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 .
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04 May 2026 has been entered.
Application Status
Amendments to claims 1 and 6, filed on 04 May 2026, have been entered in the above-identified application. Claims 2, 3, 5, 7, 8, and 10 have been cancelled by applicant. Claims 1, 4, 6, 9, and 11-20 are pending, of which claims 11-20 remain withdrawn from consideration as described on page 3 of the Office Action mailed on 16 May 2025.
NEW AND 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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 4, 6, and 9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1, component C) of the claim is a fourth monomer selected from methallyl polyethylene glycol, allyl polyethylene glycol, isopentenyl polyethylene glycol, or a mixture thereof. However, the claim further recites the number of moles of alkylene oxide rather than the number of moles of ethylene oxide. For consistency with the polyethylene glycol-based monomers, the claim should refer to the number of moles of ethylene oxide.
Regarding claims 4, 6, and 9, these claims depend on claim 1 and thus incorporate the above-described indefinite subject matter.
Claim Rejections - 35 USC § 103
Claims 1, 4, 6, and 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 A) first repeating unit. Suitable additional monomers include carboxyl-group containing monomers such as acrylic acid, methacrylic acid, itaconic acid, and others, see p. 5, [0050] and p. 11, [0116]. This reads on B) the second repeating unit.
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]. This reads on C) the fourth repeating unit.
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 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 6, Ukei teaches that vinyl aromatic monomers such as styrene and α-methyl styrene may be included, see p. 5, [0050] and p. 11, [0115]. This reads on the claimed third monomer. 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 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]. This overlaps the claimed range.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 04 May 2026 regarding the 35 U.S.C. § 103 rejection of claims 1-9 of record over Ukei have been considered but are deemed unpersuasive.
Applicant argues on p. 7 that claim 1 as amended specifically limits the fourth monomer to be one or more of methallyl polyethylene glycol, allyl polyethylene glycol, or isopentenyl polyethylene glycol with an addition mole number of alkylene oxide of 5-15. Applicant admits that Ukei broadly teaches (poly)alkylene oxide chain-containing monomers with a listing of species yet argues that Ukei does not teach or suggest the specific monomers as claimed.
The Examiner is not persuaded. Ukei describes this monomer at p. 12, [0128-0130]. The broadest disclosure includes polymerizable functional groups of (meth)acryloyl, allyl, or vinyl groups combined with (poly)alkylene oxide in which the alkylene oxide group has from 1 to 6 carbon atoms and the number of (poly)alkylene oxide groups is from 1-50 moles per monomer. Furthermore, Ukei also teaches more preferred materials which use (poly)ethylene oxide. The preferred number of moles of (poly)alkylene oxide is from 2 to 40.
While Ukei does not list the specific monomers by name, it is clear that allyl polyethylene glycol having from 5-15 moles of ethylene oxide is among the preferred materials for use as the (poly)alkylene oxide chain-containing monomer of Ukei as this meets all of the listed and preferred requirements.
Applicant further refers to the evidence in Table 2 of the present application showing superior results and a synergistic effect from using the claimed components.
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).
As an initial matter, applicant does not allege that the improved result in shear holding power or residual ratio is unexpected. Applicant does note that poor residual ratio in Comparative Example 1 (which lacks the fourth repeating unit) relative to Examples 1-11 (which include this component), see p. 7 of the remarks and Tables 1-2 of the disclosure. However this improvement is not alleged to be unexpected.
Furthermore, even if the shear holding power and residual ratio results are considered to be unexpected, the data provided is not commensurate in scope with the claims. Examples 1-11 use specific blends of butyl acrylate, 2-ethylhexyl acrylate, and methyl methacrylate (first monomer), acrylic acid (second monomer), and the fourth monomer. These examples are narrower in scope than the claims.
Property
Claimed Range
Range in Examples
Comparative Examples outside claimed range?
First Monomer composition
80-99.8 wt. % of methyl (meth)acrylate, butyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, or a mixture thereof
44.5-45.5 wt. % butyl acrylate44.5-45.5 wt. % 2-ethylhexyl acrylate6 wt. % methyl methacrylateTotal of these three components is 95.0-97.0 wt. %
none
Second monomer identity and amount
0.1 to 10 wt. % of (meth)acrylic acid
2 wt. % of acrylic acid
none
Fourth monomer identity and amount
0.1 to 10 wt. % of allyl polyethylene glycol, methallyl polyethylene glycol, and/or isopentenyl polyethylene glycol; n = 5 to 15
1-3 wt. % of the specified monomers; n= 5, 10, or 15
Yes; Comparative Example 1 lacks this component
In particular, the examples use a much narrower amount (95.0-97.0 wt. %) of the total of the first monomer components than claimed (80-99.8 wt. %), and further use narrow ranges of butyl acrylate (44.5-45.5 wt. %) and 2-ethylhexyl acrylate (44.5-45.5 wt. %) and methyl methacrylate (6 wt. %) while the claims require only a cumulative total of one or more of these specified monomers. The examples also use only 2 wt. % of the second monomer and 1-3 wt. % of the fourth monomer rather than 0.1-10 wt. % as claimed. The sole comparative example uses 98 wt. % of the total of first monomers, 2 wt. % of acrylic acid, and none of the fourth monomer.
The evidence provided makes it clear that using from 1-3 wt. % of the claimed fourth monomer does provide a noticeable effect in shear holding power and residual ratio. However, Ukei also teaches the use of a material reading on the fourth monomer as described the rejection above. Additionally, the amounts of first, second, and fourth monomers are different in the examples than in the 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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