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 .
This office action is in response to the amendment filed 8/4/2025. Claim 1 is amended; claims 2-4, 7, 9 and 15 are cancelled; and claims 12-14 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1, 5-6, 8 and 10-14 are currently pending in the application.
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
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 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.
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, 5-6, 8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (WO 2019/045479 A1) in view of Van Wert et al (US 2015/0361307 A1) and Bae et al (US 2016/0376480 A1).
It is noted that WO 2019/045479 A1 (WO) is being utilized for date purposes. However, since WO is not in English, US equivalent for WO, namely, Kim et al (US 2020/0347269 A1) is referred to in the body of rejection below. All column and line citations are to the US equivalent.
Regarding claim 1, Kim et al teach an adhesive film comprising at least two types of (meth)acrylic monomers for a (meth)acrylic prepolymer (abstract). The monomer mixture may form a hydroxyl group-containing (meth)acrylic copolymer (paragraph 0049). The at least two kinds of (meth)acrylic monomers for the (meth)acrylic prepolymer include a hydroxyl group-containing (meth)acrylate and an alkyl group containing (meth)acrylate (paragraph 0050). Preferably the hydroxyl group-containing (meth)acrylate may include at least one of 2-hydroxyethyl (meth)acrylate (i.e., reads on compound of formula 2 (i.e., unit B) in present claim 1 wherein R3 is an ethylene group and R2 = hydrogen or alkyl group having 1 carbon atom), 2-hydroxybutyl (meth)acrylate and 2-hydroxypropyl (meth)acrylate (paragraph 0051) which reads on compound of formula 1 (i.e., unit A) in present claim 1 wherein R1 is an alkylene group having 3-4 carbon atoms and R2 = hydrogen or alkyl group having 1 carbon atom. The alkyl group-containing (meth)acrylate may include a (meth)acrylic acid ester having C1 to C20 linear or branched alkyl group (paragraph 0053) which reads on the alkyl (meth)acrylate unit in present claim 1. The alkyl group-containing (meth)acrylate may be present in amounts of about 5 to about 99.9 wt.% (paragraph 0055) which overlaps with the amount of alkyl (meth)acrylate unit in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. The hydroxyl group-containing (meth)acrylate copolymer may have a weight average molecular weight of about 4,000,000 (paragraph 0067) which reads on the weight average molecular weight in polymer in present claim 1. A crosslinking agent can increase mechanical strength and may include a polyfunctional (meth)acrylate such as 1,6-hexanediol di(meth)acrylate (paragraphs 0104-0105). It is noted that 1,6-hexanediol diacrylate has a molecular weight of 226 g/mole (i.e., reads on curing agent comprises polyfunctional acrylate having a molar mass of 500 g/mol or less in present claim 1).
Kim e al are silent with respect to polyfunctional urethane acrylate and weight ratio of polyfunctional urethane to polyfunctional acrylate having a molar mass of 500 g/mol or less; and weight ratio of A/B.
However, regarding polyfunctional urethane acrylate and weight ratio of polyfunctional urethane to polyfunctional acrylate having a molar mass of 500 g/mol or less, Van Wert et al in the same filed of endeavor teach a polymer composition obtainable by free radical polymerization of (a) 50 wt% or greater of linear or branched acrylic esters having 2 or more carbon atoms in the alkyl radical, (b) 22.5 to 46.5 wt% of linear, cyclic or branched acrylic esters having 1 to 20 carbon atoms in the alkyl radical and (c) greater than 3.5 wt% to 27.5 wt% of highly polar vinyl substituted monomers (abstract). (Meth)acrylic monomers useful in component (c) include hydroxyethyl (meth)acrylate, hydroxypropyl (meth)acrylate (paragraph 0056). In some embodiments, the adhesive polymer component includes a crosslinking agent. Crosslinking agents can be included in amounts of from 0.05 to about 3% by weight based on amount of monomers in the polymer component. Depending on the molecular weight and acrylate equivalent weight of the component as much as about 20 wt% of the crosslinking agent may be used. Amounts and types of crosslinking agents can be varied to obtain a particular gel swell range for the resulting adhesives (paragraph 0075). Crosslinking agents may be selected from urethane acrylates such as diacrylated urethanes known under the tradename EBECRYL 230 (i.e., reads on polyfunctional urethane acrylate in present claim 1) and multi-functional acrylates such as 1,6-hexanediol diacrylate (paragraph 0079). Crosslinking agents are selected according to the polymerization method employed. Preferred crosslinking agents for adhesives prepared via photopolymerization are multifunctional acrylates such as 1,6-hexanediol diacrylate (paragraph 0080). Also useful as crosslinkers are (meth)acrylate functional oligomers like EBECRYL 230 (i.e., polyfunctional urethane acrylate) which in view of their high molecular weight have lower acrylate content than the lower molecular weight diacrylates such as 1,6-hexanediol diacrylates. To compensate for this lower acrylate content, higher weight percentages of the oligomeric multifunctional acrylates must be used in the adhesive composition (paragraph 0081). Therefore, in light of the teachings in Van Wert et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application to include a combination of least two of the crosslinking agents, of Van Wert et al, in presently claimed ratio, because Van Wert et al teach that amounts and types of crosslinking agents can be varied in order to obtain a particular gel swell range for the resulting adhesives, crosslinking agents can be included in amounts of up to 20 wt%, urethane acrylate with lower acrylate content are used in larger amounts than multi-functional acrylates such as 1,6-hexanediol diacrylate, and both are equivalent in their ability to function as crosslinking agents in pressure sensitive adhesives containing (meth)acrylic copolymers formed from a monomer mixture including alkyl methacrylate and hydroxyalkyl methacrylate, one skilled in art prior to the filing of present application would have found it obvious to include two crosslinking agents as in present claims, absent evidence to the contrary.
Regarding weight ratio of A/B, Bae et al teach pressure sensitive adhesive composition (abstract). The polymer may further include a polymerization unit of the monomer containing a hydroxyl group represented by formula 2:
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wherein Q is hydrogen, or an alkyl group, A and B may be each independently an alkylene group, n is an optional number and may be 0 to 10 (paragraphs 0025-0027). In one embodiment, as the monomer containing hydroxyl group, two types of monomers, which have different types of carbon atoms at the side chains may be used. The polymer may include a polymerization unit of the first monomer in which each of the alkylene groups of formula 2 has 1 to 3 carbon atoms; and polymerization unit of the second monomer in which each of the alkylene groups has 4 to 20 carbon atoms (paragraphs 0031-0032). To ensure an optimal range of all physical properties including an excellent balance between low speed and high speed peel-off strengths, the weight ratio of first and second monomers (i.e., A/B) in the polymer may be controlled to be in a range of more than 1 or less than 25 (paragraph 0034). Therefore, in such a range, the PSA exhibiting a suitable antistatic performance and a suitable balance between high speed and low speed peel-off strength without leaving contaminants during peeling may be provided (paragraph 0034). See example 4, wherein the ratio of HBA/HEA (i.e., 4-hydroxylbutyl acrylate / 2-hydroxyethyl acrylate) is 3/4 (i.e., 0.75) which falls within the range of A/B in present claim 1. Therefore, in light of the teachings in Bae et al, it would have been obvious to one skilled in art prior to the filing of present application to include monomer unit A and B such that the A/B weight ratio falls within the presently claimed range, for above mentioned advantages.
Regarding claim 5, Kim et al teach that monomer mixture may include a cyclic functional group-containing (meth)acrylic monomer (paragraph 0109). The cyclic functional group-containing (meth)acrylic monomer may include at least one of an alicyclic group-containing (meth)acrylate and examples include cyclohexyl (meth)acrylate (paragraphs 0111-0112) which reads on compound of formula 3 in present claim 5 wherein R = hydrogen or alkyl group having 1 carbon atom; and Q is non-aromatic ring structure having 6 carbon atoms in present claim 5.
Regarding claim 6, Kim et al teach that cyclic group containing monomer is present in amounts of 1 wt.% to about 10 wt.% (paragraph 0114). The alkyl group-containing (meth)acrylate may be present in amounts of about 5 to about 99.9 wt.% (paragraph 0055). Hence, the amount of compound of formula 3 overlaps with its amounts relative to 100 parts by weight of alkyl (meth)acrylate in present claim 6. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claims 8 and 10, Kim et al teach that crosslinking agent is present in amounts of about 0.5 parts by weight to about 20 parts by weight relative to 100 parts by weight of the monomer mixture (paragraph 0106). Additionally, Van Wert et al teach that crosslinking may be included in amounts of about 0.05 to about 3 wt%. Depending on the molecular weight and acrylic equivalent weight of the components, as much as about 20 wt% of crosslinking agent may be used (paragraph 0072). Useful as crosslinkers are (meth)acrylate functional oligomers like EBECRYL 230 (i.e., polyfunctional urethane acrylate) which in view of their high molecular weight have lower acrylate content than lower molecular weight diacrylates such as 1,6-hexanediol diacrylates (paragraph 0081).
Regarding claim 11, Kim et al teach that adhesive composition may further include typical additives such as antioxidants, antistatic agents (paragraph 0085).
Response to Arguments
The rejections under 35 U.S.C. 103 as set forth in paragraphs 8-10, of office action mailed 5/8/2025, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this office action, necessitated by amendment. Additionally, the cited prior art of Traser (US 2013/0273362 A1) is still applicable but is not being cited in this office action in view of the cumulative nature of rejections.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764