DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 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 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…”
Furthermore, the original disclosure does not contain support for the limitation “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.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4, 6, 11-18, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al (US 2019/0161650) in view of Huang et al (US 2012/0172477).
With regards to claims 1 and 14, Jozuka teaches an adhesive article (title) comprising: a substrate layer (0160-which is understood to inherently have a first major surface and a second major surface) and a layer of pressure sensitive adhesive disposed on at least a portion of the first major surface of the substrate layer (0160), wherein the pressure sensitive adhesive comprises a UV- cured composition of a curable composition (0078; 0097). Said adhesive comprises (a) a polymerizable (meth)acrylate-based mixture (0078); (b) a polymerizable aromatic (meth)acrylate oligomer (0148); and (c) at least one UV initiator (0103). Said layer is taught to be transparent (0040)-herein understood to read on the claimed “optically clear” limitation. Jozuka further teaches the composition may contain a plasticizer in amounts up to 30wt% (0172). The adhesive may be placed between two substrates (0202+).
Jozuka is relied upon as above, but does not teach the composition should comprise the claimed “liquid flame retarding agent”. However, Huang teaches an adhesive article comprising: a substrate layer with a first major surface and a second major surface (0038); and a layer of pressure sensitive adhesive disposed on at least a portion of the first major surface of the substrate layer, wherein the pressure sensitive adhesive comprises a UV-cured composition of a curable composition comprising: a
polymerizable (meth)acrylate-based mixture (abstract); a polymerizable aromatic (meth)acrylate
oligomer (abstract; 0017); and at least one UV initiator (abstract; 0026). The composition may further comprise a phosphate plasticizer (0032-0034) which improves the flamer resistance of the composition (0034). Such phosphate plasticizers include aryl phosphates (0031+). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the aryl phosphate plasticizers disclosed in Huang as the plasticizers disclosed in Jozuka. The motivation for doing so would have been said plasticizers have the additional benefit of improving the fire resistance of the composition.
With regards to the limitation that the UV-cured composition "has increased flame retarding
properties compared to an identical adhesive article wherein the pressure sensitive adhesive comprises a UV-cured composition comprising: the polymerizable (meth)acrylate-based mixture; and at least one UV initiator," wherein increased flame retarding properties are measured by MCC (Micro Combustion Calorimetry), using Method A of ASTM D7309-13, where 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 lower Pyrolysis Residue, the adhesive of Jozuka in view of Huang is understood to meet said limitation since the fire retarding improving plasticizer would be expected to improve the flame retarding properties of the composition relative to a composition without said agent.
With regards to claim 2, Jozuka teaches the substrate layer may comprises a polymeric film comprising polyester (0011)
With regards to claim 3, Jozuka teaches the polymerizable (meth)acrylate-based mixture preferably comprises a partially polymerized mixture of (meth)acrylate-based monomers (0098)-herein understood to read on the claimed “coatable syrup”.
With regards to claim 4, Jozuka teaches the mixture of (meth)acrylate-based monomers comprises at least one alkyl (meth)acrylate monomer with 2-20 carbon atoms (043+) and optionally a (meth)acrylic acid (0050), (meth)acrylamide (0055), or styrene (0063) (herein understood to read on the claimed “reinforcing monomer”).
With regards to claim 6, Jozuka does not teach the composition must comprise a halogen; thus, Jozuka is understood to teach a “pressure sensitive adhesive layer (which) is halogen-free.”
With regards to claim 11, the examiner takes the position that the adhesive article of Jozuka iv view of Huang has a peel adhesion of at least 60% of the peel adhesion of an e identically-prepared pressure sensitive adhesive layer which comprises the (meth)acrylate-based mixture; and at least one UV initiator.
With regards to claim 12, Jozuka teaches the adhesive article may further comprise a release liner in contact with the layer of pressure sensitive adhesive (0156).
With regards to claims 13 and 21, Jozuka teaches the pressure sensitive adhesive comprises 100 parts by weigh of the polymerizable (meth)acrylate-based mixture, up to 30% plasticizer, and preferably 20 parts by weight of less of polymerizable aromatic (meth)acrylate oligomer (0154)). Said teachings are understood to read on the claimed 4-13 wt% of oligomer and 61-75wt% polymerizable (meth)acrylate-based mixture), and liquid flame retarding agent, 18-29 wt% of the liquid flame retarding agent.
With regards to claim 15, Jozuka teaches the substrate may comprise an electronic device such as vehicle navigation systems, and digital cameras (0202)-herein understood to read on the claimed “ external surface of a device or a vehicle.”
With regards to claim 16, Jozuka teaches the substrate may comprise a primer treated surface (0171+)-herein understood to read on the claimed “film-covered surface, a painted surface, or a coated surface.”
With regards to claim 17, Jozuka teaches the polymerizable (meth)acrylate-based mixture preferably comprises a partially polymerized mixture of (meth)acrylate-based monomers (0098)-herein understood to read on the claimed “coatable syrup”.
With regards to claim 18, Jozuka teaches the mixture of (meth)acrylate-based monomers comprises at least one alkyl (meth)acrylate monomer with 2-20 carbon atoms (043+) and optionally a (meth)acrylic acid (0050), (meth)acrylamide (0055), or styrene (0063) (herein understood to read on the claimed “reinforcing monomer”).
Claim(s) 7 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al (US 2019/0161650) in view of Huang et al (US 2012/0172477), as applied to claims above, and further in view of Chase (US 2005/0089290
Jozuka in view of Huang is relied upon as above, but does not teach the (meth)acrylate oligomers taught therein should be modified with phosphorus. However, Chase teaches that phosphorous-containing methacrylate oligomers are known in the art be flame retardant materials (0043). Thus, it would have been obvious to functionalize the oligomer material of Jozuka with phosphorous to obtain better flame retardant.
With regards to the claimed aryl phosphate, Huang teaches the polymerizable aromatic (meth)acrylate oligomer comprises one or more phosphorous-modified (meth)acrylate oligomers. Furthermore, Huang teaches the phosphate plasticizer (herein understood to read on the claimed "the liquid flame retarding agent") may comprise a phenylene phosphate (0031+) herein understood to read on the claimed aryl phosphate.
Claim(s) 8-10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al (US 2019/0161650) in view of Huang et al (US 2012/0172477), as applied to claims above, and further in view of "CN2601"(https://www.ulprospector.com/en/na/Adhesives/Detail/1139/126599/CN2601)
Jozuka in view of Huang is relied upon as above but does not teach the polymerizable aromatic (meth)acrylate oligomer comprises a halogen-modified polymerizable aromatic (meth)acrylate oligomer. However, CN2601 teaches said compound is a brominated aromatic acrylate oligomer. CN2601 is a high refractive index product that functions as a flame retardant component in radiation-curable coatings. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add CN2601 to the composition of Jozuka in order to improve its flame retardance. With regards to the formulas of claims 9 10, and 20, CN 2601 is known to read on the claimed formulas. With regards to the claimed liquid flame retarding agent comprising a halogenated tri- alkyl phosphate ester, Huang teaches the phosphate may comprise such alkyl phosphate ester (0031). It would have been obvious to the skilled artisan to utilize halogenated species of said plasticizer as such halogenated derivatives are known in the art to have improve flame retardance.
Response to Arguments
Applicant's arguments filed 6/16/2026 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 (all pending claims) 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 because there no support in the original disclosure for the claimed composition wherein the 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...' and for not containing support for the limitation "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." Applicants are puzzled by these rejections noting the Comparative Examples either do not have the liquid flame retardant or do not have the aromatic (meth)acrylate oligomer, or both (as in the case of C1 and C2) and that all of the Examples, as shown in Table 6 have lower heat release capacity, lower specific heat release, and a lower pyrolysis residue. Said argument is noted but is not persuasive. Applicant seemingly concedes the claimed limitations are not explicitly supported by the original disclosure and does not argue the claimed limitations are inherent to the claimed composition. Applicant seemingly argues the examples demonstrate the claimed limitations are implicitly supported by the examples. Said argument is not persuasive, however, as said argument is not commensurate in scope with the pending claims. While the examples may be relied upon for support, Applicant may not extend said results beyond what is shown and extrapolate said results to other, more broadly claimed, constructions. Thus, the rejection is maintained.
Rejections Under 35 U.S.C. § 103
With regards to the rejection of Claim(s) 1-4, 6, 11-18, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al (US 2019/0161650) in view of Huang et al (US 2012/0172477), Applicants argues said combination is incorrect. Applicants call special attention to the claimed "optically clear" limitation. Said argument is noted but is not persuasive as applicant fails to point out how the examiner erred in determining the adhesive of Jozuka read on said limitations.
Furthermore, the examiner relies upon Jozuka to teach the composition may contain a plasticizer (0155) used by “typical methods”. Paragraph 0172 was relied upon to demonstrates typical amounts of plasticizers in compositions is up to 30wt%. Thus, the examiner disagrees with Applicant that said disclosure is directed to the resin film having up to 30% by weight of plasticizer or other additives, not the adhesive. Furthermore, said argument is not persuasive as said argument is not commensurate in scope with the pending claims; the claims do not limit the amount of plasticizer/flame retarding agent that is present. Thus, applicant’s arguments are not persuasive and the claims remain rejected for reasons of record.
With regards to the rejection of Claim(s) 7 and 19 under 35 U.S.C. 103 as being unpatentable over Jozuka et al (US 2019/0161650) in view of Huang et al (US 2012/0172477), as applied to claims above, and further in view of Chase (US 2005/0089290), applicant argues Chase contains no teachings to overcome the lack in the combination of Jozuka and Huang. Therefore claims 7 and 19 are patentable over the combination of Jozuka, Huang, and Chase for at least the reasons give above. Said argument is noted but is not persuasive for the reasons noted above.
With regards to the rejections of Claim(s) 8-10 and 20 under 35 U.S.C. 103 as being unpatentable over Jozuka et al (US 2019/0161650) in view of Huang et al (US 2012/0172477), as applied to claims above, and further in view of "CN2601" (https://www.uilprospector.com/en/na/Adhesives/Detail/I139/126599/CN260]), Applicant argues "CN2601" contains no teachings to overcome the lack in the combination of Jozuka and Huang. Therefore claims 8-10 and 20 are patentable over the combination of Jozuka, Huang, and "CN2601" for at least the reasons give above. Said argument is noted but is not persuasive for the reasons noted above.
Thus, applicant’s arguments are not persuasive and the claims remain rejected for the reasons set forth herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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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
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