DETAILED ACTION
This is an Office action based on application number 17/426,814 filed 29 July 2021, which is a national stage entry of PCT/KR2020/010354 filed 5 August 2020, which claim priority to KR10-2019-0094805. Claims 1, 4-7, and 9-14 are pending. Claims 10-14 are withdrawn due to Applicant’s election. Claims 2-3 and 8 are canceled.
Amendments to the claims, filed 12 March 2026, have been entered into the above-identified application.
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 .
Withdrawn Rejections
The 35 U.S.C. §112(b) rejection made of record in the previous Office action is withdrawn due to Applicant’s amendments.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-5, 7 ,and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al. (JP 2004-331697 with citations taken from the provided machine translation) (Nakamura) in view of Fukuda et al. (JP 2017-149890 with citations taken from the provided machine translation) (Fukuda).
Regarding instant claims 1, 4-5, and 7:
Nakamura discloses a pressure-sensitive adhesive comprising a copolymer (A) (paragraph [0009]).
Nakamura discloses that the adhesive is used for attaching an optical member such as a polarizing plate (paragraph [0001]).
Nakamura further discloses that the copolymer (A) is composed of a monomer (a) having a reactive functional group inclusive of carboxyl groups, hydroxyl groups, amino groups, and amide groups; and monomers (b) inclusive of (meth)acrylic monomers (paragraph [0012]).
Nakamura further discloses that examples of said monomers (b) are inclusive of methyl (meth)acrylate, ethyl (meth)acrylate, propyl (meth)acrylate, n-butyl (meth)acrylate, iso-butyl (meth)acrylate, ethylhexyl (meth)acrylate, n-octyl (meth)acrylate, iso-octyl (meth)acrylate (meth)acrylate, lauryl (meth)acrylate and stearyl (meth)acrylate (paragraph [0016]), each of which is an alkyl (meth)acrylate having 1, 2, 3, 4, 4, 8, 8, 12 and 18 carbon atoms in their alkyl groups, respectively.
Nakamura further discloses that the adhesive composition comprises a copolymer (B) also composed of (meth)acrylic monomers (paragraphs [0009; 0022-0023]) (i.e., a second (meth)acrylate resin).
As to claim 4, Nakamura discloses that the amount of copolymer (B) is 20 to 100 parts by weight based on 100 parts of copolymer (A) (paragraph [0025]).
As to claim 7, Nakamura further discloses that the molecular copolymer (A) has a molecular weight of 1,000,000 to 2,000,000 (paragraph [0009]).
Nakamura does not explicitly disclose a content of a monomer represented by Chemical Formula 1 in copolymer (A) and the amount thereof. Nakamura, further, does not explicitly disclose the claimed properties of the adhesive film (i.e., the early peel strength, late peel strength, storage modulus, adhesive strength to a glass or polyimide substrate after 1 day of storage, and rate of change in the peel strength).
However, Fukuda discloses a pressure-sensitive adhesive sheet for a polarizing plate (paragraph [0001]).
Fukuda further discloses that the pressure-sensitive adhesive comprises an acrylic copolymer composed of a silicon-containing monomer having the formula:
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wherein R1 is a hydrogen or methyl group, R2 is an alkylene group having 1 to 6 carbon atoms, R3 is an alkyl group, and n is an integer within the range of 1 to 150 (paragraph [0051]).
Fukuda teaches that the monomer is included in the acrylic copolymer in an amount of 0.01 to 5 parts by mass (paragraph [0053]).
It is noted that both the numerical value for “n” and the amount of monomer disclosed by Fukuda overlap or include the ranges recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Fukuda teaches the inclusion of the silicon-containing monomer controls the progress of wetting of the adhesive to polar surfaces such as glass, and contributes to imparting reworkability (paragraph [0049]).
Before the effective filing date of the claimed invention, it would have been obvious to one or ordinary skill in the art, having the teachings of the prior art before him or her, to include the silicon-containing monomer of Fukuda into at least copolymer (A) of Nakamura. The motivation for doing so would have been to control the wetting of the adhesive and to impart reworkability.
The claimed properties of the adhesive film (i.e., the early peel strength, late peel strength, storage modulus, adhesive strength to a glass or polyimide substrate after 1 day of storage, and rate of change in the peel strength) are not explicitly disclosed by the prior art combination. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
In the instant case, the scope of the prior art combination necessarily encompasses an embodiment that is substantially identical to that of the claimed invention.
Beginning at page 13, line 9 of their original disclosure, Applicant discloses that the first (meth)acrylate resin is composed of (meth)acrylic monomers and crosslinkable functional group-containing monomers inclusive of hydroxyl-group containing monomers, carboxyl group-containing monomers, and nitrogen-containing monomers.
Nakamura further discloses the requisite second (meth)acrylic resin and amount thereof and the molecular weight of the first polymer, as cited above, as required by the claims.
Fukuda discloses the requisite silicon-containing monomer and amount thereof, as cited above, as required by the claims.
Therefore, since the scope of the prior art must encompass a substantially identical adhesive composition to Applicant’s claimed invention, and one of ordinary skill in the art would necessarily conclude that such an identical embodiment would have the same properties including those recited by the claims.
Therefore, it would have been obvious to combine Fukuda with Nakamura to obtain the invention as specified by the instant claims.
Regarding instant claim 9:
Nakamura further discloses that the thickness of the pressure-sensitive adhesive layer is 5 to 100 μm (paragraph [0039]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in view of Fukuda as applied to claim 1 above, and further in view of Nakano et al. (JP 2010-100710 A1 with citations taken from the provided machine translation) (Nakano).
Examiner’s Note – while “the first substrate” required in the instant claim is first recited in claim 1, claim 1 does not substantially require the presence of said substrate. Instead, the application to the substrate is involved in the measurement of early and late peel properties. Claim 6 substantially requires the application of the first substrate on one or both surfaces of the adhesive film.
Regarding instant claim 6:
Nakamura discloses the pressure-sensitive adhesive as cited in the rejection of claim 1, above.
Nakamura further discloses that the pressure sensitive adhesive is applied to release-treated polyester films to form a pressure-sensitive adhesive layer that is sandwiched between release-treated polyester films (paragraph [0058]).
Nakamura does not explicitly disclose the claimed silicone-based substrate.
However, Nakano discloses pressure-sensitive adhesives compositions for optical members inclusive of polarizing plates (paragraph [0001]).
Nakano further discloses that the pressure-sensitive adhesive layer is protected with a release treated sheet composed of a polyester film having been subjected to a silicone-based release treatment (paragraphs [0075-0078]).
Before the effective filing date of the claimed invention, it would have been obvious to one or ordinary skill in the art, having the teachings of the prior art before him or her, to use the silicone release-treated sheet of Nakano as the release-treated polyester film desired by Nakamura. The motivation for doing so would have been that Nakano provides a specific release-treated polyester sheet known for use in the art of pressure-sensitive adhesive sheets used for optical members. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Nakano with Nakamura in view of Fukuda to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered but are unpersuasive.
Applicant contends that the prior art does not obviate the invention of the amended claims. Specifically, Applicant contends that the cited references do not disclose or suggest the claimed siloxane chain length restriction in combination with the claimed content window.
Applicant’s argument is unpersuasive. As cited above, the prior art combination discloses a siloxane chain length and content that overlap or include the ranges recited by the claims; therefore, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Applicant further argues that the claims requires a first (meth)acrylate resin comprising an alkyl (meth)acrylate having 1-10 carbon atoms and an alkyl (meth)acrylate having 11-30 carbons. Applicant contends that Nakamura lists various alkyl (meth)acrylates but does not require the simultaneous presence of both short-chain and long-chain alkyl (meth)acrylates, nor does it link such a combination to the specific modulus and peel behavior.
Applicant’s argument is unpersuasive as Nakamura reference discloses the use of both alkyl (meth)acrylates that fall within the scope of those having 1 to 10 carbon atoms and 11 to 30 carbon atoms. Therefore, as mapped out in the rejections of record, as the prior art encompasses an embodiment that is substantially identical to Applicant’s claimed composition, both must have the same properties inclusive of the claimed storage modulus.
Applicant further argues the merits of the claimed properties. Specifically, Applicant contends that the composition of the prior art would not arrive at the claimed storage modulus properties and the controlled progression of peel strength because they are highly sensitive to the siloxane chain length, siloxane monomer content, and the balance between the short-chain and long-chain alkyl (meth)acrylates.
Applicant’s arguments are unpersuasive. As mapped out above, the disclose of the prior art combination obviates an embodiment that is substantially identical to that of the claims (i.e., the same siloxane and content and inclusive of the same alkyl (meth)acrylates). One of ordinary skill in the art would readily conclude that such an identical embodiment encompassed by the prior art must have the same properties as the claimed composition, absent evidence to the contrary.
Applicant further argues the merits related to the claimed silicon-containing monomer. Specifically, Applicant contends that Fukuda teaches its incorporation for wetting control and reworkability, whereas the present claims are directed to an adhesive film exhibiting controlled early and late peel strength progression, a defined low-temperature storage modulus window, high adhesion strength to glass or polyimide substrates, and suitability for foldable display applications.
Applicant’s argument is unpersuasive. 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).
In the instant case, though the prior art does not recognize the same beneficial properties afforded by the addition of a silicon-containing monomer, the benefits positively disclosed by the prior art would readily motivate one of ordinary skill in the art to make the described combination and arrive at a composition that would necessarily exhibit Applicant’s touted benefits, absent evidence to the contrary.
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.
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/TAM/Examiner, Art Unit 1788 05/12/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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