DETAILED ACTION
This is an Office action based on application number 17/682,818 filed 28 February 2022, which is a continuation of US Application numbers 16/933,853 filed 20 July 2020 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, KR10-2014-0151571 filed 3 November 2014, and KR10-2014-0150799 filed 1 November 2014. Claims 1-7, 9-12, 14, and 16-29 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 22 August 2025 has been entered.
Claims 1, 6-7, 9-10, 12, 14, 16-18, 21-23, and 26-28, 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. US 2012/0329970 A1) (Kishioka 970) 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, 6-7, 9-10, 12, 14, 16, and 21:
Kishioka 452 discloses a pressure-sensitive adhesive sheets formed from a pressure-sensitive adhesive comprising at least an acrylic polymer (paragraph [0008]), wherein said acrylic polymer is a copolymer containing an alkyl (meth)acrylate as a principal component and a copolymerizable monomer (paragraph [0013]).
Kishioka 452 discloses that the alkyl (meth)acrylate monomer is inclusive of 2-ethylhexyl (meth)acrylate (paragraphs [0014-0015] and [0040]) (i.e., inclusive of ethylhexyl acrylate) (i.e., a branched alkyl (meth)acrylate).
Ono provides evidence that 2-ethylhexyl acrylate has a Tg of -85°C (paragraph [0002]).
Said 2-ethylhexyl (meth)acrylate of Kishioka 452 is construed to meet the claimed comonomer whose homopolymer has a glass transition temperature of about -150°C to about 0°C selected from branched alkyl (meth)acrylate monomers.
Kishioka 452 further discloses that the copolymerizable monomer is inclusive of at least 4-hydroxylbutyl (meth)acrylate (paragraph [0016]), which is construed to meet the claimed hydroxyl-group containing (meth)acrylate monomer.
Kishioka 452 further discloses that the pressure-sensitive adhesive composition comprises a crosslinking agent (paragraph [0017]) and a polymerization initiator (paragraph [0018]).
Specifically regarding claim 12, Kishioka 452 further discloses that the copolymerizable monomers (i.e., those selected from 4-hydroxybutyl (meth)acrylate and/or (meth)acrylic acid) are 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 monomers is ≥ 50% by weight. The monomer amount ranges of Kishioka 452 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 claim 14, Kishioka 452 further discloses that the copolymerizable monomer may be selected from (meth)acrylic acid (paragraph [0016]), which is construed to meet the claimed carboxyl group-containing monomer.
Specifically regarding claim 16, Kishioka 452 further discloses that the pressure-sensitive adhesive composition comprises a silane coupling agent (paragraph [0017]).
Kishioka 452 is silent with regard to the UV curing specifically recited by claim 21. Kishioka 452 is silent with regard to a content of 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 property of the adhesive composition.
With regard to the UV curing of claim 21:
Kishioka 452 discloses that the acrylic polymer of the pressure-sensitive composition is obtained by polymerization by 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 (paragraph [0025]), wherein the acrylic polymer is obtained by polymerization by irradiation with an active energy ray preferably selected from ultraviolet rays (paragraphs [0065-0066]), which is construed to meet the claimed limitation of the adhesive film is cured by UV irradiation.
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 references before him or her, to polymerize the acrylic polymer of Kishioka 452 with the UV irradiation taught by Kishioka 970. The motivation for doing so would have been that Kishioka 970 teaches that ultraviolet rays are the preferred irradiation source for the polymerization of acrylic polymers used in the production of pressure-sensitive adhesive compositions.
As to the claimed content of 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 claim 9, 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]).
The Tg ranges for the core and shell polymers disclosed by Lee are construed meet the requisite relationship of Tg(c)<Tg(s) recited by claim 9.
Specifically regarding claim 10, 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 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 include the core-shell particles of Lee into the adhesive composition of Lee. The motivation for doing so would have been to increase the impact strength of the adhesive composition.
As to the specific storage modulus properties of the claims:
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 38-47).
Further, the amount of each of the hydroxyl-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 monomers is ≥ 50% by weight, is inclusive of the amounts used in each of the working examples of Applicant’s original disclosure, i.e., 70:30 and 80:20 2-ethylhexyl acrylate to 4-hydroxybutyl acylate (see Specification at pages 44-45 – Table 1).
Kishioka 452 in view of Kishioka 970 discloses the same UV irradiation polymerization as required by Applicant’s claims.
Kishioka 452 in view of 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. 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 properties.
Support for such a position comes from Applicant’s original disclosure, which illustrates that a composition comprising a monomer mixture of 2-ethylhexyl acrylate (EHA) 4-hydroxybutyl acrylate (HBA) in amounts of 70:30 and 80:20; nanoparticles; and a silane coupling agent produces an adhesive having the requisite modulus properties (Specification at pages 38-47 and Table 1, wherein all the examples having storage modulus values over the range of -20ºC and 80ºC meeting the requisite slope).
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 17:
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets have a thickness within a range from 5 to 500 μm (paragraph [0043]); 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 does not explicitly disclose the claimed haze.
However, Kishioka 970 discloses an acrylic pressure-sensitive layer having a haze of 3.0% or less such that said layer has better transparency and less adversely affects the transparency and optical parts using the pressure-sensitive adhesive sheet (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 references before him or her, to ensure that the pressure-sensitive adhesive sheet of Kishioka 452 has the haze value prescribed by Kishioka 970. The motivation for doing so would have been to impart transparency to the adhesive sheet of Kishioka 452 so that it is useful in the production of optical products.
Therefore, it would have been obvious to combine Kishioka 970 with Kishioka 452 to obtain the invention as specified by the instant claim.
Regarding instant claim 18:
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets have a thickness within a range from 5 to 500 μm (paragraph [0043]); 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 does not explicitly disclose the claimed haze.
However, Kishioka 970 discloses an acrylic pressure-sensitive layer having a haze of 3.0% or less such that said layer has better transparency and less adversely affects the transparency and optical parts using the pressure-sensitive adhesive sheet (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 references before him or her, to ensure that the pressure-sensitive adhesive sheet of Kishioka 452 has the haze value prescribed by Kishioka 970. The motivation for doing so would have been to impart transparency to the adhesive sheet of Kishioka 452 so that it is useful in the production of optical products.
Neither Kishioka 452 nor Kishioka 970 explicitly discloses 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).
Therefore, it would have been obvious to combine Kishioka 970 with Kishioka 452 to obtain the invention as specified by the instant claim.
Regarding instant claim 22:
Kishioka 452 further discloses that the pressure-sensitive adhesive sheets are preferably used for fixing composite films having various functions (e.g., antiglare and anti-reflective) to a display device. Such composite films having various functions attached to a display device are construed to meet the claimed display member comprising an optical film.
Regarding instant claims 23 and 26-28:
Kishioka 452 discloses a pressure-sensitive adhesive sheets formed from a pressure-sensitive adhesive comprising at least an acrylic polymer (paragraph [0008]), wherein said acrylic polymer is a copolymer containing an alkyl (meth)acrylate as a principal component and a copolymerizable monomer (paragraph [0013]).
Kishioka 452 discloses that the alkyl (meth)acrylate monomer is inclusive of 2-ethylhexyl (meth)acrylate (paragraph [0014]) (i.e., inclusive of 2-ethylhexyl acrylate).
Ono provides evidence that 2-ethylhexyl acrylate has a Tg of -85°C (paragraph [0002]).
Said 2-ethylhexyl (meth)acrylate of Kishioka 452 is construed to meet the claimed comonomer whose homopolymer has a glass transition temperature of about -150°C to about 0°C selected from branched alkyl (meth)acrylate monomers.
Kishioka 452 further discloses that the copolymerizable monomer is inclusive of at least 4-hydroxylbutyl (meth)acrylate (paragraph [0016]), which is construed to meet the claimed hydroxyl-group containing (meth)acrylate monomer.
Kishioka 452 further discloses that the pressure-sensitive adhesive composition comprises a crosslinking agent (paragraph [0017]) and a polymerization initiator (paragraph [0018]).
Specifically regarding claim 28, Kishioka 452 further discloses that the copolymerizable monomers (i.e., those selected from 4-hydroxybutyl (meth)acrylate) are 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 monomers is ≥ 50% by weight. The monomer amount ranges of Kishioka 452 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.
Kishioka 452 is silent with regard to the UV curing specifically recited by claim 21. Kishioka 452 is silent with regard to a content of 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 property of the adhesive composition.
With regard to the UV curing:
Kishioka 452 discloses that the acrylic polymer of the pressure-sensitive composition is obtained by polymerization by 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 (paragraph [0025]), wherein the acrylic polymer is obtained by polymerization by irradiation with an active energy ray preferably selected from ultraviolet rays (paragraphs [0065-0066]), which is construed to meet the claimed limitation of the adhesive film is cured by UV irradiation.
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 references before him or her, to polymerize the acrylic polymer of Kishioka 452 with the UV irradiation taught by Kishioka 970. The motivation for doing so would have been that Kishioka 970 teaches that ultraviolet rays are the preferred irradiation source for the polymerization of acrylic polymers used in the production of pressure-sensitive adhesive compositions.
As to the claimed content of 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 26.
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]).
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 include the core-shell particles of Lee into the adhesive composition of Lee. 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 of the claims:
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 38-47).
Further, the amount of each of the hydroxyl-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 monomers is ≥ 50% by weight, is inclusive of the amounts used in each of the working examples of Applicant’s original disclosure, i.e., 70:30 and 80:20 2-ethylhexyl acrylate to 4-hydroxybutyl acylate (see Specification at pages 44-45 – Table 1).
Kishioka 452 in view of Kishioka 970 discloses the same UV irradiation polymerization as required by Applicant’s claims.
Kishioka 452 in view of 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. 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 properties.
Support for such a position comes from Applicant’s original disclosure, which illustrates that a composition comprising a monomer mixture of 2-ethylhexyl acrylate (EHA) 4-hydroxybutyl acrylate (HBA); nanoparticles; and a silane coupling agent produces an adhesive having the requisite modulus properties (Specification at pages 38-47 and Table 1, wherein all the examples having storage modulus values over the range of -20ºC and 80ºC meeting the requisite slope).
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.
Claims 2-5 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Kishioka 452 in view of Kishioka 970 and Lee as applied to claims 1 and 23 above and as evidenced by Ono, and further in view of Takarada et al. (US Patent Application Publication No. US 2010/0209703 A1) (Takarada).
Regarding instant claims 2-5 and 24-25:
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 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 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 11 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 claims 1 and 6 above, and further in view of Kimura et al. (US Patent No. 6,771,335) (Kimura).
Regarding instant claim 11:
Kishioka 452 in view of Kishioka 970 and Lee in view of 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 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.
Claims 19 and 29 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 claims 1 and 23 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 claims 19 and 29:
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 further discloses that the pressure-sensitive adhesive sheets have a thickness within a range from 5 to 500 μm (paragraph [0043]); 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 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).
Alternatively, 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 properties. Support for such a position comes from Applicant’s original disclosure, which illustrates that a composition comprising a monomer mixture of 2-ethylhexyl acrylate (EHA) 4-hydroxybutyl acrylate (HBA) in amounts of 70:30 and 80:20; nanoparticles; and a silane coupling agent produces an adhesive having the requisite recovery rate (Specification at pages 38-47 and Table 1, wherein all the examples demonstrate the requisite recovery rate).
Similarly, the prior art combination encompasses an adhesive composition comprising a monomer mixture of 2-ethylhexyl acrylate and 4-hydroxybutyl acrylate of Kishioka 452; the nanoparticles of Lee; and a silane coupling agent.
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 20 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 20:
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 452 in view of Kishioka 970 and Lee to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant first relies upon previous submitted arguments that because Kishioka 452 discloses a crosslinked PSA that has a sol component with a specific molecular weight and a specific portion of a low molecular weight, which was obtained by a specific adhesive that should include an acrylic polymer a silane coupling agent, and a crosslinking agent, a specific sol component, and the use of a specific process that includes solvents to remove the low-molecular weight component prior to crosslinking or reduce the formation of the low-molecular weight component, then the adhesive film of Kishioka 452 should not inherently or necessarily have the presently claimed properties.
In response to these arguments, the Examiner maintains the position that Arguments presented by Applicant cannot take the place of evidence in the record. See MPEP §2145(I). In the instant case, arguments merely stating that the use of solvents to remove or reduce the formation of low-molecular weight components and the inclusion of a sol component would inevitably change the properties of the adhesive to those outside of the claims is conclusory and not supported by evidence. If Applicant has evidence that the use of a solvent to remove or reduce the formation of low-molecular weight components would inevitably change the composition such that it does not meet the claimed properties, Applicant should present such evidence.
Applicant goes on to provide Exhibit-1 and Exhibit-2 as evidence supporting their position traversing the prior art rejections.
First, in Exhibit-1 Applicant provides an excerpt from Handbook of Pressure Sensitive Adhesive Technology to allegedly evidence that the claimed storage modulus and average slope is necessarily changed when the molecular weight profile of the adhesive is changed by removing or reducing the low-molecular weight components.
Applicant’s argument and citation Exhibit-1 are unpersuasive because they do not clearly show that for the composition of the prior art combination, specifically, that the removal or reduction of the low-molecular weight components will always and necessarily place the scope of the prior art outside that of the claimed composition.
Further, in Exhibit-2, Applicant cites a publication in Polymer(Korea) that allegedly discloses, among others, how modulus of an adhesive may vary significantly depending on the compositions and the content of polymers.
Applicant’s argument and citation of Exhibit-2 are unpersuasive. Similar to Exhibit-1, above, the arguments and citation do not clearly show that the composition of the prior art combination, which, as mapped above, is substantially identical to that of the claimed composition, is patentably different from Applicant’s claimed invention in such a way that they do not share or overlap in the claimed properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 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, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAM/Examiner, Art Unit 1788 10/14/2025
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788