DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 15-23 and the addition of new claims 26-34 in the amendments filed 12/15/2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/15/2025 has been entered.
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 12/15/2025, with respect to the objection to claim 1 as set forth in paragraph 4 of the action mailed 8/14/2025, have been fully considered and are persuasive. The objection to claim 1 has been withdrawn.
Rejections
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
Claim(s) 1-6 and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al. (US 2019/0106608 A1), and in light of the evidence provided via Kanner et al. (US 7070051 B2), Murakami et al. (US 8034849 B2) and the Aldrich Data Sheet.
Regarding claim(s) 1, 5-6 and 10-12, Jozuka teaches a pressure-sensitive adhesive (PSA) sheet (1,2) comprising PSA layers (21, 22) (PSA tape, current claim 10) on opposing surfaces of substrate (10) (para 0032, figures) (current claim 11) composed of a resin film comprising, inter alia, polyethylene, or a foam film, or non-wovens (current claim 12) (para 0181-0187), which said PSA layer(s) is formed from a PSA composition comprising an acrylic polymer (polymer (X1)) comprising, inter alia, heptyl (meth)acrylate in an amount of up to 95 % by weight or more (para 0048-0052), which overlaps that presently claimed (70 % by mass or more).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
The Examiner notes that heptyl (meth)acrylate is identical to that presently disclosed for providing the acrylic polymer, and the resultant PSA composition, with a monomer formed from biological carbon. The Examiner also respectfully submits that, while Jozuka discloses an embodiment wherein n-butyl acrylate and/or 2-ethylhexyl acrylate are employed in the acrylic polymer, Jozuka does specifically disclose the use of heptyl (meth)acrylate in their stead.
Indeed, “nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
Jozuka continues to teach that the PSA layer demonstrates a storage modulus G’(25 ℃) of 0.15 to 1.0 MPa (150,000 to 1,000,000 Pa) or greater towards light-pressure initial adhesion at room temperature and deformation resistance, or a log G’ (25 ℃) of approximately 5.18 to 6, which overlaps that presently claimed (current claim 5);
a storage modulus G’(85 ℃) of 0.02 to 1.0 MPa (20,000 to 1,000,000 Pa) or greater towards continuous deformation resistance, or a log G’ (85 ℃) of approximately 4.3 to 6, which overlaps that presently claimed (current claim 6);
and a tan d (25 ℃) 0.3 to 3, which overlaps that presently claimed, towards light-pressure initial adhesion at room temperature and deformation resistance (para 0035-0041).
Indeed, while the tan d and storage moduli (and the log of the storage moduli), were determined at temperatures that vary slightly from those presently claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the presently claimed tan d and the log of the storage moduli, and at the presently recited temperatures, to the PSAs of Jozuka based on the light-pressure initial adhesion at room temperature, deformation resistance and continuous deformation resistance at the temperature of use and/or application required of the PSA layer of the prior art as in the present invention.
As set forth in the previous action in the rejection of now-canceled claim 7, Jozuka teaches that the acrylic polymer has a glass-transition temperature (Tg) of -25 to -75 ℃ towards considerations of adhesion (para 0081). However, Jozuka also considers Tg values of -70 ℃ or higher and -15 ℃ or lower (para 0075), which overlaps that presently claimed (Tg = -20 to -15 ℃).
Expanding on Jozuka’ s disclosure in said paragraph 0081, wherein Tg values are selected based on considerations of adhesion and cohesion, and that the Tg of the acrylic polymer is adjusted via monomer selection and the monomers proportions (i.e., ratio) as disclosed in paragraph 0075 and the Fox equation, the Applicant’s attention is respectfully directed to column 4, line 46 of Murakami, which discloses that the Tg for heptyl acrylate is -60 ℃. Further, in addition to the heptyl acrylate, Jozuka also disclosed that the acrylic polymer comprises an acidic group-containing monomer (e.g., methacrylic acid) towards cohesion, bonding to polar adherends and light-pressure initial adhesion in amounts up to 20 % by weight (para 0056-0058).
Jozuka also contemplates copolymerizable monomers excluding the acidic group-containing monomer such as, inter alia, hydroxyl group-containing monomers (e.g., 2-hydroxyethyl methacrylate) in proportions up to 40 % by weight towards light-pressure initial adhesion and deformation resistance (para 0060-0069). Attention is respectfully directed to the Aldrich Data Sheet, wherein it is noted that 2-hydroxyethyl acrylate and methacrylic acid have Tg values of 76 ℃ and 228 ℃, respectively.
Moreover, the Applicant is respectfully reminded that,
MPEP 2123(I) instructs that “The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
Examiner’s emphasis.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the acrylic polymer of Jozuka with the presently claimed Tg, based on the balance of adhesion, cohesion, light-pressure initial adhesion and deformation resistance and continuous deformation resistance at the temperature of use required of the PSA layer of the prior art as in the present invention.
Regarding claim 2, Jozuka teaches that the acrylic polymer has a weight-average molecular weight (Mw) of 100,000 to 3,000,000, which overlaps that presently claimed, towards a balance of cohesion and deformation resistance (para 0082).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the acrylic polymer of Jozuka with the presently claimed Mw based on the balance of cohesion and deformation resistance required of the PSA layer of the prior art as in the present invention.
Regarding claim 3, Jozuka does not specify a crosslinking density, to include that presently recited, but Jozuka does instruct that the degree of crosslinking is employed to increase the cohesion of a PSA (para 0004), and conversely towards increased initial adhesion (para 0005). Jozuka also teaches monomeric components employed to add crosslinking points in the acrylic polymer (para 0010) to crosslink via crosslinking agents (para 0056-0057) and to add multifunctional monomers towards the same (para 0072).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA of Jozuka with the presently claimed crosslinking balance based on the balance of, inter alia, cohesion and adhesion as in the present invention.
Regarding claim 4, as noted above, while the storage moduli (and the log of the storage moduli), were determined at temperatures that vary from those presently claimed, and while Jozuka does not provide a storage modulus at or near 0 ℃, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSAS of Jozuka with a storage modulus at 0 ℃, and thus the presently claimed log of the storage moduli at 0 ℃, based on the deformation resistance at the temperature of use as in the present invention.
Regarding claims 8-9, Jozuka teaches that the PSA comprises a tackifier such as, inter alia, such as a terpene-based tackifier (para 0133), which is identical to that presently disclosed for contributing to the presently claimed biological carbon content rate. Jozuka also teaches that the disclosed acrylic polymer comprises the acidic group-containing monomer as low as 3 % by weight (para 0058), the secondary monomer provided as low as 0.01 % by weight (para 0060-0069), and the cohesion increasing monomer as low as 0.1 % by weight (para 0071). The polyfunctional monomer is present as low as just greater than 0 % by weight (para 0074).
The crosslinking agents of Jozuka are employed in an amount as low as 0.001 parts by weight per 100 parts by weight of the of the acrylic polymer (para 0116-0122; 0126). Thus, considering the components of the PSA composition of Jozuka, to include terpene-based tackifiers and the employment of a preponderance of the heptyl (meth)acrylate monomer comprising the acrylic polymer, it is reasonable to conclude that the PSA composition of the cited prior art would demonstrate the presently claimed content rate of biological carbon presently claimed.
Claim(s) 26-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al. (US 2019/0106608 A1), and in light of the evidence provided via Kanner et al. (US 7070051 B2), Murakami et al. (US 8034849 B2) and the Aldrich Data Sheet.
Regarding claim(s) 26-34, Jozuka teaches or renders obvious the PSA sheet (1,2) comprising PSA layers (21, 22) formed from the PSA composition comprising the acrylic polymer, to include the heptyl (meth)acrylate in an amount of up to 95 % by weight or more, as in the rejection of claims 1-6 and 8-12 set forth above, which is equally applicable to the current claims.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 12/15/2025, with respect to the rejection of claims 1-6 and 8-12 over Jozuka et al. under 35 U.S.C. 103 as set forth in paragraph 6 of the action mailed 8/14/2025, have been fully considered but they are not persuasive. New claims 26-34 are also similarly considered as set forth above and below.
The Examiner respectfully submits that, while Jozuka does teach “preferred” embodiments wherein the acrylic polymer comprises solely butyl acrylate (BA), solely 2-ethylehexyl acrylate (2EHA), both BA and 2EHA, etc. as disclosed in paragraph 0052 of the reference. In another “preferred” embodiment (para 0054-0055), Jozuka discloses that the acrylic polymer comprises C1-6 alkyl (meth)acrylates in an amount as high as 99% by weight with the remaining portions of the acrylic comprising an acidic group-containing monomer. Thus, it does not appear that 2EHA is even contemplated in the second embodiment.
The Examiner also respectfully reiterates that, as noted above and repeated here for clarity:
MPEP 2123(I) instructs that “The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
Examiner’s emphasis.
Further, it is noted that
The Applicant(s)' attention is respectfully directed to MPEP 2131.02 wherein it is
instructed that “A genus does not always anticipate a claim to a species within the genus.
However, when the species is clearly named, the species claim is anticipated no matter
how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat.
App. & Inter. 1990) (The claimed compound was named in a reference which also
disclosed 45 other compounds. The Board held that the comprehensiveness of the listing
did not negate the fact that the compound claimed was specifically taught. The Board
compared the facts to the situation in which the compound was found in the Merck Index,
saying that “the tenth edition of the Merck Index lists ten thousand compounds. In our
view, each and every one of those compounds is described’ as that term is used in 35
U.S.C. § 102(a), in that publication.”). Id. at 1718.
Indeed, while the n-heptyl (meth)acrylate disclosed in Jozuka as cited in the prior art rejection is not disclosed as a “preferred” embodiment, Jozuka does instruct one skilled in the art that the compound is contemplated for use in the acrylic polymer. Moreover, as supported via the evidential references cited above, and given that the Jozuka discusses the inclusion of 2-hydroxyethyl acrylate and methacrylic acid (Tg values of 76 ℃ and 228 ℃) with the n-heptyl acrylate (Tg = -60 ℃), one skilled in the art would recognize providing the n-heptyl acrylate in the presently claimed proportions as recited in at least current claims 1 and 26, along with one or both of the other copolymerizable monomers, towards meeting the overall Tg value for the disclosed acrylic polymer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 1/22/2026