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 Claims
Claims 1-13 are pending in the current application.
Claim 1 is amended in the current application.
Claims 14 and 15 are canceled in the current application.
Response to Arguments
Applicant's remarks and amendments filed on February 11, 2026 have been fully considered.
Applicant argues that the applied prior art of record does not teach the newly amended VOC value of less 200 ppm.
This is not persuasive for the following reasons. The grounds of rejection have been updated below to reflect the current claim amendments. Mechernich teaches a curable pressure sensitive adhesive composition containing components having VOC of less than 1500 ppm, and where the overall VOC of the pressure sensitive adhesive composition is less 1500 ppm (Mechernich, [0007]-[0011], [0023], [0052], [0068], [0116], [0186]). Mechernich’s VOC range encompasses the claimed range of less than 200 ppm, and therefore, renders obvious the claimed range (MPEP 2144.05). Since Palasz and Mechernich both disclose curable pressure sensitive adhesive compositions comprising copolymers, agent such as sulfonium or iodonium salts, and polyfunctional crosslinkers, it would have been obvious to one of ordinary skill in the art to have applied Mechernich’s VOC reduction teachings and guidance to yield a composition that exhibits excellent and versatile balance of adhesive and cohesive properties; excellent characteristics and performance in terms of VOC reduction; high cohesive strength, high temperature shear strength, and excellent shear relaxation properties; and advantageous tack, peel adhesion, and shear holding power (Mechernich, [0011]-[0012], [0023]-[0024]).
Additionally, Matzeit teaches a process of manufacturing a pressure sensitive adhesive comprising the steps of a mixing step, a crosslinking step, and a heating step to remove VOCs to yield an adhesive that has VOC value of less than 1500 ppm or even less than 300 ppm (Matzeit, Abstract, Pgs 2-5). Matzeit’s VOC value range encompasses the claimed range of less than 200 ppm, and therefore, renders obvious the claimed range (MPEP 2144.05). Since modified Palasz and Matzeit both disclose pressure sensitive adhesive compositions seeking to reduce VOC, it would have been obvious to one of ordinary skill in the art to have formed modified Palasz’s composition according to Matzeit’s process that includes a heating step to remove VOCs to yield a pressure sensitive adhesive that exhibits reduced VOC levels whilst providing excellent and versatile adhesion characteristics with respect to peel force and shear resistance on various different difficult to adhere surfaces (Matzeit, Pg 5).
In view of the foregoing, the applied prior art of record is considered to establish a proper and complete prima facie case of obviousness over the newly amended claims with a predictable and reasonable expectation of success.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1, 2, 4-10, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Palasz (US 2018/0051194 A1), in view of Mechernich et al. (EP 3020755 A1), and in view of Matzeit et al. (WO 2019/244108 A1).
Regarding Claim 1, Palasz teaches a curable adhesive precursor composition for a pressure sensitive adhesive comprising: a curable acrylic copolymer with a UV-reactive group (i.e., a reaction functional group X) having a most preferred weight average molecular weight (Mw) of 150,000 to 300,000 g/mol; a cationic photoinitiator such as sulfonium or iodonium salts; and at least one unsaturated oligomer difunctional or polyfunctional crosslinker having an oligomer backbone with reactive groups capable of crosslinking with the acrylic copolymer (i.e., comprising at least two complementary reactive functional groups Y capable of chemically reacting with at least on functional group X of the acrylic copolymer) in a preferred amount of 5-10 wt% of total weight of the composition having a Mw of 5,000 g/mol or less (Palasz, Abstract, [0020]-[0028], [0035]-[0041]). Palasz’s acrylic copolymer preferred Mw range falls within the claimed range of no greater than 500,000 g/mol, and therefore, satisfies the claimed range (MPEP 2131.03). Palasz’s unsaturated oligomer crosslinker content falls within the claimed range of 0.1-10 pph, and therefore, satisfies the claimed range (MPEP 2131.03). Palasz’s unsaturated oligomer crosslinker Mw range overlaps the claimed range of greater than 250 g/mol, and therefore, renders obvious the claimed range (MPEP 2144.05).
Palasz remains silent regarding branching of the oligomer difunctional or polyfunctional crosslinker and remains silent regarding reducing/achieving a Volatile Organic Compound value (VOC) less than 1500 ppm.
Mechernich, however, teaches a curable pressure sensitive adhesive composition comprising a copolymer; an acid generating agent such as sulfonium or iodonium salts; and a branched polyfunctional aziridine curing agent (crosslinker) (Mechernich, [0001], [0013]-[0023], [0035]-[0051]). Mechernich teaches the curable pressure sensitive adhesive composition contains components having VOC of less than 1500 ppm, and where the overall VOC of the pressure sensitive adhesive composition is less 1500 ppm (Mechernich, [0007]-[0011], [0023], [0052], [0068], [0116], [0186]). Mechernich’s VOC range encompasses the claimed range of less than 200 ppm, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Palasz and Mechernich both disclose curable pressure sensitive adhesive compositions comprising copolymers, agent such as sulfonium or iodonium salts, and polyfunctional crosslinkers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Mechernich’s polyfunctional aziridine curing agents as Palasz’s unsaturated oligomer polyfunctional crosslinkers and to have applied Mechernich’s VOC reduction teachings and guidance to yield a composition that exhibits excellent and versatile balance of adhesive and cohesive properties; excellent characteristics and performance in terms of VOC reduction; high cohesive strength, high temperature shear strength, and excellent shear relaxation properties; and advantageous tack, peel adhesion, and shear holding power as taught by Mechernich (Mechernich, [0011]-[0012], [0023]-[0024]).
Additionally, Matzeit teaches a process of manufacturing a pressure sensitive adhesive comprising the steps of a mixing step, a crosslinking step, and a heating step to remove VOCs to yield an adhesive that has VOC value of less than 1500 ppm or even less than 300 ppm (Matzeit, Abstract, Pgs 2-5). Matzeit’s VOC value range encompasses the claimed range of less than 200 ppm, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since modified Palasz and Matzeit both disclose pressure sensitive adhesive compositions seeking to reduce VOC, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed modified Palasz’s composition according to Matzeit’s process that includes a heating step to remove VOCs to yield a pressure sensitive adhesive that exhibits reduced VOC levels whilst providing excellent and versatile adhesion characteristics with respect to peel force and shear resistance on various different difficult to adhere surfaces as taught by Matzeit (Matzeit, Pg 5).
Regarding Claim 2, modified Palasz teaches the curable adhesive precursor composition is free-radical curable with UV radiation (Palasz, [0026]).
Regarding Claim 4, modified Palasz teaches the complementary reactive functional groups are aziridines (Mechernich, [0035]-[0045]).
Regarding Claim 5, modified Palasz teaches the curable acrylic copolymer has a reactive free-radical curable group Z of a vinyl or a benzophenone (Palasz, [0026]; Matzeit, Pg ).
Regarding Claim 6, modified Palasz teaches the curable acrylic copolymer has a most preferred weight average molecular weight (Mw) of 150,000 to 300,000 g/mol (Palasz, [0028]). Modified Palasz’s acrylic copolymer preferred Mw range falls within the claimed range of no greater than 480,000 g/mol, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 7, modified Palasz teaches the curable acrylic copolymer has a most preferred weight average molecular weight (Mw) of 150,000 to 300,000 g/mol (Palasz, [0028]). Modified Palasz’s acrylic copolymer preferred Mw range falls within the claimed range of 6,000 to 480,000 g/mol, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claim 8, modified Palasz teaches the unsaturated oligomer difunctional or polyfunctional crosslinker has a Mw of 5,000 g/mol or less (Palasz, [0041]; Mechernich, [0035]-[0045]). Modified Palasz’s unsaturated oligomer crosslinker Mw range overlaps the claimed range of greater than 300 g/mol, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claims 9 and 10, modified Palasz teaches the unsaturated oligomer difunctional or polyfunctional crosslinker has a polyester structure backbone and has cyclic amines at each terminal position (Palasz, [0041]; Mechernich, [0035]-[0045]).
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Mechernich – Aziridine Oligomer Crosslinkers
Regarding Claim 12, modified Palasz teaches a process of manufacturing the pressure sensitive adhesive as discussed above for claim 1 comprising the steps of providing a mixing apparatus comprising a reaction chamber, providing the precursor composition, incorporating the precursor composition in the reaction chamber of the mixing apparatus and mixing, subjecting the composition to a heating step to devolatize, removing the composition from the mixing apparatus, and curing/crosslinking the composition to attain the pressure sensitive adhesive (Matzeit, Abstract, Pgs 3-5).
Regarding Claim 13, modified Palasz teaches a cured pressure sensitive adhesive which is obtained by the process of claim 12 (Palasz, Abstract, [0001]; Matzeit, Abstract, Pgs 3-5, 43-45).
Claims 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Palasz (US 2018/0051194 A1), in view of Mechernich et al. (EP 3020755 A1), and in view of Matzeit et al. (WO 2019/244108 A1) as applied to claim 1 above, and further in view of Fukuta et al. (JP 2017095597 A, herein English machine translation utilized for all citations).
Regarding Claim 3, modified Palasz teaches the curable adhesive precursor composition for a pressure sensitive adhesive as discussed above for claim 1. Modified Palasz teaches the monomers of the acrylic copolymer depend upon the desired final properties and contemplated end uses (Palasz, [0023]-[0027]).
Modified Palasz remains silent regarding a reactive functional group selected from carboxylic acids or hydroxyls.
Fukuta, however, teaches a pressure sensitive adhesive composition comprising an acrylic copolymer formed with carboxylic acid and hydroxyl group containing monomers and a crosslinking agent (Fukuta, Abstract, Pgs 1-4).
Since modified Palasz and Fukuta both disclose pressure sensitive adhesive compositions comprising acrylic copolymers and crosslinkers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed modified Palasz’s acrylic copolymer with Fukuta’s carboxylic acid and hydroxyl group containing monomers to yield a pressure sensitive adhesive that exhibits excellent removability, less blistering or peeling after exposure to high temperature and/or humidity environments, and improved cohesion force that is compatible with stress relaxation property as taught by Fukuta (Fukuta, Abstract, Pg 2).
Regarding Claim 11, modified Palasz teaches the curable adhesive precursor composition for a pressure sensitive adhesive as discussed above for claim 1. Modified Palasz teaches the unsaturated oligomer difunctional or polyfunctional crosslinker has reactive groups capable of crosslinking with the acrylic copolymer (comprising at least two complementary reactive functional groups Y capable of chemically reacting with at least on functional group X of the acrylic copolymer) (Palasz, [0040]-[0041]).
Modified Palasz remains silent regarding the unsaturated oligomer difunctional or polyfunctional crosslinker comprises at least one carbodiimide at each terminal position.
Fukuta, however, teaches a pressure sensitive adhesive composition comprising an acrylic copolymer and a crosslinking agent, where the crosslinking agent includes carbodiimide compounds such as Carbodilite series compounds V-01, 03, 05, 07, and 09 having carbodiimide functional groups at each terminal position (Fukuta, Pgs 1, 3-4).
Since modified Palasz and Fukuta both disclose pressure sensitive adhesive compositions comprising acrylic copolymers and crosslinkers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Fukuta’s carbodiimide crosslinkers within modified Palasz’s composition to yield a pressure sensitive adhesive that exhibits suppressed floating and peeling, suppressed light leakage, high transparency, and excellent organic solvent compatibility as taught by Fukuta (Fukuta, Pgs 3-4).
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 ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782