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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/1/2025 has been entered.
Claim Objections
Claim 21 is objected to because of the following informalities: the claim should be amended to recite “…and[[ a]] a hydroxyl value…”. Appropriate correction is required.
Claim 22 is objected to because of the following informalities: the claim should be amended to recite “…and[[ a]] a hydroxyl value…”. Appropriate correction is required.
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
Claims 20-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites the limitation "the weight ratio of polyacrylate tackifier…to epoxy ranges…" in line 9. There is insufficient antecedent basis for this limitation in the claim as an epoxy has not been previously introduced.
Claim 21 recites the limitation "the weight ratio of polyacrylate tackifier…to epoxy ranges…" in line 9. There is insufficient antecedent basis for this limitation in the claim as an epoxy has not been previously introduced.
Claim 23 recites the limitation "the facestock layer" in line 2. There is insufficient antecedent basis for this limitation in the claim as a facestock layer has not been previously introduced.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 20-22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 20, the limitation of the weight ratio of 35:1 to 131:1 does not further limit the weight ratio recited in current claim 1.
Regarding claim 20, calculations of the upper and lower ranges for the recited wt% for the epoxy crosslinker and the polyacrylate tackifier yields a weight ratio range of tackifier:crosslinker of 250:1 to 6.7:1. which does not further limit the weight ratio recited in current claim 1.
Regarding claim 21, the limitation of the weight ratio of 35:1 to 131:1 does not further limit the weight ratio recited in current claim 1.
Regarding claim 21, calculations of the upper and lower ranges for the recited wt% for the epoxy crosslinker and the polyacrylate tackifier yields a weight ratio range of tackifier:crosslinker of 250:1 to 6.7:1. which does not further limit the weight ratio recited in current claim 1.
Regarding claim 22, calculations of the upper and lower ranges for the recited wt% for the epoxy crosslinker and the polyacrylate tackifier yields a weight ratio range of tackifier:crosslinker of 250:1 to 6.7:1. which does not further limit the weight ratio recited in current claim 1.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3, 7-9, 13, 16, 18-19, 23, 25-29 and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagami et al. (JP 2017014308 A) in view of Chiao (EP 2914425 B1), and in light of the evidence provided by Doi (WO 2017069195 A1). The Examiner notes that citations from the ‘308 and ‘195 references were taken from machine translations, which are included with the current action.
Regarding claim(s) 1, 3, 7-9, 25-26 and 29, Yamagami teaches a pressure-sensitive adhesive (PSA) tape (label, current claim 29) comprising a substrate comprising, inter alia, polycarbonate (facestock, current claim 26) (para 0049) and an acrylic-based PSA layer (B) (PSA adhesive) on the substrate (laminate, current claim 25) (para 0055), which said acrylic adhesive comprises an acrylic polymer, a crosslinking agent and a tackifier (para 0061).
Yamagami also teaches that the acrylic polymer comprises a (meth)acrylic monomer in an amount of 80 to 99 % by mass towards tensile strength (para 0062-0065), and functional group-containing monomers having hydroxyl and carboxyl groups (polyacrylate base polymer, acid groups, hydroxyl groups) in an amount of 1 to 20 % by mass towards tensile strength (para 0066-0070).
Yamagami further teaches that the acrylic PSA comprises a crosslinking agent (para 0074) such as, inter alia, an isocyanate-based crosslinking agent and an epoxy-based crosslinking agent depending on the functional group comprising the acrylic polymer and the suitable gel fraction, with the epoxy-based crosslinker providing the prevention of discoloration (para 0077-0078). The acrylic adhesive of Yamagami also comprises an acrylic tackifying resin (polyacrylate tackifier) to improve the adhesive strength of the adhesive tape, and achieve better shatter resistance, transparency and yellow resistance (para 0079-0080) in an amount of 5 to 50 parts by mass per 100 parts by mass of the acrylic polymer (para 0088).
While Yamagami does not specify that the acrylic polymer comprises both of hydroxyl and carboxyl groups, or that the acrylic-based PSA comprises both of the isocyanate-based and epoxy-based crosslinking agents, as noted above, Yamagami does teach said isocyanate-based and epoxy-based crosslinking agents are selected based on the functional group comprising the acrylic polymer.
Yamagami is silent to the presently claimed weight ratio of the acrylic tackifier to the epoxy crosslinker of 43:1 to 60:1 (current claim 1); the weight ratio of the isocyanate-based crosslinking agent versus the epoxy-based crosslinking agent of 0.15:1 to 62:1 (current claim 3); the amount of the isocyanate-based crosslinking agent greater than the epoxy-based crosslinking agent (current claim 7); the amount of the isocyanate-based crosslinking agent ranges from 0.1 to 10 wt% based on the disclosed PSA (current claim 8); the amount of the epoxy-based crosslinking agent ranges from 0.02 to 0.6 wt% based on the disclosed PSA (current claim 9);
However, as noted above, Yamagami discloses that the acrylic tackifying resin is present in an amount of 5 to 50 parts by mass per 100 parts by mass of the acrylic polymer to improve the adhesive strength of the adhesive tape, and achieve better shatter resistance, transparency and yellow resistance; and further that the epoxy-based crosslinker provides the prevention of discoloration.
In addition, Chiao teaches crosslinkable adhesives (para 0001) comprising a first acrylic resin comprising a hydroxyl group-containing (meth)acrylate, a second acrylic resin comprising a carboxyl group-containing (meth)acrylate, an isocyanate crosslinker and an epoxy crosslinker (para 0005). Chiao also teaches that the isocyanates crosslink with the hydroxy groups and the epoxies crosslink with the carboxyl groups (para 0025), and further instructs the skilled artisan that the epoxy crosslinker slows the reaction of the isocyanates, which reacts at ambient temperature more quickly, and reacts itself slowly with the acrylic polymer(s) at ambient temperature towards increasing the pot life of the adhesive (para 0031).
Chiao continues to teach that the epoxy crosslinkers (i.e., first multifunctional crosslinking agents) and the isocyanates (i.e., the second multifunctional crosslinking agent) are present in a ratio of 13:1 to 0.2:1 (para 0009, 0014), which provides an overlap with the presently claimed inverse ratio of current claim 3 (NCO:epoxy of 0.16:1 to 62:1) and the amount of the isocyanate versus the epoxy crosslinkers (current claim 7).
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 employ the acrylic tackifying resin, isocyanate crosslinker(s) and epoxy crosslinker(s) in the presently claimed wt% and ratios towards the PSA compositions of the cited prior art providing the balance of tensile and adhesive strength, crosslinking density, shatter resistance, transparency and yellow resistance required of the prior art’s intended application as in the present invention.
Regarding claim 13, Yamagami teaches that the weight average molecular weight of the acrylic polymer is 400,000 to 1,500,000 (para 0072).
Regarding claim 16, Yamagami’s acrylic tackifying resin has a weight average molecular weight 100 to 100,000, which overlaps that presently claimed, towards adjusting the shatter resistance, transparency and yellow resistance (para 0081).
Regarding claims 18-19, while Yamagami discloses that the acrylic tackifying resin is present at in an amount of 5 to 50 parts by mass per 100 parts by mass of the acrylic polymer, as opposed to the presently claimed proportions being expressed as a wt% based on the total of the PSA, Yamagami does the instruct the skilled artisan that the acrylic tackifying resin is added towards improving the adhesive strength of the adhesive tape, and achieve better shatter resistance, transparency and yellow resistance. The Examiner notes that parts by mass relationship between the acrylic polymer and the acrylic tackifying resin provides a weight ratio range of 20:1 to 2:1, which overlaps that presently claimed of 4.6:1 to 80:1.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the acrylic tackifying resin (and the acrylic polymer) in the presently claimed proportions based on the adhesive strength, shatter resistance, transparency and yellow resistance required of the prior art’s intended application as in the present invention.
Regarding claims 23, 27 and 43, Yamagami teaches that the acrylic PSA is applied to a release liner (label, laminate) (para 0092), and that the release liner comprises a resin film (topcoat layer) subjected to a silicone release treatment (liner layer) (para 0097).
Regarding claim 28, Yamagami teaches that the acrylic PSA is applied to PET38x1 A3 release liner (thickness 38 mm see Example 1 of Doi) at a dry thickness of 20 mm (para 0123), which provides the liner/PSA layer thickness of 58 mm. The Examiner respectfully submits that the “flat layer” limitation would have been obvious to the skilled artisan based on the liner/PSA dimensions required and/or desired of the prior art’ s intended application.
Change in shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP 2144.04 [R-1].
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagami et al. (JP 2017014308 A) in view of Chiao (EP 2914425 B1) and in further view of Silverberg et al. (US 2003/0082373 A1).
Regarding claims 4-5, Yamagami/Chiao teaches the PSA as in the rejection of at least claim 1 set forth above.
Yamagami/Chiao is silent to the presently claimed other non-acrylate tackifier in tandem with the disclosed acrylic tackifying resin, and comprising a terpene phenolic resin.
However, in addition to the acrylic tackifying resin, Yamagami also contemplates terpene-based and phenol-based resins (para 0080). In addition, as noted above, Yamagami is conspicuously concerned with the tensile strength of the disclosed PSA.
In addition, Silverberg teaches PSA formulations comprising an acrylic copolymer and a mixture of tackifiers (abstract), wherein the employment of terpene phenol tackifiers having high softening points provides an increase in the storage modulus and compatibility with the copolymer (para 0005, 0009, 0014).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to a terpene phenol tackifier in tandem with the acrylic tackifying resin of Yamagami towards the PSA of the prior art demonstrating compatibility with the acrylic polymer and towards adjusting the storage modulus of resultant PSA layer as in the present invention.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagami et al. (JP 2017014308 A) in view of Chiao (EP 2914425 B1) and in further view of Yoo et al. (US 9695345 B2).
Regarding claim 6, Yamagami/Chiao teaches the PSA as in the rejection of at least claim 1 set forth above.
Yamagami/Chiao is silent to the presently claimed epoxide equivalent (EEW) presently claimed.
However, Yoo teaches epoxy equivalents that overlap that presently claimed, and that the selection of the EEW is based on the balance of crosslinking density and Tg (column 4, line 65 to column 5, line 5) .
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to select epoxy crosslinkers for the PSAs Yamagami/Chiao with the presently claimed EEW based on the balance crosslinking density and Tg as in the present invention.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagami et al. (JP 2017014308 A) in view of Chiao (EP 2914425 B1) and in further view of Park et al. (US 10851268 B2) and Yoo et al. (US 9695345 B2).
Regarding claims 10-11, Yamagami/Chiao/Park/Yoo teaches the PSA as in the rejections of claims 1, 3, 6-9, 12-16 and 18-19 of the current action.
Yamagami/Chiao/Park/Yoo does not teach the presently claimed peel or static shear under the presently claimed conditions.
However, the Applicant is respectfully reminded that, where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Indeed, given that the PSA compositions of the prior art teach the presently claimed PSA, to include identical components and in identical proportions, it is reasonable to conclude that the PSA compositions of the prior art would demonstrate the presently claimed peel strength and static shear subject to identical conditions.
Claim(s) 12 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagami et al. (JP 2017014308 A) in view of Chiao (EP 2914425 B1) and in further view of Park et al. (US 10851268 B2), and in light of the evidence provided by Holguin et al. (US 6558790 B1).
Regarding claims 12 and 14-15, Yamagami/Chiao teaches or renders obvious the PSA as in the rejection of at least current claim 1 set forth above, to include acrylic polymers comprising carboxyl and hydroxyl functionality. Yamagami also teaches that the acrylic tackifier resin comprises carboxyl functionality (para 0085).
Yamagami/Chiao is silent to the presently claimed acid value for the recited polyacrylate tackifier (5 to 100 mgKOH/g), and to the presently claimed acid and hydroxyl values for the recited acrylic polymer (2 to 90 mgKOH/g and 1 to 50 mgKOH/g, respectively).
However, it is established in the art that molecular weight of a polymer is selected based on the balance of coatability, cohesion and tack as evidenced by Holguin (see column 4, lines 17-24 therein).
In addition, Park teaches that the hydroxyl value is a standard test for the hydroxyl groups (column 5, lines 65-67), and that the acid value tests, via neutralization, the carboxyl groups (column 7, lines 26-37).
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 acrylic polymer and acrylic tackifying resin of Yamagami/Chiao with the presently claimed hydroxyl and acid values based on the degree of crosslinking via the hydroxyl and carboxyl acid functionality of the acrylic polymer and acrylic tackifying resin, and on the balance of cohesion, coatability and tack required of the prior art’s intended applications, as in the present invention.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagami et al. (JP 2017014308 A) in view of Chiao (EP 2914425 B1) and in further view of Park et al. (US 10851268 B2) and Takizawa et al. (US 2003/0008140 A1).
Regarding claim 17, Yamagami/Chiao is silent to the acrylic tackifying resins having a glass transition temperature (Tg) of -30 to 42 ℃.
However, Takizawa teaches an acrylic PSA comprising a (meth)acrylic polymer tackifier having a Tg higher than room temperature, which overlaps that presently towards providing the PSA with tackiness (para 0055) and towards adjusting the peel strength (para 0056).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the (meth)acrylate tackifiers of Takizawa in the PSAs of Yamagami/Chiao based on the balance of peel and tack at the temperature of use as required by the prior art’s intended application as in the present invention.
Claim(s) 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagami et al. (JP 2017014308 A) in view of Chiao (EP 2914425 B1), and in further view of Takizawa et al. (US 2003/0008140 A1), Park et al. (US 10851268 B2), Yoo et al. (US 9695345 B2) and Silverberg et al. (US 2003/0082373 A1).
Regarding claims 20-22, Yamagami/Chiao and/or Takizawa and/or Park and/or Yoo and/or Silverberg teach or render obvious all the limitations of the presently claimed invention as recited in current claims 1 and 3-19 set forth above, which is identically applicable to the current claim.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagami et al. (JP 2017014308 A) in view of Chiao (EP 2914425 B1) and in further view of Galkiewicz et al. (US 6984427 B2).
Regarding claim 24, Yamagami is silent to the release liner being embossed.
In addition, Galkiewicz teaches that protrusions due to embossing the surface of a release liner provide a lowered adhesion between the adhesive and the liner surface (column 7, line 63 to column 8, line 2).
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 release liner of Yamagami/Chiao with the embossed protrusions as taught by Galkiewicz towards reducing the adhesion between the release liner and the adhesive as in the present invention.
Claim(s) 41-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagami et al. (JP 2017014308 A) in view of Chiao (EP 2914425 B1), and in light of the evidence provided by Doi (WO 2017069195 A1).
Regarding claims 41-42, Yamagami/Chiao teach the presently claimed invention as recited in at least current claim 1, which is identically applicable to the current claims. Yamagami further teaches that the acrylic PSA is formed via solution polymerization (PSA solution) in ethyl acetate (solvent) (para 0114).
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 7/1/2025, with respect to the rejection of claims 1, 3-5, 7-9 and 16-19 and claims 23, 27-28 and 43 and claims 25-26 and claim 29 over Niwa et al. in view of Takizawa et al. and in further view of Nonaka et al. under 35 U.S.C. 103; claim 6 over Niwa et al. in view of Takizawa et al. and in further view of Nonaka et al. and Yoo et al. under 35 U.S.C. 103; claims 10-11 over Niwa et al. in view of Takizawa et al. and in further view of Nonaka et al., Park et al. and Yoo et al. under 35 U.S.C. 103; claims 12-15 over Niwa et al. in view of Takizawa et al. and in further view of Nonaka et al. and Park et al. under 35 U.S.C. 103; claims 20-22 over Niwa et al. in view of Takizawa et al. and in further view of Nonaka et al., Park et al. and Yoo et al. under 35 U.S.C. 103; claim 24 over Niwa et al. in view of Takizawa et al. and in further view of Nonaka et al. and Galkiewicz et al. under 35 U.S.C. 103; and claims 41-42 over Niwa et al. in view of Takizawa et al. and in further view of Nonaka et al. under 35 U.S.C. 103 as set forth in paragraphs 6-12 of the action mailed 4/2/2025, have been fully considered but they are not persuasive.
The Examiner respectfully acknowledges the amendments to at least claims 1 and 41 further limiting the scope of the recited weight ratio between the polyacrylate tackifier and the epoxy crosslinker. The Examiner also respectfully directs the Applicant’s attention to the updated prior art rejections set forth above, wherein it is note that, 1) the newly cited Yamagami invention, tandem the cited supporting references, teach or render obvious all the limitations of the presently claimed invention; and 2) the previously cited primary Niwa reference and the supporting Nonaka reference were not cited in the current prior art rejections.
The Examiner respectfully acknowledges that the presently disclosed inventive examples are partially commensurate in scope with the presently claimed invention in so far as the Applicant’s assertions that the presently claimed invention demonstrates unexpected results towards the non-obvious over the previously cited prior art. The Examiner respectfully anticipates a similar argument would be made against the current rejections and its employment of the newly cited prior art as noted above.
The presently claimed invention as recited in at least current claims 1 and 41 claims a tackifier:epoxy weight ratio with an upper limit of 60:1 and a lower limit of 43:1. Examples 2-3 provide said ratio within these two limits, but Examples 1 and 4-7 do not as their weight ratios are 61.57 or 61.54, which is outside, however slightly, said upper limit. Indeed, Comparative Example E provides said weight ratio identical to that of said Examples 4-7, but demonstrates a static shear less than Examples 1 and 4-7.
Continuing, said Comparative Example E is represented in Table 2 as differing from Examples 4-7 only in the specific polyacrylate tackifier, but is identical to Examples 4-7 in every other way, to include the proportions of the polyacrylate tackifiers and the proportions of the other compositional elements. Thus, it appears that the presently claimed weight ratio of tackifier:epoxy is not critical to the invention as recited in at least current claims 1 and 41. In addition, there are no representative data points that further demonstrate that the presently disputed weight ratio would not yield acceptable results immediately below and above the respective lower and upper limits presently claimed.
Conclusion
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 8/1/2025