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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/26/2025 has been entered. Claims 1 and 15-17 are amended; and claims 10-11 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1-17 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 12, and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 (lines 2-3), 12 (lines 3-4), and 14 (lines 3-4) recite “(meth)acrylic resin (A) comprises 40% by weight or more of a segment derived from isobutyl methacrylate” and fails to further limit the scope of independent claim 1 on which this claim is dependent. Specifically, claim 1 requires the isobutyl methacrylate to be present in amounts of 70% by weight or less whereas 40% by weight or more in claims 4, 12 and 14 allows for including isobutyl methacrylate in amounts greater than 70% by weight. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
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 1-2, 4-5, 7-9 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al (JP 2004-005540 A).
It is noted that JP 2004-005540 A is in Japanese. A copy of the machine translation into English is provided with Office action mailed 9/2/2025. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claim 1, Noguchi et al disclose in example 1, an acrylic polymer obtained by the polymerization of isooctyl acrylate and 6-hydroxyhexyl acrylate (i.e., reads on the (meth)acrylic resin in present claim 1) which reads on (meth)acrylate resin comprising 70% by weight or less of isobutyl methacrylate since 70% by weight or less includes 0% by weight. The acylate polymer has a weight average molecular weight of 1.94 million (paragraph 0075) which reads on the molecular weight of methacrylic resin in present claim 1. It is noted that there is no surfactant in the preparation process (i.e., reads on 0 parts by weight of water-soluble surfactant in present claim 1).
Noguchi et al fails to disclose in a single embodiment as in present claims (meth)acrylic resin having claimed species as a terminal group at at least one molecular end of the main chain.
However, Noguchi et al in the general disclosure teach that in preparing the acrylic polymer, a polymerization initiator may be used as necessary (paragraph 0060). Examples of thermal polymerization initiator include 2,2’-azobis[2-(2-imidazolin-2-yl)propane (paragraph 0061). Therefore, in light of the teachings in general disclosure of Noguchi et al, it would have been obvious to one skilled in art prior to the filing of present application to use 2,2’-azobis[2-(2-imidazolin-2-yl)propane as an initiator in the polymerization of acrylic monomers in example 1, of Noguchi et al, to obtain (meth)acrylic resin having imidazoline group at the molecular end of the main chain, absent evidence to the contrary.
Regarding claim 2, Noguchi et al teach that from the view point of lowering adhesive strength, the ester is preferably (meth)acrylic ester having an organic group consisting of an alkyl group having 4 or more carbon atoms such as isobutyl group. An acrylate or methacrylate having 3 or less carbon atoms such as methyl can be used in combination (paragraph 0052). It is noted that homopolymer of isobutyl methacrylate and methyl methacrylate have a Tg of 530C and 1050C, respectively. Therefore, in light of the teachings in general disclosure of Noguchi et al, it would have been obvious to one skilled in art prior to the filing of present application to prepare a copolymer comprising a combination of isobutyl methacrylate and methyl methacrylate to obtain a polymer having a Tg of 400C or more, absent evidence to the contrary.
Regarding claim 4, Noguchi et al teach that from the view point of lowering adhesive strength, the ester is preferably (meth)acrylic ester having an organic group consisting of an alkyl group having 4 or more carbon atoms such as isobutyl group and isooctyl group (paragraph 0052). Therefore, in light of the teachings in general disclosure of Noguchi et al, it would have been obvious to replace isooctyl acrylate in example 1, of Noguchi et al, with isobutyl methacrylate, for obtaining a polymer having 99.7 parts by weight of isobutyl methacrylate (i.e., reads on greater than 40% by weight of a segment derived from isobutyl methacrylate in present claim 4), absent evidence to the contrary. Alternatively, it is within the scope of one skilled in art prior to the filing of present application to prepare a copolymer comprising equal amounts of the preferred (meth)acrylate such as isobutyl methacrylate and n-butyl methacrylate, in example 1, to obtain a (meth)acrylic resin comprising greater than 40% by weight and less than 70% by weight of isobutyl methacrylate, absent evidence to the contrary.
Regarding claim 5, Noguchi et al teach that from the view point of lowering adhesive strength, the ester is preferably (meth)acrylic ester having an organic group consisting of an alkyl group having 4 or more carbon atoms such as butyl group (paragraph 0052).
Regarding claim 7, given that (meth)acrylate-based polymer has the presently claimed high molecular weight of 1.94 million, contains an imidazoline group at the end of main chain, and does not include any water-soluble surfactant, it is the Office’s position that (meth)acrylic resin, of Noguchi et al, when molded into a sheet having a thickness of 20 microns would necessarily show yield stress and have a maximum stress of 30 N/mm2 or more and an elongation at break of 50% or higher. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 8, Noguchi et al teach that attachment of the pressure sensitive layer may be performed by dissolving or dispersing an adhesive in a solvent such as toluene (paragraph 0068). It is noted that toluene has a boiling point of 1100C (i.e., reads on the organic solvent having a boiling point of 700C or higher).
Regarding claim 9, Noguchi et al teach that acrylic pressure-sensitive adhesive is excellent in transparency (paragraph 0051). Given that acrylic resin of Noguchi et al has a high molecular weight of greater than 1,000,000, an imidazoline end group in the main chain, has excellent transparency and can comprise an organic solvent having a boiling point greater than 700C, one skilled in art would have a reasonable basis to expect the acrylic resin composition, of Noguchi et al, to have the presently claimed haze value of lower than 10%, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 12, see 10e and 10h above.
Regarding claim 13, see 10f and 10h above.
Regarding claim 14, see 10e, 10h above. Additionally, it is within the scope of one skilled in art to use a combination of n-butyl methacrylate and isobutyl methacrylate in preparing the acrylic polymer in example 1 of Noguchi et al.
Regarding claim 15, see 10a-10c, 10e and 10h above.
Regarding claim 16, see 10a-10c, 10f, and 10h above.
Regarding claim 17, see 10a-10c, 10e, and 10h. Additionally, it is within the scope of one skilled in art to use a combination of n-butyl methacrylate and isobutyl methacrylate in preparing the acrylic polymer in example 1 of Noguchi et al.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al (JP 2004-005540 A) in view of Toyoshima et al (US 2006/0116468 A1).
The discussion with respect to Noguchi et al in paragraph 10 above is incorporated here by reference.
Noguchi et al are silent with respect to CV value of particle size.
However, Toyoshima et al provide a method for production of resin particles with high sphericity and even particle diameter (abstract). The acrylic resin particles neither contain a surfactant nor a suspension stabilizer (paragraph 0013). See example 5, wherein the acrylic resin particles have a CV value of particle diameter of 4% (Table 2). If a resin with a high molecular weight is used as a raw material, resin fine particles with a high molecular weight almost same as that of the resin can be obtained. In the case of using for outdoor use, the weathering resistance and coating strength are made to be remarkably excellent (paragraph 0036). The acrylic resin fine particles can be used for a variety of uses such as a seed particle for seed polymerization, adhesive, and a coating material (paragraph 0069). Therefore, in light of the teachings in Toyoshima et al, it would have been obvious to one skilled in art prior to the filing of present application to use the method of Toyoshima et al, in pulverizing acrylic resin particles of Noguchi et al, by adjusting the acrylic resin composition to contain any amount of acrylic resin (including 10% by weight) to obtain acrylic resin particles having a CV value of particle size of lower than 10%, for above mentioned advantages
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al (JP 2004-005540 A) in view of Ogle et al (US 2013/0157902 A1).
The discussion with respect to Noguchi et al in paragraph 10 above is incorporated here by reference.
Noguchi et al are silent with respect to molecular weight distribution.
However, Ogle et al teach that polymerization reactions typically generate a distribution of polymer sizes around an average value. In some cases, this heterogeneity is undesirable. The performance of even relatively small polymers such as polyacrylates goes up as the polydispersity index goes down. Increasing polymer chain length improves many physical properties (paragraph 0007). The polyacrylate polymers may be prepared by processes comprising dissolving acrylate monomers in a fluid medium comprising an olefin containing polyalcohol amide surfactant and initiating with a polymerization initiator to produce polymer having a molecular weight of at least 500,000 and a polydispersity index of about 1.25 or less (paragraph 0032). Therefore, in light of the teachings in Ogle et al, it would have been obvious to one skilled in art prior to the filing of present application to use a known method, of Ogle et al, including fluid medium comprising an olefin containing polyalcohol amide surfactant in the polymerization process of Noguchi et al, for obtaining acrylic polymer having a low polydispersity, if desired, based on the requirements in a specific application, absent evidence to the contrary.
Response to Arguments
The rejections under 35 U.S.C. 103 as set forth in paragraphs 8-10, of office action mailed 9/2/2025, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 14 below).
Applicant's arguments, filed 11/26/2025, have been fully considered but they are not persuasive. Specifically, general thrust of Applicant’s argument is that present claims recite a binder resin comprising a (meth)acrylic resin (A) wherein the resin has a specific functional group and 70% by weight or less of a segment derived from isobutyl methacrylate. By satisfying these features, the resin composition exhibits excellent decomposability at low temperatures, can provide a molded article having high strength, and enables an increase in the number of layers and thinning so as to enable production of a ceramic laminate having excellent properties.
In response, comparative examples include isobutyl methacrylate in amounts of less than 70% by weight as in present claims and do not exhibit excellent properties as alleged. Additionally, the resin is combined with a plasticizer which is not the same in inventive examples and comparative examples. Hence, even if there is showing of expected results, it is not clear such showing can necessarily be attributed to the (meth)acrylic resin and not the different kind of plasticizer used.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764