RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claims 1 and 5, filed on 15 August 2025, have been entered in the above-identified application. Claim 10 has been cancelled by applicant. Claims 1-9 and 11-20 are pending, of which claims 11-20 remain withdrawn from consideration as described on page 3 of the Office Action mailed on 16 May 2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 August 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
WITHDRAWN REJECTIONS
The 35 U.S.C. § 103 rejection of claims 1-6 as over Gower (U.S. Pub. 2016/0319169), made of record on page 4, paragraph 9 of the office action mailed 16 May 2025 has been withdrawn due to Applicant’s amendment in the response filed 14 August 2025. In particular, the limitations of former claim 10 have been incorporated into claim 1, and Gower does not teach these amounts of monomers.
REPEATED 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
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ukei (U.S. Pub. 2014/0011022).
Regarding claim 1, Ukei discloses acrylic-based pressure-sensitive adhesive sheets, see abstract. The adhesives are in the form of an aqueous emulsion, see p. 13, [0142], and are formed from an acrylic base polymer. The acrylic base polymer contains methyl methacrylate as a monomeric component, see p. 5, [0048], reading on the claimed first repeating unit. Suitable additional monomers include carboxyl-group containing monomers such as acrylic acid, itaconic acid, and others, see p. 5, [0050] and p. 11, [0116]. Vinyl aromatic monomers such as styrene and α-methyl styrene may also be included, see p. 5, [0050] and p. 11, [0115]. These read on the second and third repeating units, respectively. A reactive surfactant having a poly alkylene oxide chain may be included, see p. 12, [0132-0133]. Suitable such components have from 1-6, preferably 1-4 or 2-4 carbon atoms in the alkylene group and the average number of moles of alkyleneoxide residues are from 1-50 or preferably 1-40, see p. 12, [0135]. Specific examples include polyoxyalkylene alkyl allyl ethers, see p. 12, [0136]. Polyethylene glycol-based materials is a preferable example, see p. 12-13, [0137]. These read on Chemical Formula 1 in which R1 is an allyl group (CH2=CH-CH2-) which is an alkenyl group having 3 carbon atoms, R2 is derived from ethylene which has 2 carbon atoms, R3 is hydrogen, and n is from 1-40. These overlap the claimed generic component descriptions and limitations.
Ukei teaches that the primary monomer in the acrylic adhesive copolymer is the methyl methacrylate and/or additional (cyclo)alkyl (meth)acrylate comonomers, see p. 5, [0048-0049]. The additional functional-group containing monomers such as acid-functional or aromatic vinyl comonomers are preferably 10 mass% or less of the copolymer, see p. 5, [0050]. Ukei also teaches that the amount of the surfactant (poly)alkylene oxide compound is from 0.1 to 20 parts by mass relative to 100 parts by mass of acrylic polymer, see p. 13, [0141]. These amounts overlap the claimed ranges.
As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claim 2, methyl methacrylate is described as a required component of the adhesive base polymer, see p. 5, [0048].
Regarding claim 3, acrylic acid, methacrylic acid, and itaconic acid and others are suitable carboxylic acid-containing monomers, see p. 5, [0050] and p. 11, [0116].
Regarding claim 4, Ukei teaches that the amount of “other monomers” which includes the carboxyl-group containing monomers is 20% by mass or less, preferably 10% by mass or less, see p. 5, [0050]. This overlaps the claimed range.
Regarding claim 5, styrene and α-methyl styrene are suitable aromatic vinylic monomers, see p. 5, [0050] and p. 11, [0115].
Regarding claim 6, Ukei teaches that the amount of “other monomers” which includes the aromatic vinyl monomers is 20% by mass or less, preferably 10% by mass or less, see p. 5, [0050]. This overlaps the claimed range.
Regarding claim 7, Ukei teaches that specific examples of the reactive surfactants include polyoxyalkylene alkyl allyl ethers, see p. 12, [0136]. Polyethylene glycol-based materials is a preferable example, see p. 12-13, [0137]. These read on Chemical Formula 1 in which R1 is an allyl group (CH2=CH-CH2-) which is an alkenyl group having 3 carbon atoms, R2 is derived from ethylene which has 2 carbon atoms, R3 is hydrogen, and n is from 1-40. These overlap the claimed generic component descriptions and limitations.
Regarding claim 8, Ukei also teaches that the adhesive polymer may include a (poly)alkylene oxide chain-containing monomer with a polymerizable functional group such as allyl or vinyl, see p. 12, [0128]. The alkylene oxide is preferably oxymethylene, oxyethylene, oxypropylene, or oxybutylene, see id. Most preferable is a polyethylene oxide chain, see p. 12, [0129]. A vinyl-functional polyethylene oxide reads on the claimed Formula 1 in which R1 and R3 are hydrogen and R2 is a vinyl group which is a 2-carbon alkylene functional group.
Regarding claim 9, Ukei teaches that the amount of the surfactant (poly)alkylene oxide compound is from 0.1 to 20 parts by mass relative to 100 parts by mass of acrylic polymer, see p. 13, [0141].
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 14 August 2025 regarding the 35 U.S.C. § 103 rejection of claims 1-10 of record over Ukei have been carefully considered but are deemed unpersuasive.
Applicant argues that there is a long-felt but unresolved problem in the art of pressure-sensitive adhesives which is addressed by the present invention, see p. 7 of the remarks and pp. 2-3 and 36-37 of the disclosure.
However, establishing a long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution. See MPEP § 716.04. The disclosure provides a general overview of the prior art but does not provide the objective evidence to establish a long-felt need as required by MPEP § 716.04. Accordingly, there is insufficient support to establish a long-felt need in the art.
Applicant argues that Ukei is directed to solve a different problem than applicant and makes no mention of the critical cause-and-effect relationship of unique structural combination and unexpected and synergistic result of shear holding power of 1800 minutes or more and a residual ratio of 35% or less as described in the specification. See p. 7-8 of the remarks.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., shear holding power and residual ratio) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that Ukei solves a different technical problem and does not make mention of the cause-and-effect relationship noted by applicant, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant also argues that Ukei’s broad disclosures do not render the specific claimed ranges obvious, for example the number of moles of alkylene oxide residues (corresponding to ‘n’ in Chemical Formula 1) can be anywhere from 1 to 50 and the amount of (poly)alkylene oxide compound can be from 0.01 to 40 parts by pass. In contrast, claim 1 limits ‘n’ to be from 1 to 30, and the fourth repeating unit is present in a narrow range of 0.1 to 10 parts by weight. See p. 8 of the remarks.
The Examiner is not persuaded. The number of moles of alkylene oxide residues in Ukei may be from 1-50 or preferably from 1-40, see p. 12, [0135]. This substantially overlaps the claimed range of 1-30. Furthermore, Ukei teaches that the amount of the surfactant (poly)alkylene oxide compound is from 0.1 to 20 parts by mass relative to 100 parts by mass of acrylic polymer, see p. 13, [0141]. This also substantially overlaps the claimed range of 0.1 to 10 parts by weight. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Applicant argues that these specific limitations provide for unexpectedly superior properties, see p. 9 of the remarks. Applicant looks to Table 2 and Comparative Example 1 which lacks the fourth repeating unit and consequently has inferior holding power and a poor residual ratio. However, Ukei does indeed teach the surfactant (poly)alkylene oxide compound in an amount which overlaps the claimed range as described above.
Applicant looks to Examples 1-9 which fall within the claimed structural ranges in which n= 5, 10, or 15 and the amount of this fourth monomer is 1, 2, or 3 parts by weight while exhibiting good shear holding power and a residual ratio below the threshold of 35%.
The Examiner is not persuaded. MPEP § 716.02 describes the requirements to rebut a prima facie case of obviousness by relying upon unexpected results. In particular, MPEP § 716.02(d) notes that the unexpected results must be commensurate in scope with the claimed invention. To establish criticality of a claimed range, applicant should compare a sufficient number of tests both inside and outside the claimed ranges to show the criticality of the claimed range. See In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960); MPEP § 716.02(d)(II).
In the instant case, the data provided is not commensurate in scope with the claims. Claim 1 requires 80-99.8 wt. % of first monomer(s) containing an alkyl group having 1 to 10 carbon atoms, while Examples 1-11 each use first monomers of about 45 wt. % butyl acrylate, about 45 wt. parts 2-ethylhexyl acrylate, and 6 weight parts methyl methacrylate. Claim 1 also requires either component b1) or b2) in the amount of 0.1 to 10 wt. %, while Examples 1-11 each use 2 weight parts of acrylic acid monomer corresponding to component b1) and do not use any of component b2). See Table 1 at p. 32-33 of the original disclosure. These components are narrower in scope than the present claims. Finally, the amount of fourth monomer is only 1-3 weight parts in the examples rather than 0.1 to 10 wt. % as in claim 1, and the value of n is only 5, 10, or 15 rather than the range of 1-30 as specified in claim 1. This is also narrower in scope than the present claims.
As the evidence of unexpected results is not commensurate in scope with the claims, the evidence of nonobviousness is insufficient to overcome the prima facie case of obviousness.
Accordingly, this 35 U.S.C. § 103 rejection is maintained.
Conclusion
All claims are rejected.
THIS ACTION IS MADE FINAL. 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 extension fee 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.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759