DETAILED ACTION
This is an Office action based on application number 17/682,749 filed 28 February 2022, which is a continuation of application numbers 16/933,853 filed 30 October 2015 and 14/929,160 filed 30 October 2015. The application, further, claims foreign priority to KR10-2015-0024448 filed 17 February 2015, KR10-2014-0156462 filed 11 November 2014, KR10-2014-0156462 filed 11 November 2014, KR10-2014-0151571 filed 3 November 2014, and KR10-2014-0150799 filed 1 November 2014. Claims 1-8 and 10-31 are pending.
Amendments to the claims, filed 22 August 2025, have been entered into the above-identified application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19 August 2025 has been entered.
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 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, 6-8, 10-12, 14-15, 17-23, and 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Kishioka et al. (US Patent Application Publication No. US 2001/0021452 A1) (Kishioka 452) in view of Kishioka et al. (US Patent Application Publication No. 2012/0329970 A1) (Kishioka 452) and Lee et al. (US Patent Application Publication No. US 2014/0162044 A1) (Lee), and as evidenced by Ono et al. (US Patent Application Publication No. US 2002/0142158 A1) (Ono).
Regarding instant claims 1, 6-8, 10-12, 14-15, 17-21, 27-28, and 31:
Kishioka 452 discloses pressure-sensitive adhesive sheets comprising a pressure-sensitive adhesive composition composed of an acrylic copolymer (paragraph [0008]).
Kishioka 452 further discloses that the acrylic copolymer contains an alkyl (meth)acrylate as a principal component and a monomer capable of combining with the alkyl (meth)acrylate (paragraph [0013]).
Kishioka 452 further discloses that the alkyl (meth)acrylate is inclusive of 2-ethyhexyl (meth)acrylate (paragraph [0015]) (i.e., inclusive of 2-ethylhexyl acrylate).
Ono provides evidence that 2-ethylhexyl acrylate has a Tg of -85°C (paragraph [0002]).
Kishioka 452 further discloses that the monomer capable of combining with the alkyl (meth)acrylate is inclusive of 4-hydroxybutyl (meth)acrylate (paragraph [0016]).
Said 4-hydroxybutyl (meth)acrylate reads on the claimed hydroxy group-containing (meth)acrylate.
Said of 4-hydroxybutyl (meth)acrylate reads on the claimed comonomer whose homopolymer has a glass transition temperature of -150°C to 0°C.
Kishioka 452 further discloses that the monomer capable of combining with the alkyl (meth)acrylate is used in the proportion of not more than 50% by weight based on the total amount of the alkyl (meth)acrylate and the copolymerizable monomer (paragraph [0016]), i.e., the amount of copolymerizable monomer is ≤ 50% by weight, and the amount of alkyl (meth)acrylate is ≥ 50% by weight. Therefore the monomer amount ranges disclosed by Kishioka overlap or include the ranges recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Specifically regarding instant claim 19:
Kishioka 452 further discloses that the monomer capable of combining with the alkyl (meth)acrylate is inclusive of (meth)acrylic acid (paragraph [0016]), wherein (meth)acrylic acid is a monomer that comprises a carboxyl group.
Specifically regarding instant claim 20:
Kishioka 452 further discloses that the acrylic polymer composition comprises an initiator (paragraph [0018]) and a crosslinking agent (paragraph [0017]).
Specifically regarding instant claim 21:
Kishioka 452 further discloses that the acrylic polymer composition comprises a silane coupling agent (paragraph [0017]).
Specifically regarding instant claim 27:
Kishioka 452 further discloses that the adhesive sheets have a thickness of from 5 to 500 μm (paragraph [0033]), which overlaps the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Kishioka 452 is silent with regard to the UV radiation used to cure the adhesive composition. Kishioka 452 is silent with regard to the content of specific organic particles. Kishioka 452 is silent with regard to the storage modulus properties of the adhesive film. Kishioka 452 is silent with regard to the glass transition temperature of the adhesive composition.
With regard to the UV radiation recited by claim 28:
Kishioka 452 further discloses that the acrylic polymer is obtained by polymerization due to irradiation with radiation (paragraph [0018]).
Kishioka 452 is silent with regard to the specific UV radiation.
However, Kishioka 970 discloses an acrylic pressure-sensitive adhesive sheet (paragraph [0025]) obtained by polymerization upon irradiation with an active energy ray preferably selected from ultraviolet rays (paragraph [0065-0066]).
Before the effective filing date of the claimed invention, it would have been obvious to select the ultraviolet rays of Kishioka 970 as the irradiation source to polymerize the acrylic polymer of Kishioka 452. The motivation for doing so would have been that ultraviolet rays are the preferred active energy ray used to prepare acrylic-based pressure-sensitive adhesives.
With regard to the content of specific organic particles:
Lee discloses adhesive films for an optical display, wherein the adhesive comprises core-shell particles (paragraph [0003]). Lee further discloses that the core-shell particles are comprised of a composition inclusive of organic compounds (paragraph [0014]). Said core-shell particles comprised of a composition inclusive of organic compounds is construed to meet the organic particles recited by claim 6.
Lee teaches that the inclusion of core-shell particles enables the adhesive film to absorb external-impacts to prevent a polarizer or polarizer plate from cracking (paragraph [0031]).
Specifically regarding claim 7, Lee further discloses that said core-shell particles have an average particle diameter of about 3 µm or less (paragraph [0012]), which is inclusive of the claimed nanoparticles; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Specifically regarding claims 10-12, Lee further discloses that the core-shell particles comprise a core having a glass transition temperature of -80ºC to 0ºC and a shell having a glass transition temperature of about 50ºC to about 120ºC (paragraph [0013]).
Lee further discloses that the core-shell particles include a (meth)acrylic acid alkyl that is grafted as a shell onto a rubber core of at least a (meth)acrylic compound (paragraph [0014]).
Specifically regarding claim 14, Lee further discloses that the shell is present in an amount of 10 wt% to about 40 wt% based on a total weight of each of the core-shell particles (paragraph [0044]).
Specifically regarding claim 15, Lee further discloses that the adhesive composition includes 1 part by weight to about 90 parts by weight of the acrylic compound and about 0.15 parts by weight to about 14.5 parts by weight of the core-shell particles (paragraph [0023]), which is construed to include or overlap the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the core-shell particles of Lee into the adhesive composition of Kishioka 452. The motivation for doing so would have been to increase the impact strength of the adhesive composition.
As to the specific storage modulus and glass transition temperature properties:
Kishioka 452 teaches the same hydroxyl-containing monomer (i.e., 4-hydroxybutyl (meth)acrylate) and the same comonomer (i.e., 2-ethylhexyl(meth)acrylate) as utilized in the illustrative examples of Applicant’s original disclosure (see Specification at pages 38-46).
Furthermore, the amount of each of the hydroxy-containing monomer and comonomer disclosed by Kishioka 452 (i.e., the amount of copolymerizable monomer is ≤ 50% by weight, and the amount of alkyl (meth)acrylate is ≥ 50% by weight) is construed to encompass the amounts set forth in all of Applicant’s examples (i.e., 70:30 and 80:20 – See Table 1 at pages 44-45 of the Specification).
Furthermore, Lee encompasses the same core-shell particles required by the claims.
Since the prior art combination encompasses an embodiment that is substantially identical to the composition of the claims, one of ordinary skill in the art would readily conclude that the encompassed embodiment must have the same properties as the claimed composition inclusive of the claimed storage modulus and glass transition temperature properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Therefore, it would have been obvious to combine Kishioka 970 and Lee with Kishioka 452 to obtain the invention as specified by the instant claims.
Regarding instant claim 22:
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets have a thickness within the range of 5 to 500 μm (paragraph [0034]), which includes the thickness recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets are used for fixing composite films to a display device (paragraph [0035]).
Kishioka 452 does not explicitly disclose the haze of the adhesive sheets
However, Kishioka 970 discloses acrylic pressure-sensitive adhesive layers having a haze of preferably 3.0% or less to impart better transparency and to lessen the adverse effects on the transparency and appearances of optical products and parts using the pressure-sensitive adhesive sheets (paragraph [0106]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the pressure-sensitive adhesive sheets of Kishioka 452 have the haze prescribed by Kishioka 970. The motivation for doing so would have been to improve or maintain the transparency of optical products and parts that use the pressure-sensitive adhesive sheets.
Regarding instant claim 23:
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets have a thickness within the range of 5 to 500 μm (paragraph [0034]), which includes the thickness recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets are used for fixing composite films to a display device (paragraph [0035]).
Kishioka 452 does not explicitly disclose the haze of the adhesive sheets.
However, Kishioka 970 discloses acrylic pressure-sensitive adhesive layers having a haze of preferably 3.0% or less to impart better transparency and to lessen the adverse effects on the transparency and appearances of optical products and parts using the pressure-sensitive adhesive sheets (paragraph [0106]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the pressure-sensitive adhesive sheets of Kishioka 452 have the haze prescribed by Kishioka 970. The motivation for doing so would have been to improve or maintain the transparency of optical products and parts that use the pressure-sensitive adhesive sheets.
The prior art combination does not explicitly disclose the adhesive sheet having the requisite transparency after the film is subjected to 200% stretching, as required by the claim. However, Kishioka 970, as cited above, teaches the importance of maintaining transparency. Furthermore, the scope of the prior art combination is construed to encompass an embodiment that is substantially identical to the claims. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Alternatively, since the instant specification is silent to unexpected results, the specific amount of haze value after stretching is not considered to confer patentability to the claims. As the transparency and appearance of the pressure-sensitive adhesive sheet are variables that can be modified, among others, by the selection of an optimized acrylic pressure-sensitive adhesive encompassed by the scope of the prior art that exhibits the requisite haze value, the precise haze value would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the haze value of the pressure-sensitive adhesive sheet after 200% stretching in the prior art combination to obtain the desired transparency and appearance (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claim 26:
Kishioka 452 does not explicitly disclose the claimed additives to the adhesive composition.
However, Kishioka 970 further discloses that the acrylic polymer comprises any of known additives inclusive of antioxidants, age inhibitors, and tackifiers (paragraph [0080]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art references before him or her, to add those additives of Kishioka 970 to the adhesive composition of Kishioka 452. The motivation for doing so would have been that said additives are art recognized additives for acrylic-based pressure-sensitive adhesives. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Regarding instant claims 29-30:
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets are used for fixing composite films having various functions (e.g., conductive film, antiglare film, anti-reflective sheet, etc.) to a display device (paragraph [0035]).
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kishioka 452 in view of Kishioka 970 and Lee as evidenced by Ono as applied to claim 1 above, and further in view of Takarada et al. (US Patent Application Publication No. US 2010/0209703 A1) (Takarada).
Regarding instant claims 2-5:
Kishioka 452 in view of Kishioka 970 and Lee discloses the adhesive film formed of the adhesive composition as cited in the rejection of claim 1, above. Furthermore, the scope of the prior art is construed to encompass an embodiment that that is substantially identical to Applicant’s inventive composition, as discussed above.
Kishioka 452 in view of Kishioka 970 and Lee does not explicitly disclose the peel strength of the adhesive film.
However, Takarada discloses an adhesive sheet for an optical member (paragraph [0001]), which is analogous to the optical pressure-sensitive adhesives of the other prior art references. Takarada further discloses that an acrylic pressure-sensitive adhesive is used to form the pressure-sensitive adhesive layer (paragraph [0048]). Takarada further discloses that the pressure-sensitive adhesive sheet has a peeling force of 1 N/25 mm or more such that adhesion reliability if increased (paragraph [0041]), wherein 1 N/25 mm is approximately 100 gf/in; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to select an embodied pressure-sensitive adhesive composition within the scope of Kishioka 452 in view of Kishioka 970 and Lee that has the peel strength prescribed by Takarada. The motivation for doing so would have been to increase adhesion reliability.
While there is no disclosure in the prior art combination regarding method by which the peel strength is measured, absent evidence of criticality regarding how the peel strength is measured and given that the peel strength of the prior art combination falls within the range presently claimed, it is the Examiner's position that prior art combination meets the requirements of the instant claims.
Therefore, it would have been obvious to combine Takarada with Kishioka 452 in view of Kishioka 970 and Lee to obtain the invention as specified by the instant claims.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kishioka 452 in view of Kishioka 970 and Lee as evidenced by Ono and Sakurai as applied to claims 1 and 6 above, and further in view of Kimura et al. (US Patent No. 6,771,335) (Kimura).
Regarding instant claim 16:
Kishioka 452 in view of Kishioka 970 and Lee discloses the adhesive composition comprising organic particles as cited above.
Kishioka 970 further discloses that the acrylic pressure-sensitive adhesive has a haze of 3.0% or less (page 9, paragraph [0106]).
The prior art combination does not explicitly disclose the difference in index of refraction between the nanoparticles and the hydroxyl-group containing (meth)acrylic copolymer.
However, Kimura discloses a sheet comprising a binder resin and resin particles (col. 1, lines 64-67). Kimura teaches that the sheet has an internal haze of less than 40.0%, wherein internal haze is caused by the difference between refractive indices of the binder resin and resin particles (col. 2, lines 4-10). Kimura teaches that to satisfy such an internal haze, the refractive indices of the resin and the resin particles is preferably within 0.05 because when the difference exceeds 0.05, the internal haze is likely to increase (col. 3, lines 44-56).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to choose particles and resin within the scope of Kishioka 452 in view of Kishioka 970 and Lee that satisfy the refractive index difference prescribed by Kimura. The motivation for doing so would have been to minimize the internal haze caused by the combination of particles and resin.
Therefore, it would have been obvious to combine Kimura with Kishioka 452 in view of Kishioka 970 and Lee to obtain the invention as specified by the instant claim.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Kishioka 452 in view of Kishioka 970 and Lee as evidenced by Ono and Sakurai as applied to claim 1 above, and further in view of Ooka et al. (WIPO International Publication No. WO 2014/091927 A1 with citations taken from the provided machine translation) (Ooka).
Regarding instant claim 24:
Kishioka 452 in view of Kishioka 970 and Lee discloses the adhesive film formed of the adhesive composition as cited in the rejection of claim 1, above. Furthermore, the scope of the prior art is construed to encompass an embodiment that that is substantially identical to Applicant’s inventive composition, as discussed above.
Kishioka 452 in view of Kishioka 970 and Lee does not explicitly disclose the recovery rate of the adhesive film.
However, Ooka discloses a pressure-sensitive adhesive composition for an optical film (paragraph [0001]), wherein said pressure-sensitive adhesive film comprises an acrylic polymer having a crosslinkable functional group (paragraph [0008]) inclusive of hydroxyl groups (paragraph [0030]).
Ooka further discloses that the pressure-sensitive adhesive composition has a strain recovery rate of 50% or more such that any birefringence generated in the pressure-sensitive adhesive can be quickly eliminated to reduce any light leakage (paragraph [0024]).
While there is no disclosure in Ooka that the recovery rate is measured in the same manner as the claim, absent evidence of criticality regarding how the recovery rate is measured and given that the recovery rate in Ooka falls within the range presently claimed, it is the Examiner's position that Ooka meets the requirement of the instant claim.
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to select an embodied pressure-sensitive adhesive composition within the scope of Kishioka 452 in view of Kishioka 970 and Lee having the recovery rate prescribed by Ooka. The motivation for doing so would have been pressure-sensitive adhesive compositions having such a recovery rate quickly eliminate any birefringence generated in the adhesive such that any light leakage is reduced.
Since the instant specification is silent to unexpected results, the specific recovery is not considered to confer patentability to the claims. As the ability to eliminate a generated birefringence in the adhesive film is a variable that can be modified, among others, by the optimization of the adhesive composition, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the recovery rate of the adhesive through the particular selection of the adhesive composition within the scope of the prior art combination to obtain the desired ability to eliminate birefringence (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, it would have been obvious to combine Ooka with Kishioka 452 in view of Kishioka 970 and Lee to obtain the invention as specified by the instant claims.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Kishioka 452 in view of Kishioka 970 and Lee as evidenced by Ono as applied to claim 1 above, and further in view of Kim et al. (US Patent Application Publication No. US 2006/0035076 A1) (Kim).
Regarding instant claim 25:
Kishioka 452 in view of Kishioka 970 and Lee discloses the adhesive film formed of the adhesive composition as cited in the rejection of claim 1, above. Furthermore, the scope of the prior art is construed to encompass an embodiment that that is substantially identical to Applicant’s inventive composition, as discussed above.
Kishioka 452 in view of Kishioka 970 and Lee does not explicitly disclose the bubble generation area of the adhesive film.
However, Kim discloses an acrylic pressure sensitive adhesive for a polarizer (paragraph [0002]), which is analogous to the optical pressure-sensitive adhesives of the other prior art references. Kim further discloses that it is preferred to eliminate factors generating bubbles such as volatile components, reaction residues, etc. from a pressure sensitive adhesive before use (paragraph [0039]). Kim teaches that pressure sensitive adhesive compositions that do not generate bubbles have excellent durability (paragraph [0013]).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to eliminate factors generating bubbles such as volatile components, reaction residues, etc. from the pressure-sensitive adhesive composition of Kishioka 452 in view of Kishioka 970 and Lee as prescribed by Kim. The motivation for doing so would have been that adhesive compositions that do not produce bubbles have excellent durability.
While there is no disclosure in Kim that the bubble generation is measured in the same way as the claim, absent evidence of criticality regarding how the bubble generation is measured and given that the bubble generation of the prior art combination falls within the range presently claimed, it is the Examiner's position that prior art combination meets the requirement of the instant claim.
Therefore, it would have been obvious to combine Kim with Kishioka in view of Lee to obtain the invention as specified by the instant claim.
Claims 1, 6-8, 10-15, 17-23, and 26-30 are rejected under 35 U.S.C. 103 as being unpatentable over Kishioka 452 in view of Kishioka 970 and Hong et al. (US Patent Application Publication No. US 2005/0154140 A1) (Hong), and as evidenced by Ono and Sakurai.
Regarding instant claims 1, 6-8, 10-15, 17-21, 27-28, and 31:
Kishioka 452 discloses pressure-sensitive adhesive sheets comprising a pressure-sensitive adhesive composition composed of an acrylic copolymer (paragraph [0008]).
Kishioka 452 further discloses that the acrylic copolymer contains an alkyl (meth)acrylate as a principal component and a monomer capable of combining with the alkyl (meth)acrylate (paragraph [0013]).
Kishioka 452 further discloses that the alkyl (meth)acrylate is inclusive of 2-ethyhexyl (meth)acrylate (paragraph [0015]) (i.e., inclusive of 2-ethylhexyl acrylate).
Ono provides evidence that 2-ethylhexyl acrylate has a Tg of -85°C (paragraph [0002]).
Kishioka 452 further discloses that the monomer capable of combining with the alkyl (meth)acrylate is inclusive of 4-hydroxybutyl (meth)acrylate (paragraph [0016]).
Said 4-hydroxybutyl (meth)acrylate reads on the claimed hydroxy group-containing (meth)acrylate.
Said of 4-hydroxybutyl (meth)acrylate reads on the claimed comonomer whose homopolymer has a glass transition temperature of -150°C to 0°C.
Kishioka 452 further discloses that the monomer capable of combining with the alkyl (meth)acrylate is used in the proportion of not more than 50% by weight based on the total amount of the alkyl (meth)acrylate and the copolymerizable monomer (paragraph [0016]), i.e., the amount of copolymerizable monomer is ≤ 50% by weight, and the amount of alkyl (meth)acrylate is ≥ 50% by weight. Therefore the monomer amount ranges disclosed by Kishioka overlap or include the ranges recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Specifically regarding instant claim 19:
Kishioka 452 further discloses that the monomer capable of combining with the alkyl (meth)acrylate is inclusive of (meth)acrylic acid (paragraph [0016]), wherein (meth)acrylic acid is a monomer that comprises a carboxyl group.
Specifically regarding instant claim 20:
Kishioka 452 further discloses that the acrylic polymer composition comprises an initiator (paragraph [0018]) and a crosslinking agent (paragraph [0017]).
Specifically regarding instant claim 21:
Kishioka 452 further discloses that the acrylic polymer composition comprises a silane coupling agent (paragraph [0017]).
Specifically regarding instant claim 27:
Kishioka 452 further discloses that the adhesive sheets have a thickness of from 5 to 500 μm (paragraph [0033]), which overlaps the range recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Kishioka 452 is silent with regard to the UV radiation used to cure the adhesive composition. Kishioka 452 is silent with regard to the content of specific organic particles. Kishioka 452 is silent with regard to the storage modulus properties of the adhesive film. Kishioka 452 is silent with regard to the glass transition temperature of the adhesive composition.
With regard to the UV radiation recited by claim 28:
Kishioka 452 further discloses that the acrylic polymer is obtained by polymerization due to irradiation with radiation (paragraph [0018]).
Kishioka 452 is silent with regard to the specific UV radiation.
However, Kishioka 970 discloses an acrylic pressure-sensitive adhesive sheet (paragraph [0025]) obtained by polymerization upon irradiation with an active energy ray preferably selected from ultraviolet rays (paragraph [0065-0066]).
Before the effective filing date of the claimed invention, it would have been obvious to select the ultraviolet rays of Kishioka 970 as the irradiation source to polymerize the acrylic polymer of Kishioka 452. The motivation for doing so would have been that ultraviolet rays are the preferred active energy ray used to prepare acrylic-based pressure-sensitive adhesives.
With regard to the content of specific organic particles:
Hong discloses core-shell polymers that are useful as impact modifiers for plastic materials (paragraph [0002]). Hong further discloses that said core-shell polymers are inclusive of compositions recognized by one of ordinary skill in the art as organic (Claim 1). Hong further discloses that the core-shell polymer is a dry powder (Claim 8), which is construed to read on the organic particles of the claim 6.
Hong teaches that the particular core-shell particles of the invention are more easily distributed into a plastic material, which leads to a more impact-resistance product and also to an enhancement of optical properties (paragraph [0063]).
Specifically regarding claim 7, Hong further discloses that the particles have a size which can range from 0.05 to 5 microns (paragraph [0055]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Specifically regarding claims 10-12, Hong further discloses that the core comprises a single elastomeric phase having a Tg of from -120 to 0ºC composed polymers inclusive of polyalkyl acrylates (paragraphs [0031; 0033; 0037; 0039]).
Hong further discloses that the shell is composed of a layer of hard polymer having a Tg in the range of 40 to 150ºC composed of polymer inclusive of monomers including acryl acrylates (paragraphs [0043-0047]).
Specifically regarding claim 13, Hong illustrates that the core or shell includes two or more layers (FIGs. 1; 3-4).
Hong further discloses that the shell is composed of a layer of hard polymer having a Tg in the range of 40 to 150ºC composed of polymer inclusive of monomers including acryl acrylates (paragraphs [0043-0047]), which is construed to encompass an embodiment wherein the outer shell has the requisite composition and Tg.
Specifically regarding claim 14, Hong further disclose that the core-shell polymer particle comprises 5 to 25 weight percent of a shell (paragraph [0020; 0022]).
Specifically regarding claim 15, Hong further discloses that the core-shell particles are blended with a plastic material at a level of from 0.5 to 70 percent by weight based on the weight of the plastic material (paragraph [0059]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the invention, it would have been obvious to include the core-shell polymer of Hong into the adhesive composition of Kishioka 452. The motivation for doing so would have been to provide the adhesive composition with increased impact resistance without deteriorating optical properties.
As to the specific storage modulus and glass transition temperature properties:
Kishioka 452 teaches the same hydroxyl-containing monomer (i.e., 4-hydroxybutyl (meth)acrylate) and the same comonomer (i.e., 2-ethylhexyl(meth)acrylate) as utilized in the illustrative examples of Applicant’s original disclosure (see Specification at pages 38-46).
Furthermore, the amount of each of the hydroxy-containing monomer and comonomer disclosed by Kishioka 452 (i.e., the amount of copolymerizable monomer is ≤ 50% by weight, and the amount of alkyl (meth)acrylate is ≥ 50% by weight) is construed to encompass the amounts set forth in all of Applicant’s examples (i.e., 70:30 and 80:20 – See Table 1 at pages 44-45 of the Specification).
Furthermore, Lee encompasses the same core-shell particles required by the claims.
Since the prior art combination encompasses an embodiment that is substantially identical to the composition of the claims, one of ordinary skill in the art would readily conclude that the encompassed embodiment must have the same properties as the claimed composition inclusive of the claimed storage modulus and glass transition temperature properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Therefore, it would have been obvious to combine Kishioka 970 and Lee with Kishioka 452 to obtain the invention as specified by the instant claims.
Regarding instant claim 22:
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets have a thickness within the range of 5 to 500 μm (paragraph [0034]), which includes the thickness recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets are used for fixing composite films to a display device (paragraph [0035]).
Kishioka 452 does not explicitly disclose the haze of the adhesive sheets.
However, Kishioka 970 discloses acrylic pressure-sensitive adhesive layers having a haze of preferably 3.0% or less to impart better transparency and to lessen the adverse effects on the transparency and appearances of optical products and parts using the pressure-sensitive adhesive sheets (paragraph [0106]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the pressure-sensitive adhesive sheets of Kishioka 452 have the haze prescribed by Kishioka 970. The motivation for doing so would have been to improve or maintain the transparency of optical products and parts that use the pressure-sensitive adhesive sheets.
Regarding instant claim 23:
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets have a thickness within the range of 5 to 500 μm (paragraph [0034]), which includes the thickness recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets are used for fixing composite films to a display device (paragraph [0035]).
Kishioka 452 does not explicitly disclose the haze of the adhesive sheets.
However, Kishioka 970 discloses acrylic pressure-sensitive adhesive layers having a haze of preferably 3.0% or less to impart better transparency and to lessen the adverse effects on the transparency and appearances of optical products and parts using the pressure-sensitive adhesive sheets (paragraph [0106]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the pressure-sensitive adhesive sheets of Kishioka 452 have the haze prescribed by Kishioka 970. The motivation for doing so would have been to improve or maintain the transparency of optical products and parts that use the pressure-sensitive adhesive sheets.
The prior art combination does not explicitly disclose the adhesive sheet having the requisite transparency after the film is subjected to 200% stretching, as required by the claim. However, Kishioka 970, as cited above, teaches the importance of maintaining transparency. Furthermore, the scope of the prior art combination is construed to encompass an embodiment that is substantially identical to the claims. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Alternatively, since the instant specification is silent to unexpected results, the specific amount of haze value after stretching is not considered to confer patentability to the claims. As the transparency and appearance of the pressure-sensitive adhesive sheet are variables that can be modified, among others, by the selection of an optimized acrylic pressure-sensitive adhesive encompassed by the scope of the prior art that exhibits the requisite haze value, the precise haze value would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the haze value of the pressure-sensitive adhesive sheet after 200% stretching in the prior art combination to obtain the desired transparency and appearance (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claim 26:
Kishioka 452 does not explicitly disclose the claimed additives to the adhesive composition.
However, Kishioka 970 further discloses that the acrylic polymer comprises any of known additives inclusive of antioxidants, age inhibitors, and tackifiers (paragraph [0080]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art references before him or her, to add those additives of Kishioka 970 to the adhesive composition of Kishioka 452. The motivation for doing so would have been that said additives are art recognized additives for acrylic-based pressure-sensitive adhesives. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Regarding instant claims 29-30:
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets are used for fixing composite films having various functions (e.g., conductive film, antiglare film, anti-reflective sheet, etc.) to a display device (paragraph [0035]).
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kishioka 452 in view of Kishioka 970 and Hong as evidenced by Ono as applied to claim 1 above, and further in view of Takarada.
Regarding instant claims 2-5:
Kishioka 452 in view of Kishioka 970 and Hong discloses the adhesive film formed of the adhesive composition as cited in the rejection of claim 1, above. Furthermore, the scope of the prior art is construed to encompass an embodiment that that is substantially identical to Applicant’s inventive composition, as discussed above.
Kishioka 452 in view of Kishioka 970 and Hong does not explicitly disclose the peel strength of the adhesive film.
However, Takarada discloses an adhesive sheet for an optical member (paragraph [0001]), which is analogous to the optical pressure-sensitive adhesives of the other prior art references. Takarada further discloses that an acrylic pressure-sensitive adhesive is used to form the pressure-sensitive adhesive layer (paragraph [0048]). Takarada further discloses that the pressure-sensitive adhesive sheet has a peeling force of 1 N/25 mm or more such that adhesion reliability if increased (paragraph [0041]), wherein 1 N/25 mm is approximately 100 gf/in; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to select an embodied pressure-sensitive adhesive composition within the scope of Kishioka 452 in view of Kishioka 970 and Hong that has the peel strength prescribed by Takarada. The motivation for doing so would have been to increase adhesion reliability.
While there is no disclosure in the prior art combination regarding method by which the peel strength is measured, absent evidence of criticality regarding how the peel strength is measured and given that the peel strength of the prior art combination falls within the range presently claimed, it is the Examiner's position that prior art combination meets the requirements of the instant claims.
Therefore, it would have been obvious to combine Takarada with Kishioka 452 in view of Kishioka 970 and Hong to obtain the invention as specified by the instant claims.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kishioka 452 in view of Kishioka 970 and Hong as evidenced by Ono and Sakurai as applied to claims 1 and 6 above, and further in view of Kimura.
Regarding instant claim 16:
Kishioka 452 in view of Kishioka 970 and Hong discloses the adhesive composition comprising organic particles as cited above.
Kishioka 970 further discloses that the acrylic pressure-sensitive adhesive has a haze of 3.0% or less (page 9, paragraph [0106]).
The prior art combination does not explicitly disclose the difference in index of refraction between the nanoparticles and the hydroxyl-group containing (meth)acrylic copolymer.
However, Kimura discloses a sheet comprising a binder resin and resin particles (col. 1, lines 64-67). Kimura teaches that the sheet has an internal haze of less than 40.0%, wherein internal haze is caused by the difference between refractive indices of the binder resin and resin particles (col. 2, lines 4-10). Kimura teaches that to satisfy such an internal haze, the refractive indices of the resin and the resin particles is preferably within 0.05 because when the difference exceeds 0.05, the internal haze is likely to increase (col. 3, lines 44-56).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to choose particles and resin within the scope of Kishioka 452 in view of Kishioka 970 and Hong that satisfy the refractive index difference prescribed by Kimura. The motivation for doing so would have been to minimize the internal haze caused by the combination of particles and resin.
Therefore, it would have been obvious to combine Kimura with Kishioka 452 in view of Kishioka 970 and Hong to obtain the invention as specified by the instant claim.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Kishioka 452 in view of Kishioka 970 and Hong as evidenced by Ono and Sakurai as applied to claim 1 above, and further in view of Ooka.
Regarding instant claim 24:
Kishioka 452 in view of Kishioka 970 and Hong discloses the adhesive film formed of the adhesive composition as cited in the rejection of claim 1, above. Furthermore, the scope of the prior art is construed to encompass an embodiment that that is substantially identical to Applicant’s inventive composition, as discussed above.
Kishioka 452 in view of Kishioka 970 and Hong does not explicitly disclose the recovery rate of the adhesive film.
However, Ooka discloses a pressure-sensitive adhesive composition for an optical film (paragraph [0001]), wherein said pressure-sensitive adhesive film comprises an acrylic polymer having a crosslinkable functional group (paragraph [0008]) inclusive of hydroxyl groups (paragraph [0030]).
Ooka further discloses that the pressure-sensitive adhesive composition has a strain recovery rate of 50% or more such that any birefringence generated in the pressure-sensitive adhesive can be quickly eliminated to reduce any light leakage (paragraph [0024]).
While there is no disclosure in Ooka that the recovery rate is measured in the same manner as the claim, absent evidence of criticality regarding how the recovery rate is measured and given that the recovery rate in Ooka falls within the range presently claimed, it is the Examiner's position that Ooka meets the requirement of the instant claim.
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to select an embodied pressure-sensitive adhesive composition within the scope of Kishioka 452 in view of Kishioka 970 and Hong having the recovery rate prescribed by Ooka. The motivation for doing so would have been pressure-sensitive adhesive compositions having such a