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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/6/2024 has been entered. Claim 1 is amended; claims 2-4, 7, 9, and 15 are cancelled; and claims 12-14 are withdrawn from consideration as being drawn to non-elected invention.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 of 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; weight ratio of A/B; and properties.
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 in the ratio 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 in the polymer may be controlled to be in a range of more than 1 or less than 25 (paragraph 0034) which is equivalent to A/B of 0.04 to about 1. 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). However, It is the examiner’s position that instantly claimed (A/B) ratio of 1 and that taught by Bae et al (i.e., ratio of about 1) are so close to each other that the fact pattern is similar to the one in In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where, despite a slight difference in the ranges, court held that such a difference did not “render the claims patentable,” or, alternatively, that “a prima facie case of obviousness exists where the claimed range and prior art range do not overlap, but are close enough so that one skilled in the art would have expected them to have the same properties. Alternatively, Bae et al teach that polymer may be formed from a monomer mixture including (A:B:C:D) in a ratio of 0.1 to 6:1 to 30: 0.1 to 15.0: 0.1 to 5 with monomer C being first monomer and D being second monomer (paragraph 0035) which overlaps with the ratio of A/B in present claim 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. Therefore, in light of the teachings in Bae et al and case law, 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, absent evidence to the contrary.
Regarding properties, given that compositional limitations of present claims are met based on the disclosure in Kim combined with the teachings in Van Wert et al and Bae et al, one skilled in art prior to the filing of present application would have a reasonable basis to expect the adhesive composition, of Kim et al in view of Van Wert et al and Bae et al, to exhibit the presently claimed peel force (i.e., 2,600 gf/inch or more with respect to a glass base material as measured at a peel angle of 180 degrees and a peel rate of 300 mm/min), absent evidence to the contrary.
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 0075). 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 paragraph 8, of Office action mailed 1/15/2026, 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.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 10 below).
Applicant's arguments filed 4/6/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that (A) Bae et al teach that weight ratio of first monomer and second monomer is in a range of more than 1 and in an exemplary embodiment weight ratio of HBA/HEA is 0.75, less than at least 1. One skilled in art would not have been motivated to modify the weight ratio of A/B as claimed based on Bae’s teachings; (B) claimed curable composition is for use as a vehicle-display OCA that achieves a high peel strength with respect to a glass substrate while maintaining long-term reliability under harsh conditions including prolonged exposure to heat and UV light. Kim is directed to an adhesive film for protecting a polyamide film used in foldable/wearable display devices and the adhesive film has a peel strength of 0.5 to 5 gf/in with respect to a glass substrate. The adhesive film exhibits low peel strength to prevent damage to the polyamide film and/or shape change of the polyamide film; (C) Van Wet is in a different field of art and seeks balance of properties such as adequate adhesion, repeated removability and low residue; and (D) Bae et al is directed to a removable film for an optical device in which relatively high low speed peel-off strength but relatively low high speed peel off strength is desired so that film can be easily peeled at high speed while minimizing static electricity.
With respect to (A), claimed ratio (A/B) of 1 or more is close to about 1 for the ratio of second monomer to first monomer in cited prior art of Bae et al (i.e. A/B of present claims). This pattern is similar to the one in In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where, despite a slight difference in the ranges, court held that such a difference did not “render the claims patentable,” or, alternatively, that “a prima facie case of obviousness exists where the claimed range and prior art range do not overlap, but are close enough so that one skilled in the art would have expected them to have the same properties.
With respect to (B), firstly, claim recites “peel force” which is different from peel strength. Secondly, if applicant is claiming a peel strength (and not peel force as recited) which is not supported by original disclosure, attention is drawn to Kim wherein it teaches that adhesive tape formed of adhesive composition including a (meth)acrylic copolymer and a heat curing agent may have a peel strength of 500 gf/in to about 1000 gf/in with respect to a glass substrate (paragraph 0041). Finally, Kim teaches that crosslinking agent can increase mechanical strength of the adhesive film through improvement of crosslinking degree of the adhesive composition. Accordingly, the crosslinking agent can regulate peel strength of the adhesive film. Hence, it is the Office’s position that it is within the scope of one skilled in art prior to the filing of present application to obtain the desired peel strength by optimizing the amount of crosslinking agent.
With respect to (C), Kim and Van Wert are in the same field of endeavor dealing with pressure sensitive adhesives. Kim teaches a PSA composition comprising methacrylate polymer including alkyl methacrylate and hydroxyl group containing acrylate monomer, and a crosslinking agent. Graham v. Deere analysis was done and Van Wert taught a combination of crosslinking agents for use in PSA compositions.
With respect to (D), applicant attention is drawn to Bae wherein the H-peel in inventive examples is 130 gf/25 mm which is equivalent to > 2600 gf/inch. Hence, it is clear that Bae does teach high peel strength.
Conclusion
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
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