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 § 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.
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.
Claim(s) 1-4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suwa et al. (WO 2013/062996).
Regarding claims 1-3 and 7; Suwa et al. teaches a micro-structured optically clear adhesive sheet including a first major surface and a second major surface. At least one of the first and second major surfaces comprises a micro-structured surface of interconnected micro-structures in at least one of the planar dimensions (x-y), thus if one surface is micro-structured, the other may be smooth [p2, line8-11].
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FIG. 4a is a cross-sectional view of a laminate formed using a micro-structured pressure- sensitive adhesive, immediately after contacting the micro-structured adhesive surface to the surface of a substrate. The laminate 100, as shown in FIGS. 4a and 4b, is prepared by removing the release liner (not shown) from a first major surface 32, a non-micro-structured surface, of the MS OCA 30. The first major surface of the MS OCA is then applied to a first substrate 10. A micro- structured liner (not shown) is then removed from the second major surface 34 of the MS OCA, exposing a micro-structured surface, and the second major surface of the MS OCA is applied to a second substrate 20. Upon application, point-to-point contact is formed between the repeated micro-structure units 36 of the micro-structured surface and the second substrate, forming a bond line 50, which extends between the first and second substrates. The bond line contains regions of open air space 40 [p31, para2].
Although Suwa et al. teaches in the shown Fig. 4a a uniform micro-structured pattern, Suwa et al. also discloses that the micro-structures do not have to be arranged in a regular or repeating pattern, such as lines or a cross pattern; the micro-structures may also be in a random pattern (i.e. non-uniform) [p30; line20-24].
Suwa et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Suwa et al. does not specifically disclose an embodiment containing a random (i.e. non-uniform) patterned microstructure. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare an adhesive containing a random microstructure pattern based on the invention of Suwa et al., and would have been motivated to do so since Suwa et al. suggests that the microstructures may be in a random pattern [p30; line20-24]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Suwa et al. does not explicitly teach an increase in a mode II fracture toughness. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, and structure. Therefore, the claimed effects and physical properties, i.e. increase in mode II fracture toughness would necessarily be present in an adhesive layer with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claim 4; Suwa et al. teaches a series of parallel rows [p30, para1].
Response to Arguments
Applicant's arguments filed 21 October 2025 have been fully considered but they are not persuasive.
Applicants argue the applied art does not teach first and second areas forming a non-uniform preset pattern to increase a mode II fracture toughness. The Examiner respectfully disagrees. As stated in the above rejection, Suwa et al. teaches the micro-structured pattern may be a random pattern, thus non-uniform.
In response to applicant's argument that Suwa makes no mention about the mode II fracture toughness and using the micro-structure units 36 to somehow improve such toughness, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants argue Suwa teaches a single, unified mictro-structure pattern on one surface (e.g. repeating pyramidal indentations); in contrast, claim 1 recites a pattern of two different surface properties (smoothness/morphology/adhesion), on the same surface, arranged in a non-uniform pattern. The Examiner respectfully disagrees. As stated above, Suwa teaches the micro-structure may be random, not uniform. The claimed limitation related to having two different surface properties is broad, in that any type of difference (e.g. the peak of a pyramidal mictro-structure vs. the valley of a pyramidal micro-structure) may constitute two different surface properties, as required by the claim language (smoothness and/or morphology and/or or adhesion properties).
As such, Suwa et al. is still relied upon for rendering the obvious the adhesive layer as required by the instant claimed language.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767