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 .
This Office action is in response to the amendment filed 6/30/2026. Claim 1 is amended; claims 4, 12, 14, and 16 are cancelled; and claims 10-11 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1-3, 5-11, 13, 15 and 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 § 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, 5, 7-9, 13, 15 and 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). 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; isobutyl methacrylate and its amount.
However, regarding (meth)acrylic resin having claimed species as a terminal group at at least one molecular end of the main chain, 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 isobutyl methacrylate and its amount, 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, it is the Office’s position that 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 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 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, does not include any water-soluble surfactant, and (meth)acrylic resin having isobutyl methacrylate in presently claimed amount is obvious, 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, can comprise an organic solvent having a boiling point greater than 700C, and (meth)acrylic resin having isobutyl methacrylate in presently claimed amount is obvious, 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 13, see 8f and 8h above.
Regarding claim 15, see 8a-8d and 8h above.
Regarding claim 17, see 8a-8d and 8h.
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 8 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 (paragraph 036). In the case of using for outdoor use, the weathering resistance and coating strength are made to be remarkably excellent. 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 8 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. 112(b) and 103 as set forth in paragraphs 5 and 10-12, of Office action mailed 4/3/2025, are withdrawn in view of the 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 12 below).
Applicant's arguments and Declaration under 37 CFR 1.132, filed 6/30/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that (A) Noguchi et al is not analogous art since it is not related to a binder composition used for sintering which is met by the limitations of present claims and is not obvious; and (B) (meth)acrylic resin of present claims comprises 40% by weight or more and 70% by weight or less of isobutyl methacrylate which is critical to imparting superior results and would be unexpected in view of the teachings in Noguchi. Specifically, note that in experimental example 2, of Declaration, when iBMA content is 30% by weight which is below the claimed range, yield stress does not appear, mechanical properties and sinterability are significantly deteriorated. In experimental example 1, of Declaration, when content of iBMA is 80% by weight which exceeds the claimed iBMA content range, surface roughness is more than 0.05 microns but 0.1 microns or less. This difference is extremely important in the application of sintering sheets.
With respect to (A), claims are only drawn to resin composition comprising (meth)acrylic resin as a binder resin and is an intended use for sintering. It is the Office’s position that positively recited limitations of present claims are obvious based on the teachings in Noguchi et al.
With respect to (B), several of the examples in present application do not exhibit the claimed surface roughness that is allegedly superior (see examples 1 and 6-14 despite having iBMA in the presently claimed range wherein the surface roughness is > 0.05 microns but less than 0.1 micron) as in experimental example 2. While there is a showing of unexpected results with respect to the sintering, surface roughness and yield strength, it is not commensurate with scope of present claims. Specifically, claims in their present form can include any monomer other than iBMA in any amounts to add to 100 wt% in combination with iBMA in amounts of 40 to 70 wt%, terminal end groups can be any listed in the claims. However, data exhibiting unexpected results are limited to terminal groups sulfone and imidazoline (note that methacrylic resin with end groups such as carboxy and hydroxy do not exhibit the preferred surface roughness), any monomer can be included other than iBMA, and all examples include a specific plasticizer in the processing.
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.
Contact Information
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.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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