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 .
Status of the Claims
This is responsive to the RCE of 9/23/25, addresses the IDS of 12/22/25, acknowledges the amendments and arguments.
Examiner’s Note
As indicated below, claims 20 – 24 are rejected in parallel to original claims 1, 3, 6, 8 and 9 respectively. The acknowledges the differences in wording, but finds the scope and relation to earlier claims and prior art references to overlap such that no modification of rejection is needed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20-24 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The application did not have previous support for the limitation “consisting essentially of” as the original disclosure does not indicate sufficiently the basic characteristics that are expected to be understood to remain unaffected by that which is inessential/non-effecting elements. Due to the lack of clarity brought about such, the claim is interpreted as “comprising”. The applicant has not set forth that which is present in the specification to define the “basic and novel characteristics” according to MPEP 2111.03. Furthermore, the addition of a previously unclaimed “consisting essentially of” limitation is akin to adding a negative limitation which requires there have been explicit support in the original disclosure. MPEP 2173.05(i).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-9 and 20-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has a limitatation “ii” that has no words thereafter. This could be considered merely an objection but in light of the totality of concerns with grammatical formatting it has been included here.
Claims 1 and 6 have introduced many vague and unclear grammatical changes to claim 1 that brings into question the scope. At limitation 1.i.c) note the limitation:
a functionality selected from the group consisting of epoxy, ester, ether[[,]] [or] amide; and
This is vague and indefinite because the Markush language should include “and”, but this does not. Instead, another vagueness, adds “or” but does so underlined “____” and also within square brackets “[]” which is a possible indication that “or” is being added but also that it is being deleted.
Claims 1, 6 and 20 are vague and indefinite because of the added limitation “bond strength of cured debondable pressure sensitive adhesive”. Such is vague and indefinite because there is no word connecting this limitation to the next limitation “bond strength of uncured debondable…”. Are they alternatives, or additive to each other? If additive, are they contradictory?
Claim 20 largely repeats claim 1, but changes the transitional phrse to “consisting essentially of” and this claim is vague and indefinite because such phrasing conflicts with the optional clause at 20.iii. A claim with this transitional phrases is limited to a scope of the limitations thereafter and non-essential non-claimed limitations. Something that is optional raises the lack of clarity regarding whether it would be considered essential or non-essential.
Each of the dependent claims are rejected based on their dependencies to the parent claims for the reasons above.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
3. Claim(s) 1, 3-9 (and claims 20-24 in parallel to 1, 3, 6 and 9) is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kurita (JP 2007-297484 A; all citations refer to the English language machine translation of the document unless otherwise stated in which case the citation refers to the original Japanese document which is provided) as is evidenced by Allnex (Allnex, “Ebecryl @270” r 31 December 2020 (2020-12-31) pages 1-2, Retrieved from the Internet: URL: https;//allnexproductsed.blob.core.windows.net/products/40/7DE9411E-D9B6-4A9A-A5/4—0B137634034F/2021-07—14/Ebecryl—270_J2N_A4.pdf [retrieved on 2024-01-19]*Groah II; pg 2 as is listed on the IDS filed on 02/15/2024 and all citations refer to the copy provided by applicant on 02/15/2024) and Kielbania (US 4,288,499).
Concerning claim 1, 3, 6, and 8-9 (and 1-24 in paralell to 1, 3, 6, 8 and 9) Kurita teaches a visible light curable removable pressure sensitive adhesive composition (paragraph 0001) which would correspond to a debondable pressure sensitive adhesive composition. The composition is indicated to exhibit a pressure sensitive adhesive force before visible light irradiation and is cured by visible light irradiation to cause a decrease in the pressure sensitive adhesive force (paragraph 0008).
The composition is indicated to include an oligomer having two or more polymerizable carbon carbon double bonds and to include a polymer (paragraph 0011).
Kurita teaches a particular example of an adhesive composition which includes a component B-1 and a component C-1 and is indicated to have an adhesive strength before curing of 7 and an adhesive strength after curing of 0.15 (paragraph 0090 Table 1 example 1 and paragraph 0086-0087) which would give a residual bond strength of approximately 0.02. Component B-1 is indicated to be a polyurethane acrylate of Ebecryl 270 having a molecular weight of 1500 (paragraph 0082) and polymer C-1 is indicated to be a polymer of 10 parts n-butyl methacrylate, 40 parts methyl methacrylate 48 parts of ethyl hexyl ester acrylate and 2 parts of acrylic acid (paragraph 0075). The pressure sensitive adhesive this then formed into a layered structure using a polyethylene terephthalate film as a base material for a substate and then has a release substate provided on the other side to provide a layered structure of release substrate/pressure sensitive adhesive layer/substrate (paragraph 0083), which would correspond to a laminate structure.
Kielbania provides evidence of the solubility parameter of various monomers and teaches that 2-ethylhexyl acrylate has a solubility parameter of 7.8 butyl methacrylate has a solubility parameter of 8.2 methyl methacrylate has a solubility parameter of 9.2 and acrylic acid has a solubility parameter of 12.9 (column 9 lines 1-35). It should be noted that applicant specification pg 14 table 5 indicates that poly methyl methacrylate has a solubility parameter of 9.3 which would correspond to close agreement with the value of methyl methacrylate of 9.2 and as such would be considered to recite (cal/cm3)1/2. It should be noticed that each of the monomers has a solubility parameter which is within the claimed range of about 8 to about 15, as the 7.8 solubility parameter of 2-ethylhexyl acrylate is within the range of greater than about 8. As such the polymer which is formed from these monomers would also be within the claimed solubility parameter range. As such the polymer C-1 of Kurita would correspond to the claimed at least one polymer having a solubility parameter range greater than about 8 to less than about 15 which is an acrylic polymer.
Allnex provides evidence that Ebecryl 270 is an aliphatic urethane diacrylate (pg 3 paragraph 1) which has a viscosity at 60°C of from 2700-3300 mPa*s (pg 3 paragraph 4) and that the aliphatic urethane diacrylate has a functionality of 2 acrylate groups (pg 3 paragraph 5). It should be noted that 1 mPa*s is equal to 1 cps and as such the oligomer will have a viscosity of from 2700-3300 cps at 60°C which is within the claimed range.
It should be noted that a urethane would be considered to be a functionality which is a combination of an ether and an amide and therefore this oligomer would include the claimed functionality which is indicated to be able to be a combination of the listed groups. It should also be noted that the acrylate groups of the Ebecryl 270 would each include an ester group and the claim as is currently drafted does not require the at the ester functionality be different from the acrylate functional groups. As such the Ebecryl 270 of Kurita will correspond to the claimed acrylic oligomer having the claimed viscosity and two acrylate functional groups as well as a functionality of urethane which is a combination of ether and amide.
However, the bond strength indicated by Kurita is not measured with the claimed ASTM D903 but with a 180 ° peel test according to JIS Z0237 at a peeling rate of 300 mm/min (paragraph 0086-0087). It should be noted that ASTM D903 is a 180° peel test performed at a separation rate of 152.4 mm/min. However given that the test of both standards is a 180 peel test and that the difference between the two standards is the rate of separation and the residual bond strength is a ratio of the strength before and after curing, the claimed ratio will only be slightly affected by the difference in separation rate used between the different standards and so the approximate 0.02 residual bond strength using the JIS standard would teach a residual bond strength within the claimed range of less than 0.10.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
"[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). See MPEP 2112.V.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MEPE 2112.01.I.
As such since the debondable pressure sensitive adhesive comprises each of the claimed components and indicates the claimed property as is determined using a slightly different method the debondable pressure sensitive adhesive of Kurita would have the claimed residual strength ratio and so teach the claimed limitations.
Concerning claims 4-5 and 7 the adhesive composition of Kurita is further required the use of a photoinitiator (paragraph 0041). The composition is also indicated to be able to include additional components such as tackifiers and anti-aging agents (paragraph 0051).
The example of Kurita is indicated to include Irgacure 784 as a photo initiator and methylethylketone as a solvent (paragraph 0082 and 0041), and as such Kurita teaches the claimed composition and article.
Response to Arguments
4. Applicant's arguments filed 03/18/2025 have been fully considered but they are not persuasive.
Regarding the argument that the amendment deleting “combination thereof” overcomes the rejections because deleting the term narrows the scope to exclude “combination thereof”, the examiner disagrees. The presence of a combination of any of epoxy, ester and/or ether is in fact still an anticipation of epoxy, ester and/or ether. The combinations are note excluded from the scope by the removal of the limitation discussed.
Regarding the argument that the “consisting essentially of” limitation obviates over Kurita because the teachings of Kurita include a monomer is not compelling. As discussed above, “consisting essentially of” is watered down by the optional limitation. One would not know what is essential or not, and thus the monomers are not excluded.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph S Del Sole whose telephone number is (571)272-1130. The examiner can normally be reached Generally Monday - Friday, 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOSEPH S. DEL SOLE
Supervisory Patent Examiner
Art Unit 1700
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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