DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/22/2026 has been entered.
Claim Rejections - 35 USC § 112
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 1-4 and 6-21 (all pending claims) are 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. There is no antecedent support for the term “the comparative properties”
Furthermore, said claims are held to be indefinite because it is unclear what is meant by “the comparative properties are measured by MCC using Method A of ASTM D7309-13, wherein the identical adhesive without the liquid flame retarding agent and without the polymerizable aromatic (meth)acrylate oligomer has a higher heat release capacity, a higher specific heat release, and a low pyrolysis residue.”
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 1-4 and 6-21 (all pending claims) 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. Specifically, there is no support in the original disclosure for the claimed composition “wherein the UV-cured composition is an optically clear pressure sensitive adhesive having a luminous transmission of visible light of at least 90% and a haze of less than 10% when compared to an comparative pressure sensitive adhesive without the liquid flame retarding agent, without the polymerizable aromatic (meth)acrylate oligomer, or both….….” adhesive “has increased flame retarding properties compared to an identically-prepared adhesive without the liquid flame retarding agent and without the polymerizable aromatic (meth)acrylate oligomer…”. Applicant argues said limitation is supported by page 5 lines 7-11 of the specification. While said section of the specification states “Typically, optically clear articles have a luminous transmission of visible light of at least 90%, often at least 95%, and a haze of less than 10%, often less than 5%, or even less than 2%.” However, said section does not teach that the claimed adhesive should possess a luminous transmission or haze “when compared to an comparative pressure sensitive adhesive without the liquid flame retarding agent, without the polymerizable aromatic (meth)acrylate oligomer…” Applicant further points page 8 line 24 to page 9 line 29, but said disclosure also fails to teach the claimed adhesive should possess a luminous transmission or haze “when compared to an comparative pressure sensitive adhesive without the liquid flame retarding agent, without the polymerizable aromatic (meth)acrylate oligomer…”
Furthermore, said claims are further held to be rejected because the original disclosure does not contain support for the limitation “the comparative properties are measured by MCC using Method A of ASTM D7309-13, wherein the identical adhesive without the liquid flame retarding agent and without the polymerizable aromatic (meth)acrylate oligomer has a higher heat release capacity, a higher specific heat release, and a low pyrolysis residue.”
Applicant argues the amendments are supported in the examples section on page 17, lines 16-28. Said section states the flammability of the adhesive was measured by MCC using Method A of ASTM D7309-13 and that specific heat release, heat release capacity, and pyrolysis residue was measured, but fails to explicitly or implicitly suggest “the identical adhesive without the liquid flame retarding agent and without the polymerizable aromatic (meth)acrylate oligomer has a higher heat release capacity, a higher specific heat release, and a low pyrolysis residue” compared to the inventive composition.
Claims 1-4 and 6-21 (all pending claims) rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As set forth in MPEP 2164.01(a), there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” They are set forth and analyzed herein: The original disclosure fails to teach how to make the claimed adhesive article meeting the claimed luminous transmission of visible light and haze limitations.
A) The breadth of the claims-the breadth of the claims is considered extremely broad as the claims are directed to any “polymerizable (meth)acrylate based mixtures in any amount, with any liquid flame retarding agent (in any amount) and which may comprise any additional component(s) in any amounts. Said composition also is not limited with regards to how it is processed.
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(C) The state of the prior art-the state of the prior art is considered low as applicant, and a prior art search have failed to identify compositions that explicitly meet the claimed compositional, luminous transmission, and haze limitations.
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(D) The level of one of ordinary skill-the level of ordinary skill in the art is considered low. Specifically, a prior art search failed to identify parameters/variables that may be altered to have predictable effects on the optical properties of PSA acrylic compositions.
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(E) The level of predictability in the art-the level of predictability is considered low. Specifically, as noted by applicant, the claimed optical properties “are very difficult to achieve and great care is needed to achieve them.”
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(F) The amount of direction provided by the inventor-the amount of direction provided by the inventor is considered low. Specifically, the examiner cannot identify any disclosure in the specification regarding paraments/variables that could be altered in order to obtain an adhesive meeting the claimed transparency and haze limitations;
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(G) The existence of working examples-the specification contains working examples. However, the working examples are not commensurate in scope with the pending claims. Furthermore, the working examples are not instructive in terms of what variables may be altered in order to obtain the claimed transparency/haze limitation. Thus, it would be unclear to the skilled artisan how to extrapolate said results to other adhesive compositions; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure-Given the factors set forth above, the quantity of experimentation needed to make or use the invention based on the content of the disclosure is considered high.
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Response to Arguments
Applicants’ arguments filed 9/22/2026 have been fully considered but are not persuasive.
Rejections Under 35 U.S.C. § 112
With regards to the rejection of claims 1-4 and 6-21 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, Applicants state they believe that the Examiner's issue is the linkage of the properties measured to the limitation of "increased flame retarding properties" and amend claims 1 and 14 to take out the terminology "increased flame retarding properties". Said argument is noted but is not persuasive for the reasons set forth in the rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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 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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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
