alternative embodiments” or “optional components.” One skilled in the art only need to consult claim 1 of Kanno, wherein it is noted that the claimed invention, not simply the broader body-text of the Kanno reference, requirement polymer (A) and polymer (B) to be combined in the claimed manner, and with proportions overlapping that presently recited.
Synergistically, as previously and currently cited, Kanno instructs one skilled in the art as to the motivation(s) for the disclosed combination of the polymers (A) and (B), as well as their attendant proportions; for example, towards reduced initial adhesion and adequate adhesion over time (see the rejection set forth above). The Examiner is unable to locate anything in the disclosure of Kanno, or in the citations therefrom in the previous or current actions, referring to a “polymer (3)” as presently argued. Clarification in this latter matter is respectfully requested.
The Applicant re-asserts the introduction of the limitations of previous claim 3 (i.e., Chemical Formula 3), and further asserts that the overlapping ranges of (i) monomer proportions, (ii) molecular weight(s), and (iii) parts-by-weight ratios are no longer prima facie obvious based on the proportions disclosed in Kanno because said Formula 3 is not comparable to Kanno’s (meth)acrylate monomer comprising silicone. The Examiner maintains that Kanno teaches said Chemical Formula 3 as cited in the current prior art rejection provided above, and the Examiner’s current rebuttal to the Applicant’s arguments also as postured above.
Turning now to the Applicant’s position on the “technical effects” of the presently disclosed data, the Examiner respectfully reiterates that,
As set forth in MPEP 716.02(d), whether unexpected results are the result of
unexpectedly improved results or a property not taught by the prior art, “objective
evidence of nonobviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In other words, the showing of unexpected results must
be reviewed to see if the results occurred over the entire claimed range, In re Clemens,
622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The presently claimed invention as recited in at least current claim 1 provides for the acryl-based polymer comprising:
the alkyl (meth)acrylate having less than 8 carbon atoms at 70 to 98.9 % by weight;
the (meth)acrylate monomer comprising silicone at 0.1 to 10 % by weight;
the (meth)acrylate monomer comprising a hydroxyl group at 1 to 20 % by weight;
wherein the acryl-based polymer is present at 1 to 10 parts by weight (pbw) per 100 pbw of the urethane polymer;
wherein the (meth)acrylate monomer comprising silicone has a number average molecular weight (Mn) of 500 to 10,000 g/mol;
and wherein the urethane polymer has a Mn of 60,000 to 160,000 g/mol.
However, the presently disclosed data provides the acrylic based polymers (D1-D5) with:
the butyl methacrylate (BMA) ranging from 80 to 90 pbw;
the acrylate comprising silicone ranging from 5 to 9 pbw; and,
the hydroxyl group-containing (meth)acrylate (2-HBA) ranging from 5 to 15 pbw,
which translates respectively to 80-90 % by weight, 5-9 % by weight and 5-15 % by weight.
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed ranges for the three (meth)acrylate monomers as there is no supportive data demonstrating that the reduced haze, decreased peeling residue and improved mechanical stability would indeed occur at the presently claimed upper and lower limits for the alkyl(meth)acrylate and silicone-containing (meth)acrylate monomers and the lower limit for the hydroxyl group-containing (meth)acrylate monomer.
A similar lack of commensuration exists for the pbw of the recited acryl-based polymer based on the pbw of the recited urethane polymer, wherein the urethane polymer is disclosed in an amount of 100 pbw and 5 pbw of the acryl-based polymer; the Mn for the silicone (meth)acrylate is disclosed at 5,000 g/mol (FM-0721); and the Mw of the urethane polymer is disclosed as 110,000 g/mol. See page 45, line 19 to page 49, line 20 of the substitute specification filed 5/7/2021).
Thus, the Examiner respectfully submits that, while Kanno does not necessarily contemplate or discuss all the considerations argued currently by the Applicant (e.g., the prediction of the optical and mechanical properties), Kanno does teach or render obvious all the limitations of the presently claimed invention; and thus the lack of commensuration noted above between the presently claimed invention versus the presently disclosed data does not provide sufficient and persuasive evidence to rebut the obviousness of said claimed invention over Kanno. Therefore, regardless of the different technical objectives allegedly demonstrated between the present claims and the Kanno invention, the Examiner respectfully submits that the presently claimed invention is not patentably distinguished over the prior art.
It is further noted that case law provides that “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/7/2026