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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 15, 2025 has been entered.
Claim Rejections - 35 USC § 103
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.
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 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kho (US 2010/0285244) in view of Toyama et al. (US 2009/0116111).
Considering Claims 11 and 12: Kho teaches an adhesive comprising an acrylic copolymer 98 parts of alkyl acrylate and 2 parts of a hydroxyl functional acrylate (Example 4) ; an ester compound that is preferably acetyl tributyl citrate/a citric acid ester with alkyl end groups (Example 4) in an amount of 0.5 to 10 parts of weight (¶0020) and a crosslinking agent (Example 4) in an amount of 0.1 to 10 parts by weight (¶0044). Kho et al. teaches an adhesive sheet/film made from the adhesive (¶0048-50).
Kho is silent towards the glass transition temperature of the acrylic resin. However, the glass transition temperature of an acrylic resin is determined by the constituent monomers. Kho teaches the 98 parts of low glass transition temperature C4-C8 alkyl acrylates and 2 parts of higher glass transition temperature functional monomer, which is the same ratio taught in the original specification (originals claim 8). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01.
Kho teaches an overlapping range for the citric acid ester with the claimed range. In the case where the claimed ranges "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). See MPEP 2144.05. It would have been obvious to a person of ordinary skill in the art to have used the citric acid ester in the overlapping portion of the claimed range, the motivation to do so would have been, as Kho suggests, to provide good wettability and adhesion for the sheet (¶0020).
Kho teaches an overlapping range for the crosslinking agent with the claimed range. In the case where the claimed ranges "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). See MPEP 2144.05. It would have been obvious to a person of ordinary skill in the art to have used the crosslinking agent in the overlapping portion of the claimed range, the motivation to do so would have been, as Kho suggests, to provide good wettability and release rate for the sheet (¶0044).
Kho is silent towards the molecular weight of the acrylic polymer. However, Toyama et al. teaches an acrylic based pressure sensitive adhesive (¶00017) comprising a functional group containing acrylic polymer (¶0017) having a molecular weight of 1,500,000 to 2,500,000 (¶0054) and a crosslinking agent (¶0067). Kho and Toyama et al. are analogous art as they are concerned with the same field of endeavor, namely acrylic polymer based pressure sensitive adhesives. It would have been obvious to a person of ordinary skill in the art to have used the acrylic polymer having the molecular weight of Toyama et al. in the pressure sensitive adhesive of Kho, and the motivation to do so would have been, as Toyama et al. suggests, to provide high heat resistance and adhesive strength (¶0054).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the storage elastic modulus would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 13: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the haze at 25 microns would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 14: Kho teaches applying the adhesive to a substrate/base layer (¶0048-50).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kho (US 2010/0285244) in view of Toyama et al. (US 2009/0116111) as applied to claim 11 above, and further in view of Brotzman et al. (US Pat. 10,033,015).
Considering Claim 15: Kho and Toyama et al. collectively teach the adhesive film of claim 11 as shown above. Kho teaches the film as being used in display devices.
Kho does not teach the display as being foldable. However, Brotzman et al. teaches using acrylate resins as adhesives in foldable display devices (1:40-57). Kho and Brotzman et al. are analogous art as they are concerned with the same field of endeavor, namely adhesives for display devices. It would have been obvious to a person of ordinary skill in the art to have used the adhesive of Kho in a foldable display device, as in Brotzman et al., and the motivation to do so would have been, it is a known use for the adhesives. 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) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle." 325 U.S. at 335, 65 USPQ at 301.). See MPEP § 2144.07.
Response to Arguments
Applicant's arguments filed November 15, 2025 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that the adhesive film of Kho does not teach the claimed modulus requirements is not persuasive. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the storage elastic modulus would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Kho teaches the same components in amounts that overlap with the claimed ranges, and includes an example with values of the citric acid ester compound and the crosslinking agent just outside the claimed ranges, namely 5 parts and 3 parts respectively. The original specification of the instant application teaches that the preferred ranges for the citric acid ester and crosslinking agent are 5 to 30 parts (pg. 6) and 0.001 to 5 parts (pg. 13), respectively. Thus, the example of Kho would be expected to provide the claimed properties, based on the disclosure of Kho, when taken with the original specification of the instant application. The fact that the claims were further narrowed does not change this presumption.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). See MPEP § 2112. The applicant has not provided any objective evidence to rebut the finding of inherency.
B) In response to applicant's argument that Kho does not teach a dual-temperature window plus a log modulus ratio, 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).
C) In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the thickness of the adhesive film) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
While claim 13 recites a thickness for the testing of the haze, this thickness is not a required feature of the film as currently claimed.
D) The applicant’s argument that there is not reasonable expectation of success in using the acrylate of Kho in a foldable device is not persuasive. Brotzman et al. teaches using acrylate resins as adhesives in foldable display devices (1:40-57). As Brotzman et al. teaches that similar compositions have utility in foldable devices, a person of ordinary skill in the art would expect that the composition of Kho would have a similar utility. Reasonable expectation of success can be implicitly shown via the prior art teachings or as part of the obviousness analysis. See Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1376-77, 2023 USPQ2d 1100 (Fed. Cir. 2023) ("[W]e can reasonably discern that the Board considered and implicitly addressed reasonable expectation of success based on the arguments and evidence presented to the Board on motivation to combine."). See MPEP § 2143.02.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767