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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7, 9, and 11-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 1, the claim recites “wherein the adhesive sheet comprises a cured product of a resin composition comprising an acrylic (co)polymer, in at least 55.56 mass%” in lines 5-6. There is no support in the specification as originally filed for this limitation in the claim. While there is support in the specification as originally filed to recite an adhesive sheet comprising a cured product of a resin composition comprising an acrylic (co)polymer in an amount of 55.56-89.95% (100*100/[100+75+5] ≈ 55.56%; 100*100/[100+15+0.01] ≈ 86.95%; see instant specification, page 23, [0100], and pages 23-24, [0102-0106]); see also the calculations in the interview summary mailed 04 September 2025), this does not provide support to broadly recite the acrylic (co)polymer is present in an amount of at least 55.56 mass%, which includes all values above 55.56 mass% including 90 mass%, 95 mass%, etc., for which there is no support in the specification as originally filed.
With respect to claim 2, the claim recites “wherein the adhesive sheet comprises a cured product of a resin composition comprising an acrylic (co)polymer, in at least 55.56 mass%” in lines 4-5. There is no support in the specification as originally filed for this limitation in the claim. While there is support in the specification as originally filed to recite an adhesive sheet comprising a cured product of a resin composition comprising an acrylic (co)polymer in an amount of 55.56-89.95% (100*100/[100+75+5] ≈ 55.56%; 100*100/[100+15+0.01] ≈ 86.95%; see instant specification, page 23, [0100], and pages 23-24, [0102-0106]); see also the calculations in the interview summary mailed 04 September 2025), this does not provide support to broadly recite the acrylic (co)polymer is present in an amount of at least 55.56 mass%, which includes all values above 55.56 mass% including 90 mass%, 95 mass%, etc., for which there is no support in the specification as originally filed.
Claims 3-5, 7, 9, 11-15, and 24 are rejected under 35 U.S.C. 112(a) due to their ultimate dependency on claim 1.
Claims 16-23 and 25 are rejected under 35 U.S.C. 112(a) due to their ultimate dependency on claim 2.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 19, and 22 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 7, the claim recites “the urethane acrylic (co)polymer” in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, which claim 7 depends from, does not recite “a urethane acrylic (co)polymer”. Therefore, claim 7 lacks antecedent basis. However, claim 1 does recite “a urethane (meth)acrylate” in line 9. For the purposes of examination, claim 7 has been interpreted as if it recites “the urethane (meth)acrylate”.
With respect to claim 19, the claim recites “the urethane acrylic (co)polymer” in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 2, which claim 19 depends from, does not recite “a urethane acrylic (co)polymer”. Therefore, claim 19 lacks antecedent basis. However, claim 2 does recite “a urethane (meth)acrylate” in line 8. For the purposes of examination, claim 19 has been interpreted as if it recites “the urethane (meth)acrylate”.
With respect to claim 22, the claim recites “the metal element” in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 2, which claim 22 depends from, makes no mention of “a metal element”. The examiner notes that claim 21 recites “a metal element”, and therefore claim 22 has been interpreted as if it depends from claim 21.
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 1-5, 7, 9, and 11-25 are rejected under 35 U.S.C. 103 as being unpatentable over Behling et al. (US 2018/0291240 A1, “Behling”) in view of Hoshino et al. (US 2013/0005928 A1, “Hoshino”).
With respect to claims 1-5, 7, 9, 13-20, and 23-25, Behling discloses an assembly for a flexible display device made from precursors including an alkyl (meth)acrylate ester which is in contact with a first and second substrate ([0008]) (i.e., adheres the first and second substrates together and is therefore an adhesive). The alkyl (meth)acrylate esters include a variety of monofunctional (meth)acrylates ([0012]). Both the first and second substrates are flexible ([0009]) and includes flexible devices such as electronic displays ([0010]). The substrates include polyimide substrates ([0040]). Within a temperature range of about -30°C to 90°C, the assembly layer has a shear storage modulus at a frequency of 1 Hz that does not exceed about 2 MPa and a shear creep compliance (J) of at least about 6 × 10-6 1/Pa (i.e., Pa-1) ([0008]).
Behling does not disclose wherein the adhesive sheet comprises a cured product of a resin composition comprising an acrylic (co)polymer, in at least 55.56 mass%, and a curable compound, wherein the acrylic (co)polymer comprises, in polymerized form, a (meth)acrylate having an alkyl group having 4-20 carbon atoms, wherein the curable compound comprises a urethane (meth)acrylate.
Hoshino teaches an image display device having an adhesive sheet ([0002]). The adhesive contains an acrylic polymer (X) which is formed from a monomer component including an alkyl (meth)acrylate having a linear or branched alkyl group having 1-14 carbon atoms which is present in an amount of 50-100 wt% of the monomer component in order to provide sufficient adhesiveness ([0013-0015], [0046]) and where the acrylic polymer (X) is present in the adhesive in an amount of 50-100 wt% from the viewpoint of pressure-sensitive adhesive property ([0068]). The monomer component further includes a polyfunctional monomer ([0044]), where the polyfunctional monomer includes urethane acrylate, corresponding to the claimed curable compound, present in an amount of 0.001-0.3 wt% in order to provide an adhesive having desired reworkability and processability ([0058-0059]). Because the adhesive is polymerized ([0061]), then the urethane acrylate is, in its polymerized form, a polyfunctional urethane acrylate as claimed. The adhesive has a gel fraction of 20-74% (overlapping the presently claimed range) in order to provide an adhesive with sufficient cohesive force and processability ([0076]). Hoshino further teaches the composition includes a photopolymerization initiator ([0062]) including 3,3’-dimethyl-4-methoxybenzophenone, thioxanthone, 2-chlorothioxanthone, and 2,4-dimethylthioxanthone ([0066]). These are identical to the radical initiators of the present application (see instant specification, page 24, [0103-0105]), and thus Hoshino teaches the use of a radical initiator.
Behling and Hoshino are analogous inventions in the field of adhesives made from (meth)acrylates and used with display devices.
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 acrylic adhesive of Hoshino to contain an alkyl (meth)acrylate having a linear or branched alkyl group having 1-14 carbon atoms in an amount of 50-100 wt%, including values presently claimed, where the acrylic polymer (X) is present in the adhesive in an amount of 50-100 wt%, including values presently claimed, a polyfunctional urethane acrylate monomer in an amount of 0.001-0.3 wt%, and a radical initiator, and to have a gel fraction of 20-74%, including values presently claimed, as taught by Hoshino in order to provide an adhesive layer having sufficient adhesiveness, reworkability and processability, and sufficient cohesive force (Hoshino, [0046], [0059], [0068], [0076]).
Upon curing the monofunctional monomers and urethane (meth)acrylate, the adhesive of Behling in view of Hoshino would necessarily include acrylic (co)polymer and urethane acrylate (co)polymer.
While there may be no explicit disclosure from Behling in view of Hoshino regarding: (1) the adhesive layer having a loss tangent at 60°C being less than 0.60; (2) when a creep compliance measured when a stress of 3,000 Pa is applied is set to a minimum creep compliance J(t)min in MPa-1, and a maximum creep compliance value measured during a period in which the stress of 3,000 Pa continues to be applied until 3,757 seconds after the minimum creep compliance J(t)min is measured is set to a maximum creep compliance J(t)max in MPa-1, a creep compliance fluctuation value Δlog(J(t)) calculated based on a difference between the minimum creep compliance J(t)min and the maximum creep compliance J(t)max is less than 1.0; (3) a maximum value of a loss of elastic modulus in a temperature range of -60°C to 25°C obtained by dynamic viscoelasticity measurement in a shear mode at a frequency of 1 Hz is 1.5 or more; (4) the adhesive has a maximum point of the loss tangent at -25°C or lower obtained by the dynamic viscoelasticity measurement in the shear mode at a frequency of 1 Hz; and at least one of the two flexible members satisfies a requirement (5) tensile strength at 25°C measured according to ASTM D882 is 10-900 MPa, given that Behling in view of Hoshino discloses an identical article made from identical adhesive and flexible members made from identical components as those presently claimed, it is clear the adhesive and the flexible members of Behling in view of Hoshino would necessarily inherently have the claimed properties, absent evidence to the contrary.
With respect to claims 11 and 21, Behling does not disclose the use of a metal element nor the presence of a metal element in the adhesive member. Thus, Behling discloses the adhesive layer has a content of a metal element of 0 ppm. While Hoshino teaches that a crosslinking agent may be used where the crosslinking agent may be a metal alkoxide-based crosslinking agent ([0071-0072]), it is an optional component as indicated by the “may” language and is not used when the polyfunctional urethane acrylate monomer is present ([0059]). Thus, Hoshino does not require the use of a compound containing a metal element and therefore the amount is 0 ppm.
With respect to claims 12 and 22, given that Behling in view of Hoshino does not require the use of a metal element in the adhesive as set forth above (i.e., the content of a metal element in the adhesive is 0 ppm), and given that claims 12 and 22 only further limit an optional component (i.e., because the metal may be present in an amount of 0 ppm, it is an optional component), these claims are considered met by Behling in view of Hoshino.
Response to Arguments
Due to the cancellation of claims 6, 8, and 10, the objections to claims 6, 8, and 10, the 35 U.S.C. 112(a) rejections of claims 6, 8, and 10, and the 35 U.S.C. 103 rejections of claims 6, 8, and 10 are withdrawn.
Due to the amendments to claims 4-5, 11, and 13-15, the objections to claims 4-5, 11, and 13-15 are withdrawn.
Due to the amendments to claims 1-2, the 35 U.S.C. 112(a) rejections of claims 1-5, 7, 9, and 11-15 are withdrawn.
Due to the amendments to claims 1-2, the 35 U.S.C. 103 rejections of claims 1-4, 7, 9, and 11-15 over Behling in view of Yuan et al. (US 2015/0166860 A1, “Yuan”) and the evidence provided by Sinocure (Sinocure® 184), and the 35 U.S.C. 103 rejection of claim 5 over Behling in view of Yuan and the evidence provided by Sinocure and further in view of Onishi et al. (JP 2019-156878 A, “Onishi”) are withdrawn. This is because Yuan teaches the use of 1-30% of an acrylate, which is outside the claimed range of at least 55.56 mass%. However, upon updating the searches, a new reference Hoshino was found. Hoshino teaches an adhesive that contains an acrylic polymer (X) which is formed from a monomer component including an alkyl (meth)acrylate having a linear or branched alkyl group having 1-14 carbon atoms which is present in an amount of 50-100 wt% of the monomer component in order to provide sufficient adhesiveness ([0013-0015], [0046]) and where the acrylic polymer (X) is present in the adhesive in an amount of 50-100 wt% from the viewpoint of pressure-sensitive adhesive property ([0068]), and in combination with Behling discloses the presently claimed invention as set forth above.
Applicant’s arguments filed 08 September 2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787