DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the addition of new claim 35 in the amendments filed 6/26/2026.
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 .
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, 8-12 and 35 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, 10-12 and 35, 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.
The Examiner acknowledges the amendments to claim 1 requiring that the Tg of the polymer (X1) ranges from -10 to 15 ℃, and to new claim 35, which requires that said Tg range from -5 to 15 ℃, both of which are exclusive of the Tg range of -25 to -75 ℃ specifically disclosed for the acrylic polymer of Jozuka in consideration of adhesion (para 0081). However, Jozuka also specifically instructs that there are no particular limitations on the Tg values, with the Tg values 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.
In this spirit, 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 discloses 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 Examiner respectfully reiterates 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.
Indeed, while Jozuka does disclose a Tg range outside that presently recited, Jozuka does not dissuade one skilled in the art away from Tg values outside (above or below) of -25 to -75 ℃. Second, Jozuka instructs one skilled in the art towards monomeric components such as methacrylic acid and hydroxyl group-containing monomers which would elevate the Tg of the resultant acrylic polymer, and the motivation provided from the inclusion of said monomeric components (see above). Third, and as evidenced via the Kanner disclosure (see column 8, line 58 to column 9, line 8therein), one skilled in the art would have been well-apprised to adjust the Tg of the acrylic polymer of Jozuka to that within the range presently claimed based on the temperature of use (that is, the temperature at which the adhesive of Jozuka demonstrates PSA properties), and towards a required balance of tack, peel and cohesive strength.
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 as 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, 8-12 and 35 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 6/26/2026, with respect to the rejection of claims 1-6 and 8-12 over Jozuka et al. under 35 U.S.C. 103 and claims 26-34 over Jozuka et al. under 35 U.S.C. 103 as set forth in paragraphs 6-7 of the action mailed 1/27/2026, have been fully considered but they are not persuasive.
The Applicant’s attention is respectfully directed to the priori art rejections set forth above, which provided a fair and complete rebuttal to the Applicant’s arguments. Continuing, and in response to the Applicant’s citation of Proctor and In re Sebek, while the invention of Jozuka does seek the Tg values specifically disclosed, as demonstrated above, Jozuka does not constrain one of ordinary to those Tg values specified. In addition, as set forth 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).
Indeed, and contrary to the Applicant’s position, a person having ordinary skill in the art would have had conspicuous reason(s) (see, for example, the Kanner reference) to employ the acrylic polymers of Jozuka, albeit comprising Tg values outside that specified and within the range presently claimed. As further disclosed in the references cited above, adjusting the Tg is both a well-known process accompanied with a well-known outcome that the skilled artisan would have had more than a reasonable expectation of success.
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 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 8/10/2026
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