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 .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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 1-2, 6, and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable
over US 20200154563 A1 (Sim et al.) in view of US 20140099495 (Kim et al.) in view of US 20180086953 A1 (Fujita et al.) and further in view of WO 2019012088 A1 (Hajji et al).
It is noted that when utilizing WO 2019012088 A1 in the above paragraph, the disclosures of the reference are based on US 20200216717 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO 2019012088 A1 are found in US 20200216717 A1.
Re claims 1-2, 4-6, 11-16, Sim teaches an adhesive film stretchable resin base material laminate including a substrate and adhesive film adhered of ([5], Fig. 1) methacrylic polymer of a a1 monomer aromatic vinyl and methacrylic acid of 30 wt% to 100 wt% (when 40 mass % of each is selected overlapping ranges of claims 1 and 13 of 80 wt% - 99 wt% and 45 wt% -95 wt%) [28, 40-46] and monomer hydroxyl of 50 wt % -10 wt% (overlapping 1 to 20 wt% when 10 mas% of each is selected) [40] , [43] alicyclic methacrylic (claim 11), and [47] 2-hydroxy ethyl (meth)acrylate. Case law holds that in the case where the claimed ranges “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). See MPEP 2144.05. That the aromatic methacrylic has a glass transition temperature as claimed is not explicitly taught; however is inherent as the same materials and percentages are present.
Sim teaches crosslinking isocyanate [41] (claims 1, 12). Sim teaches overlapping ranges of modulus of the film (0.1 MPa – 1000 MPa).
It would have been obvious to select two aromatic methacrylate like benzyl methacylate and 2-hydroxy-3phenoxy propyl methacrylate each at 40 wt% to equate to 80% or at least three or more and having the claimed modulus as taught by Sim selection of all being an obvious choice as the composition is a monomer mixture for cross-linking purposes to improve adhesion and because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Sim teaches fails to teach in general methacrylic monomer with a hydroxl group or the haze percentage.
Further to claim 1, Kim teaches a methacrylic monomer with hydroxyl group within 15 wt% - 90 wt% [29-35, 39-43, 70-76] a similar adhesive composition and given the same material and weights, inherent Haze values.
It would have been obvious to select a methacrylic hydroxyl group for haze within the claimed range to balance the similar composition having the claimed haze values to improve adhesion and because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claim 13, Sim fails to teach the isocyanate percentage as claimed.
Kim teaches overlapping ranges of isocyanate for [85-86] the crosslinking agent improving solvent resistance and durability.
It would have been obvious to select an isocyanate percentage within the claimed range to balance the similar composition to improve solvent resistance, durability, and because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 1 and 6, Sim fails to teach an inorganic particle having the index of refraction as claimed.
Kim teaches an inorganic filler [73, 89] in 0.01-5 parts per 100 parts copolymer overlapping claimed range of 1 wt% to 50 wt% and the index of refraction is exact at 1.5 or more [126-127] and respective Examples.
It would have been obvious to select an inorganic particle having the index of refraction within the claimed range to balance the similar composition to improve the index of refraction for transparency and because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Further re claim 1, the combination fails to disclose the claimed molecular weight.
Fujita teaches [40] the molecular weight range starting at 1,000,000 upward overlapping applicant’s range as claimed for balancing heat resistance and peel strength.
Hejji teaches the [22] molecular weight of less than 1,00,000 overlapping applicant’s range as claimed for suitable as (meth)acrylic adhesive composition in adhesive compositions (see Abstract).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the references, Fujita or Hejji, because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
A prima facie case of obviousness may be established even though a prior art reference does not disclose any particular range, but teaches that the claimed parameters are known to affect results or properties. Consequently, a person skilled in the art would have easily arrived at the invention as in claim 1 of the present application on the basis of the indication of Fujita and Hajji as set forth above.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Re claims 15-16, the adhesive of Sim is adhered to metal and doesn’t teach an
optical display (while this is intended use in claim 15); however, Kim teaches the adhesive is adhered to glass [14, 19] for optical displays as claimed.
It would have been obvious to select glass instead of metal to stick it to an optical display as taught by Kim.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over US US 20200154563 A1 (Sim et al.) in view of US 20140099495 (Kim et al.) in view of US 20180086953 A1 (Fujita et al.) and further in view of WO 2019012088 A1 (Hajji et al) and further in view of WO2016129486 A1 (JP).
It is noted that when utilizing WO 2019012088 A1 in the above paragraph, the disclosures of the reference are based on US 20200216717 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to WO 2019012088 A1 are found in US 20200216717 A1.
The Sim in view of Kim combination is relied upon above.
The combination fails to teach the inorganic particle zirconia or the average particle diameter.
JP teaches a similar composition having (pg. 13, first paragraph) zirconia of 1.5 of more refractive index (exact range of applicant’s 1.5 or more) having a volume average particle diameter of 20 nm to 50 nm (pg. 13, last paragraph) (overlapping applicant’s 10 nm to 50 nm) within an amount of less than 50 wt% (page 14, the paragraph) (overlapping applicant’s range of 1 wt% - 50 wt%), and crosslinking (pg. 15, under crosslinking agent heading) agent of isocyanate of 0.01 parts or more up to 10 parts (overlapping applicants claimed range of 0.001 wt% to 1 wt%).
It would have been obvious at the time of the effective filing date to have modified the acrylic comonomer composition of the combination and use, substitute or include the specific inorganic index of refraction particle diameter in the methacrylic aromatic mixture compound of Kim for balancing the index of refraction of a similar composition and because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Response to Arguments
Applicant’s arguments have been considered. The new grounds of rejection is set forth above. Sim and the JP references are still used but differently in view of the new reference for the new grounds. See the new action above. The arguments are moot in view of the new ground of rejection above.
Conclusion
JP 2014-224250A discloses an adhesive with pmma compound with diisocyantate.
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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.
/TAMRA L. DICUS/
Primary Examiner, Art Unit 1787
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