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 .
Claim Rejections - 35 USC § 103
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, 4-8, 11, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2021/0036257 A1, “Lee”) in view of Masuda et al. (JP 2014-221873 A, “Masuda”) and Suzuki (US 2017/0218231 A1). It is noted that the disclosure of Masuda is based off a machine translation of the reference included with the Office action mailed 05 October 2023.
With respect to claims 1, 5, 7-8, and 11, Lee discloses a display device comprising a window 10, display panel 20, cover panel 30, and adhesive layers 41 and 42 ([0054], [0056]). The display device comprises a planarization portion (corresponding to the portion FA shown below) and edge portions (BA1 and BA2) positioned on both sides of the planarization portion (i.e., surrounds the planarization portion) where the display panel and the cover window are disposed over both the planarization position and the edge portion ([0056], Fig. 2).
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Lee does not disclose wherein the adhesive member includes a urethane monomer and an acrylic monomer, wherein the urethane monomer includes 2,6-diisopropylphenyl isocyanate (2,6-DIPPI) in an amount of about 9 wt% with respect to a total weight of the adhesive member, and the acrylic monomer, with respect to the total weight of the first adhesive member, includes: 2-ethylhexyl acrylate (2-EHA) of about 47 wt%; methyl methacrylate of 3 wt%; octyl methacrylate of about 16 wt%; and 2-hydroxyethyl acrylate (2-HEA) of about 25 wt%.
Masuda teaches an energy ray curable adhesive ([0001]) comprising an acrylic monomer, a blocked isocyanate, and a photoradical photoinitiator ([0011]). The blocked isocyanate includes blocked diisopropylphenyl isocyanate (2,6-DIPPI) ([0020-0021]). The acrylic monomers include hydroxyethyl acrylate, octyl acrylate, and ethyl hexyl acrylate ([0018], [0071]). Masuda further teaches the use of methyl methacrylate ([0018]). The adhesive includes 25-80 parts blocked isocyanate ([0026]), 100 parts polymer (A), 80-200 parts acrylic monomer ([0019]), 0.001 to 40 parts photoradical initiator ([0035]), and 5-50 parts amine ([0036]). Therefore, there is 6-30% diisopropylphenyl isocyanate (25*100/[25+100+200+40+50] ≈ 6%; 80/[80+100+80+0.001+5] ≈ 30%). The adhesive has excellent initial adhesive strength and excellent durability after heat irradiation, as well as excellent adhesive strength over time ([0005]).
Lee and Masuda are analogous inventions in the field of adhesives used in displays.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of Lee to be the adhesive containing diisopropylphenyl isocyanate in an amount, including that presently claimed, as taught by Masuda in order to provide an adhesive having excellent initial adhesive strength and excellent durability after heat irradiation, as well as excellent adhesive strength over time (Masuda, [0005]).
While Lee in view of Masuda discloses the presence of acrylic monomers including methyl methacrylate, hydroxyethyl acrylate, octyl acrylate, and ethyl hexyl acrylate as set forth in the above, there is no disclosure from Lee in view of Masuda regarding the amounts of these compounds.
Suzuki teaches a radiation curable pressure sensitive adhesive ([0001]) made from 50-90% alkyl (meth)acrylates including ethylhexyl acrylate and octyl methacrylate ([0042-0043]) where the alkyl (meth)acrylates impart flexibility, adhesion, tackiness, and hardness ([0041]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use amounts of each of ethylhexyl acrylate and octyl methacrylate, including those claimed, in order to provide desired flexibility, adhesion, tackiness, and hardness. The adhesive additionally contains 1-30% hydroxy containing monomer such as hydroxyethyl acrylate to provide sufficient adhesiveness and proper cohesive force ([0046-0047]).
Lee in view of Masuda and Suzuki are analogous inventions in the field of adhesives made from acrylates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of Lee in view of Masuda to contain 55-90% ethylhexyl acrylate and octyl methacrylate, including the amount presently claimed, and 1-30% hydroxyethyl acrylate as taught by Suzuki in order to produce an adhesive with desired flexibility, adhesion, tackiness, and hardness, as well as proper cohesion (Suzuki, [0041], [0047]). Based on the amount of 2,6-diisopropylphenyl isocyanate disclosed by Masuda and the amounts of ethylhexyl acrylate and octyl acrylate as well as the hydroxyethyl acrylate disclosed by Suzuki, the amount of methyl methacrylate would necessarily overlap the amount presently claimed.
While there may be no explicit disclosure from Lee in view of Masuda and Suzuki regarding the adhesive member being manufactured as a cylindrical shaped sample having a diameter of 8 mm and a height of 600 µm and indicating a maximum strain of about 100% or less during a creep test carried out for the cylindrical shaped sample by a shearing stress of 2000 Pa at 60°C for 600 seconds and indicates a shearing stress of about 3000 Pa or more and 4000 Pa or less during a stress relaxation test carried out for the cylindrical shaped sample with a strain of 25% at 60°C, as the specification is silent to unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the adhesive of Lee in view of Masuda and Suzuki based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Further, as the specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the adhesive of Lee in view of Masuda and Suzuki based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the shape of a component. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Regarding the adhesive indicating a maximum strain of about 100% or less during a creep test carried out for the cylindrical shaped sample by a shearing stress of 2000 Pa at 60°C for 600 seconds and indicates a shearing stress of about 3000 Pa or more and 4000 Pa or less during a stress relaxation test carried out for the cylindrical shaped sample with a strain of 25% at 60°C, while there may be no explicit disclosure from Lee in view of Masuda and Suzuki regarding this limitation, given that Lee in view of Masuda Suzuki discloses an identical article having an identical adhesive member made from identical components as that presently claimed, it is clear the adhesive of Lee in view of Masuda and Suzuki would necessarily inherently indicate a maximum strain of about 100% or less during a creep test carried out for the cylindrical shaped sample by a shearing stress of 2000 Pa at 60°C for 600 seconds and indicate a shearing stress of about 3000 Pa or more and 4000 Pa or less during a stress relaxation test carried out for the cylindrical shaped sample with a strain of 25% at 60°C, absent evidence to the contrary.
Regarding the 2,6-DIPPI being present in an amount to sufficiently harden the adhesive while preventing the occurrence of bubbles while not being over-hardened, while there may be no explicit disclosure from Lee in view of Masuda and Suzuki regarding this property, given that Lee in view of Masuda and Suzuki discloses an identical article having identical layers made of identical components in overlapping amounts as that presently claimed, it is clear the first adhesive member of Lee in view of Masuda and Suzuki would necessarily inherently be sufficiently hardened while not being over-hardened and have prevented bubbles from occurring.
Regarding the first adhesive member reducing the occurrence of bubbles between the display panel and the cover window after an autoclave process, while there may be no explicit disclosure from Lee in view of Masuda and Suzuki regarding this property, given that Lee in view of Masuda and Suzuki discloses an identical article having identical layers made of identical components as that presently claimed, it is clear the first adhesive member of Lee in view of Masuda and Suzuki would necessarily inherently reduce the occurrence of bubbles between the display panel and the cover window after an autoclave process as presently claimed.
Regarding the urethane monomer including 2,6-diisopropylphenyl isocyanate expressed by the claimed Chemical Formula 1, Masuda teaches the use of 2,6-diisopropylphenyl isocyanate blocked with a blocked agent ([0020-0021]). The blocking agent is dissociated from the isocyanate upon application of heat in order to regenerate the isocyanate group so the isocyanate group reacts with the acrylic monomer ([0020], [0025], [0059]). Thus, the blocked isocyanate of Masuda is not the final form of the compound; instead, when the polymerization reaction occurs, the isocyanate of Masuda has the structure expressed by the claimed Chemical Formula 1.
With respect to claims 4 and 15, while there may be no explicit disclosure from Lee in view of Masuda and Suzuki regarding the adhesion between the adhesive member and the display panel or adhesion between the adhesive member and the cover window being at least about 3400 gf/in, given that Lee in view of Masuda and Suzuki discloses an identical article made with identical components as that presently claimed, it is clear the adhesion between the adhesive member and the display panel or adhesion between the adhesive member and the cover window would necessarily inherently be at least about 3400 gf/in, absent evidence to the contrary.
With respect to claim 6, while there may be no explicit disclosure from Lee in view of Masuda and Suzuki regarding the adhesive member being manufactured as a cylindrical shaped sample having a diameter of 8 mm and a height of 600 µm and indicating a shearing stress of about 3000 Pa to about 4000 Pa during a stress relaxation test carried out for the cylindrical shaped sample with a strain of 25% at 60°C, as the specification is silent to unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the adhesive of Lee in view of Masuda and Suzuki based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Further, as the specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the adhesive of Lee in view of Masuda and Suzuki based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the shape of a component. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Regarding the adhesive indicating a shearing stress of about 3000 Pa to about 4000 Pa during a stress relaxation test carried out for the cylindrical shaped sample with a strain of 25% at 60°C, while there may be no explicit disclosure from Lee in view of Masuda and Suzuki regarding this limitation, given that Lee in view of Masuda and Suzuki discloses an identical article having an identical adhesive member made from identical components as that presently claimed, it is clear the adhesive of Lee in view of Masuda and Suzuki would necessarily inherently indicate a shearing stress of about 3000 Pa to about 4000 Pa during a stress relaxation test carried out for the cylindrical shaped sample with a strain of 25% at 60°C, absent evidence to the contrary.
Claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2021/0036257 A1, “Lee”) in view of Masuda et al. (JP 2014-221873 A, “Masuda”) and Suzuki (US 2017/0218231 A1) as applied to claims 1 and 13 above, and further in view of Fukuda et al. (US 2020/0123422 A1, “Fukuda”). It is noted that the disclosure of Masuda is based off a machine translation of the reference included with the Office action mailed 05 October 2023.
With respect to claims 3 and 14, while Lee in view of Masuda and Suzuki discloses the use of a photoinitiator as set forth in the above rejections of claims 1 and 13, Lee in view of Masuda and Suzuki does not disclose wherein the photoinitiator includes at least one of 4-methylbenzophenone or mesityl phenyl ketone.
Fukuda teaches a photocurable adhesive containing a photoinitiator and is used in display devices (Abstract, [0025], [0082-0083]). The photoinitiator includes 4-methylbenzophenone in order to generate radicals upon receiving light during curing without damaging the adherend ([0089], [0091]).
Lee in view of Masuda and Suzuki and Fukuda are analogous inventions in the field of photocurable adhesives containing photoinitiators.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the photoinitiator of Lee in view of Masuda and Suzuki to be 4-methylbenzophenone as taught by Fukuda in order to provide an adhesive capable of generating radicals upon receiving light during curing without damaging the adherend (Suzuki, [0089], [0091]).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2021/0036257 A1, “Lee”) in view of Masuda et al. (JP 2014-221873 A, “Masuda”) and Suzuki (US 2017/0218231 A1) as applied to claim 7 above, and further in view of Yug (US 2020/0301474 A1). It is noted that the disclosure of Masuda is based off a machine translation of the reference included with the Office action mailed 05 October 2023.
With respect to claims 9-10, while Lee in view of Masuda and Suzuki discloses the display device as set forth in the above rejection of claim 7, Lee in view of Masuda and Suzuki does not disclose wherein the display device further comprises a polarizing member disposed between the display panel and the cover window, wherein the first adhesive member is disposed between the cover window and the polarizing member, nor wherein the display device further comprises a second adhesive member disposed between the polarizing member and the display panel, wherein the second adhesive member is made of a material that is the same as that of the first adhesive member.
Yug teaches a display device comprising a display panel 100/adhesive BP/polarizing member 200/adhesive BP/cover window 300 ([0086], Fig. 3). The polarizing member reduces reflection of internal light ([0081]).
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Lee in view of Masuda and Suzuki and Yug are analogous inventions in the field of display devices having display panels, adhesive members, and cover windows.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the display device of Lee in view of Masuda and Suzuki to contain a polarizing member between the display panel and cover window and additional adhesive layer as taught by Yug in order to provide a display device that reduces reflection of internal light (Yug, [0081]). Regarding the additional adhesive layer (corresponding to the claimed second adhesive member), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the same adhesive as that taught by Lee in view of Masuda and Suzuki in order to ensure good adhesion and compatibility with the rest of the structure. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claims 16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al. (JP 2014-221873 A, “Masuda”) in view of Suzuki (US 2017/0218231 A1). It is noted that the disclosure of Masuda is based off a machine translation of the reference included with the Office action mailed 05 October 2023.
With respect to claim 16, Masuda discloses an energy ray curable adhesive ([0001]) comprising an acrylic monomer, a blocked isocyanate, and a photoradical photoinitiator ([0011]). The blocked isocyanate includes blocked diisopropylphenyl isocyanate ([0020-0021]). The acrylic monomers include hydroxyethyl acrylate, octyl acrylate, and ethyl hexyl acrylate ([0018], [0071]). The adhesive includes 25-80 parts blocked isocyanate ([0026]), 100 parts polymer (A), 80-200 parts acrylic monomer ([0019]), 0.001 to 40 parts photoradical initiator, and 5-50 parts amine ([0036]). Therefore, there is 6-30% diisopropylphenyl isocyanate (25*100/[25+100+200+40+50] ≈ 6%; 80/[80+100+80+0.001+5] ≈ 30%). The adhesive has excellent initial adhesive strength and excellent durability after heat irradiation, as well as excellent adhesive strength over time ([0005]).
While Masuda discloses the presence of acrylic monomers including hydroxyethyl acrylate, octyl acrylate, and ethyl hexyl acrylate, there is no disclosure from Masuda regarding the amounts of the compounds.
Suzuki teaches a radiation curable pressure sensitive adhesive ([0001]) made from 50-90% alkyl (meth)acrylates including ethylhexyl acrylate and octyl methacrylate ([0042-0043]) where the alkyl (meth)acrylates impart flexibility, adhesion, tackiness, and hardness ([0041]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use amounts of each of ethylhexyl acrylate and octyl methacrylate, including those claimed, in order to provide desired flexibility, adhesion, tackiness, and hardness. The adhesive additionally contains 1-30% hydroxy containing monomer such as hydroxyethyl acrylate to provide sufficient adhesiveness and proper cohesive force ([0046-0047]).
Masuda and Suzuki are analogous inventions in the field of adhesives made from acrylates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of Masuda to contain 55-90% ethylhexyl acrylate and octyl methacrylate, including the amounts presently claimed, and 1-30% hydroxyethyl acrylate as taught by Suzuki in order to produce an adhesive with desired flexibility, adhesion, tackiness, and hardness, as well as proper cohesion (Suzuki, [0041], [0047]).
Regarding the 2,6-DIPPI being present in an amount to sufficiently harden the adhesive while preventing the occurrence of bubbles while not being over-hardened, while there may be no explicit disclosure from Masuda in view of Suzuki regarding this property, given that Masuda in view of Suzuki discloses an identical article having identical layers made of identical components in overlapping amounts as that presently claimed, it is clear the first adhesive member of Masuda in view of Suzuki would necessarily inherently be sufficiently hardened while not being over-hardened and have prevented bubbles from occurring.
Regarding the urethane monomer including 2,6-diisopropylphenyl isocyanate expressed by the claimed Chemical Formula 1, Masuda teaches the use of 2,6-diisopropylphenyl isocyanate blocked with a blocked agent ([0020-0021]). The blocking agent is dissociated from the isocyanate upon application of heat in order to regenerate the isocyanate group so the isocyanate group reacts with the acrylic monomer ([0020], [0025], [0059]). Thus, the blocked isocyanate of Masuda is not the final form of the compound; instead, when the polymerization reaction occurs, the isocyanate of Masuda has the structure expressed by the claimed Chemical Formula 1.
With respect to claim 19, while there may be no explicit disclosure from Masuda in view of Suzuki regarding the adhesive member being manufactured as a cylindrical shaped sample having a diameter of 8 mm and a height of 600 µm and indicating a maximum strain of about 100% or less during a creep test carried out for the cylindrical shaped sample by a shearing stress of 2000 Pa at 60°C for 600 seconds, as the specification is silent to unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the adhesive of Masuda in view of Suzuki based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Further, as the specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the adhesive of Masuda in view of Suzuki based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the shape of a component. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Regarding the adhesive indicating a maximum strain of about 100% or less during a creep test carried out for the cylindrical shaped sample by a shearing stress of 2000 Pa at 60°C for 600 seconds, while there may be no explicit disclosure from Masuda in view of Suzuki regarding this limitation, given that Masuda in view of Suzuki discloses an identical article having an identical adhesive member made from identical components as that presently claimed, it is clear the adhesive of Masuda in view of Suzuki would necessarily inherently indicate a maximum strain of about 100% or less during a creep test carried out for the cylindrical shaped sample by a shearing stress of 2000 Pa at 60°C for 600 seconds, absent evidence to the contrary.
With respect to claim 20, while there may be no explicit disclosure from Masuda in view of Suzuki regarding the adhesive member being manufactured as a cylindrical shaped sample having a diameter of 8 mm and a height of 600 µm and indicating a shearing stress of about 3000 Pa to about 4000 Pa during a stress relaxation test carried out for the cylindrical shaped sample with a strain of 25% at 60°C, as the specification is silent to unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the adhesive of Masuda in view of Suzuki based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Further, as the specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the adhesive of Masuda in view of Suzuki based on routine experimentation, for the purpose of optimizing operation of said adhesive. Such modifications would have been obvious to one of ordinary skill in the art, since such a modification would have involved a mere change in the shape of a component. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Regarding the adhesive indicating a shearing stress of about 3000 Pa to about 4000 Pa during a stress relaxation test carried out for the cylindrical shaped sample with a strain of 25% at 60°C, while there may be no explicit disclosure from Masuda in view of Suzuki regarding this limitation, given that Masuda in view of Suzuki discloses an identical article having an identical adhesive member made from identical components as that presently claimed, it is clear the adhesive of Masuda in view of Suzuki would necessarily inherently indicate a shearing stress of about 3000 Pa to about 4000 Pa during a stress relaxation test carried out for the cylindrical shaped sample with a strain of 25% at 60°C, absent evidence to the contrary.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Masuda et al. (JP 2014-221873 A, “Masuda”) in view of Suzuki (US 2017/0218231 A1) as applied to claim 16 above, and further in view of Fukuda et al. (US 2020/0123422 A1, “Fukuda”). It is noted that the disclosure of Masuda is based off a machine translation of the reference included with the Office action mailed 05 October 2023.
With respect to claim 18, while Masuda in view of Suzuki discloses the use of a photoinitiator as set forth in the above rejection of claim 16, Masuda in view of Suzuki does not disclose wherein the photoinitiator includes at least one of 4-methylbenzophenone or mesityl phenyl ketone.
Fukuda teaches a photocurable adhesive containing a photoinitiator and is used in display devices (Abstract, [0025], [0082-0083]). The photoinitiator includes 4-methylbenzophenone in order to generate radicals upon receiving light during curing without damaging the adherend ([0089], [0091]).
Masuda in view of Suzuki and Fukuda are analogous inventions in the field of photocurable adhesives containing photoinitiators.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the photoinitiator of Masuda in view of Suzuki to be 4-methylbenzophenone as taught by Fukuda in order to provide an adhesive capable of generating radicals upon receiving light during curing without damaging the adherend (Suzuki, [0089], [0091]).
Response to Arguments
Due to the cancellation of claims 13 and 21, the 35 U.S.C. 112(a) rejections of claims 13 and 21, the 35 U.S.C. 112(b) rejections of claims 13 and 21, and the 35 U.S.C. 103 rejections of claims 13 and 21 are withdrawn.
Due to the amendment to claim 11, the 35 U.S.C. 112(a) rejections of claims 11 and 14-15 and the 35 U.S.C. 112(b) rejections of claims 11 and 14-15 are withdrawn.
Applicant’s arguments filed 24 October 2025 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues that claim 1 has been amended to the composition ratio of the adhesive composition of manufacturing example 1 found in the instant specification, and that the data found in the examples demonstrates unexpectedly superior results. Applicant further argues Masuda discloses numerous blocked isocyanates, and that the claimed blocked 2,6-diisopropylphenyl isocyanate is just one of them. Applicant argues the amount of the blocked isocyanate calculated being 6-30% includes a range that is unable to reduce the occurrence of bubbles between the display panel and the cover window after the autoclave process given that the present specification discloses that the content of 2,6-diisopropylphenyl isocyanate needs to be about 15 wt% or less to prevent the adhesive member from being excessively hardened, such that claim 1 is not anticipated by Masuda, and again points to the examples of the instant specification for support of unexpectedly superior results. Applicant further argues Suzuki teaches the amount of isocyanate crosslinker is at most 4.76 wt%, whereas the present claims require about 9 wt%, and therefore the teachings of Suzuki are contradictory to the requirements of claim 1. Applicant additionally argues Suzuki discloses a large number of (meth)acrylic alkyl esters and hydroxy-containing (meth)acrylic esters, and that Suzuki does not disclose the specific amounts of the claimed acrylic monomers. Applicant further argues the cited references fail to recognize that having a low maximum strain to minimize the occurrence of bubbles as a result-effective variable. Applicant lastly argues that none of Fukuda or Yug remedy the alleged deficiencies of Lee, Masuda, and Suzuki. The examiner respectfully disagrees for the following reasons.
In response to Applicant’s arguments that the data found in manufacturing example 1 demonstrates unexpectedly superior results, this argument is not found persuasive because the data is not commensurate in scope with the present claims for the following reasons.
Firstly, manufacturing example 1 relates to specific amounts of the components, whereas the present claims allow for broader amounts. Specifically, manufacturing example 1 relates to 47.26 wt% 2-ethylhexyl acrylate, 25.45 wt% 2-hydroxyethyl acrylate, 2.78 wt% methyl methacrylate, 15.52 wt% octyl methacrylate, and 8.89 wt% 2,6-diisopropylphenyl isocyanate (instant specification, [0087]). However, the present claims allow for broader amounts of: about 47 wt% 2-ethylhexyl acrylate (the use of the term “about” includes values above and below 47 wt%, e.g., 46 wt%, 48 wt%); about 3 wt% methyl methacrylate (the use of the term “about” includes values above and below 3 wt%, e.g., 2 wt%, 4 wt%); about 25 wt% 2-hydroxyethyl acrylate (the use of the term “about” includes values above and below 25 wt%, e.g., 24 wt%, 26 wt%); and about 9 wt% 2,6-diisopropylphenyl isocyanate (the use of the term “about” includes values above and below 9 wt%, e.g., 8 wt%, 10 wt%), for which no data is provided in the examples of the specification as originally file.
Secondly, there does not appear to be a proper side-by-side comparison in the examples given that no amounts of the components are specified in comparative examples 1-3, and given that comparative examples 1-3 use additional components not required by the present claims.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
In response to Applicant’s argument that Suzuki discloses 4.76 wt% of an isocyanate crosslinker, this argument is not found persuasive for the following reasons. Suzuki is not used to teach 2,6-DIPPI or its amount; this amount is already taught by Masuda. Suzuki is only being used as a teaching reference in order to teach the amounts of ethylhexyl acrylate, octyl methacrylate, and hydroxyethyl acrylate, which are already taught by Lee in view of Masuda. It is noted that the “test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference… Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”, In re Keller, 642 F.2d 413, 208 USPQ 871, 881 (CCPA 1981) and that “combining the teachings of references does not involve an ability to combine their specific structures”, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973). Further, it is noted that [0087] of Suzuki states that the adhesive composition “may” contain a crosslinker, i.e., that a crosslinker is not required. Even if a crosslinker were required by Suzuki, it is not required to be an isocyanate crosslinker as set forth in [0088] of Suzuki. Therefore, Suzuki does not teach away from a combination with Masuda. Additionally, it is noted that the motivation provided for combining Suzuki with Lee in view of Masuda, namely to produce an adhesive with desired flexibility, adhesion, tackiness, and hardness, as well as proper cohesion, is based on the acrylic monomer alone, and not the isocyanate crosslinker. Therefore, the combination of Lee with Masuda and Suzuki is proper. Furthermore, Suzuki discloses the adhesive “may” contain a crosslinker ([0087], [0091]) (i.e., the crosslinkers are not required). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, “[t]he prior art’s ere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In response to Applicant’s argument that Suzuki discloses a large number of (meth)acrylic alkyl esters and hydroxy-containing (meth)acrylic esters, this is not found persuasive for the following reasons. While the examiner acknowledges that Suzuki may disclose other monomers that are not presently claimed, the fact remains that Suzuki discloses the presently claimed monomers. Therefore, it would have been obvious to one of ordinary skill in the art to choose any acrylate and hydroxy-containing acrylate, including those presently claimed, absent some evidence to the contrary. One of ordinary skill in the art would consider all the acrylates and hydroxy-containing acrylates to be equivalent and interchangeable and equally suitable, absent a showing of criticality by Applicant of the claimed hydroxyethyl acrylate, octyl acrylate, and ethylhexyl acrylate. In MPEP 2141.III, one of the rationales set forth as to “why” the claimed invention would be obvious is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, given that Suzuki discloses a finite number of acrylates and hydroxy-containing acrylates and given that the reference discloses all the acrylates and hydroxy-containing acrylates being equally applicable, there would be a reasonable expectation of success when using the claimed hydroxyethyl acrylate, octyl acrylate, and ethylhexyl acrylate as set forth by the examiner. It is further noted that the fact that “the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious…” See, e.g., Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites from the claims from among ‘thousands of compounds’”).
In response to Applicant’s argument that Suzuki fails to disclose the specific amounts of the claimed acrylic monomers, this is not found persuasive for the following reasons. Suzuki teaches a radiation curable pressure sensitive adhesive made from 50-90% alkyl (meth)acrylates including ethylhexyl acrylate and octyl methacrylate ([0001], [0042-0043]) where the alkyl (meth)acrylates impart flexibility, adhesion, tackiness, and hardness ([0041]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use amounts of each of ethylhexyl acrylate and octyl methacrylate, including those presently claimed, in order to provide desired flexibility, adhesion, tackiness, and hardness.
In response to Applicant’s argument that the cited references fail to recognize that having a low maximum strain to minimize the occurrence of bubbles as a result-effective variable, this is not found persuasive for the following reasons. While the examiner acknowledges that the cited references may not have recognized that having a low maximum strain to minimize the occurrence of bubbles to be a result-effective variable, 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). The fact remains that Lee in view of Masuda and Suzuki discloses an invention identical to and overlapping with the presently claimed invention, and therefore the cited references render the claimed invention obvious.
In response to Applicant’s argument that neither Fukuda nor Yug remedy the alleged deficiencies of Lee, Masuda, and Suzuki, this is not found persuasive because Lee, Masuda, and Suzuki do not have the alleged deficiencies for the reasons set forth above. Further, while Fukuda and Yug may not disclose all the features of the presently claimed invention, Fukuda and Yug are used as teaching references, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather, these references teach certain concepts, namely the use of a photoinitiator including 4-methylbenzophenone in order to generate radicals upon receiving light during curing without damaging the adherend (Fukuda, [0089], [0091]) and a polarizing layer to reduce the reflection of internal light (Yug, [0081]), and in combination with the primary reference, discloses the presently claimed invention.
In response to Applicant’s argument that the range of 6-30% of blocked isocyanate disclosed by Masuda includes at least more than half the range not being able to reduce the occurrence of bubbles between the display panel and the cover window, this is not found persuasive. The fact remains that the amount of 2,6-diisopropylphenyl isocyanate disclosed by Masuda overlaps that presently claimed and therefore, it would have been obvious to one of ordinary skill in the art to use amounts of 2,6-diisopropylphenyl isocyanate, including that presently claimed and arrive at the present invention. 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).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787