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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/9/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendment to claim 1 as well as the addition of claim 10 and the cancellation of claim 4. Claims 1-2 and 6-10 are pending.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Fukumoto (JP 2015-193842 listed as Foreign Patent Document #3 on IDS dated 7/22/2022).
Regarding Claims 1, 6, and 8,
Fukumoto teaches an adhesive composition generated through the use of living radical polymerization (Paragraph 1) using RAFT polymerization agents (Paragraph 54), which can take the form of the following structure:
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In which R6 and R7 are alkyl chains, one of which is replaced the polymer during the polymerization reaction and due to the mechanism of RAFT polymerization, would be incorporated as an endgroup to the polymer chain.
Fukumoto also teaches that the polymer preferably has a molecular weight of 10,000 to 350,000 (Paragraph 34), which overlaps with the range of the instant claim (61,000-250,000). One of ordinary skill in the art, seeking to adjust the viscosity of the composition for coating, would look to altering the molecular weight of the resin in order to achieve this goal. As such, it would have been obvious to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. Fukumoto also teaches that the components of the polymer can include urethane based and silicone based acrylates (Paragraph 34) and that the composition must include at least one of the possible component options (Paragraph 20), indicating the use of multiple kinds is allowed.
With regard to the material having solubility in solvent, as the composition of Fukumoto is similar to that of the instant claims, it would logically follow that it would have similar solubility characteristics and would therefore meet the requirement of the instant claim.
Fukumoto teaches the use of monomers containing siloxane bonds (Paragraph 34). Fukumoto also teaches that the composition can be applied to a substrate (Paragraph 69), which reads on forming a sheet. Fukumoto does not teach that the contact angle with water is between 77° and 116°. However, because Fukumoto teaches the use of all of the same components as used in the instant application, it would necessarily follow that the cured product using these same components would have a water contact angle in the range of the instant claim. Additionally, one of ordinary skill in the art, looking to enhance the compatibility between layers of a multilayer composition, would seek to alter the hydrophilicity or hydrophobicity to be more similar to the layers in which the instant layer will be in contact with. As such, it would have been obvious to have set the water contact angle to be in the stated range in order to achieve the predictable result of better adhesion between two layers with a reasonable expectation of success.
Regarding solidification by drying, while Fukumoto does not explicitly state that the composition is dried, any amount of time between the application to a substrate and further steps would read upon a drying step, as volatile components would be evaporating during that time and as such, would meet the requirement of drying. Further, the loss of any contained solvent, it would logically follow, result in solidification of the composition. As such, it would necessarily follow that the composition of Fukumoto would meet this requirement.
Regarding Claim 2,
Fukumoto teaches that the solventless composition should have a viscosity between 300 and 5000 Pa·s (Paragraph 69). Fukumoto does not teach that a 15% by weight solution of the resin in butyl carbitol acetate has a viscosity within the stated range of the instant claim. However, as the composition of Fukumoto meets the requirements of the instant claims, it would necessarily follow that the components would be soluble in butyl carbitol acetate. Additionally, Fukumoto states that the amounts of components may be adjusted in order to tune the viscosity (Paragraph 69). It would logically follow that when using solvent, that the same flexibility would apply, allowing for the tuning of the viscosity. One of ordinary skill in the art, seeking to adjust the thickness of the cured layer, would look to reducing the viscosity of the coating composition by adjusting the composition, including the use of solvent, when necessary, to obtain a film of the desired thickness. It would therefore have been obvious to have altered the composition of Fukumoto to have included solvent and to have obtained a viscosity within the stated range.
Regarding Claim 7,
Fukumoto teaches that the adhesive may be applied to a plastic substrate or the like (Paragraph 69).
Regarding Claim 9,
Fukumoto teaches that while the intended composition is essentially solvent-free, the components may be added while dissolved or dispersed in solvent (Paragraph 68), that some solvent may be intentionally added (Paragraph 68), and that the definition of solvent-free includes up to 1% by weight of solvent relative to component A (Paragraph 68). As such, the amount of solvent present in the composition (1% by weight relative to component A) would fall within the range of the instant claim.
Regarding Claim 10,
Fukumoto teaches the required composition and drying as discussed above in regard to claims 1, 6, and 8. With regard to the curing, Fukumoto teaches that the composition can be applied to a substrate to serve as a pressure sensitive adhesive (Paragraph 69) and does not mention curing and further notes that the only required components are a, b, and c, which are polymerizable monomers, a radical initiator and a living radical control agent (Paragraph 69), indicating no additional agent is added to cure the mixture.
Response to Arguments
Applicant's arguments filed 1/9/2026 have been fully considered but they are not persuasive for the following reasons.
On page 4, the applicant states that Fukumoto does not teach the water contact angle and that the composition of Fukumoto would not inherently have a water contact angle in the required range. However, the applicant does not provide evidence demonstrating that the composition of Fukumoto would not possess the required contact angle. While the applicant does state that Fukumoto requires curing on page 5, the examiner notes that the applicant has selected one of the embodiments presented by Fukumoto. In paragraph 69, Fukumoto teaches that polymerizable monomers, a radical initiator and a living radical control agent are the only required components of the composition (components a, b, and c) and that this composition can be applied to a substrate, which would meet the requirements of a laminate and does not note a curing step. Further, as the applicant has not specified any conditions required for the drying step, a drying step can be interpreted to mean any time between application and use at any temperature. As such, the burden remains with the applicant to demonstrate that the composition would not necessarily have the required water contact angle. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)
On page 6, the applicant argues that the newly presented claim 10 which now requires drying without curing that the composition would have different properties before and after curing. The examiner agrees, however as stated above, Fukumoto does not require curing in all embodiments and in fact teaches application to a substrate without a curing step, rendering this argument to be moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765