DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 09/08/2025 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1-4 and 6-11 are examined on the merits in this office action.
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 1-4 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Just et al. (4,772,666) in view of Kishioka (US 2010/0255253 A1).
Regarding claims 1-3, Just et al. disclose a curable mixture used as a constituent in adhesives (see col. 12, claim 1 and col. 14, claim 18). That is, the curable mixture reads on an adhesive. The curable mixture comprises compound (A) comprising structural units derived from (a) 2 to 95 wt% of an olefinically unsaturated monomer containing 1,3-dioxolan-2-one groups represented by formula (I) (i.e. ethylene carbonate-containing monomer or carbon dioxide-derived monomer), (b) 7 to 95 wt% of an olefinically unsaturated monomer containing OH groups (i.e. monomer having a hydroxyl group) and (c) upto 90 wt% of esters of olefinically unsaturated mono- or di-carboxylic acids prepared from alcohol having 1 to 18 carbon atoms and (meth)acrylic acid (i.e. alkyl (meth)acrylate) (see col. 12-13, claims 1, 3, 6, 7 and 8 and col. 2, lines 50-56 and lines 21-28). The olefinically unsaturated monomer containing 1,3-dioxolan-2-one groups (a) is prepared by adding CO2 to glycidyl ester of (meth)acrylic acid (epoxy group-containing compound) (see col. 4, lines 46-50). Given that compound (A) is prepared by copolymerization of (a), (b) and (c), compound (A) reads on a (meth)acrylic ester polymer (A) (see col. 4, lines 41-44). Further, the curable mixture also comprises (B) polyisocyanate, wherein isocyanate group of polyisocyanate reacts with OH groups in compound (A) (see col. 12, claims 1 and 2). The polyisocyanate (B) reads on an isocyanate-based crosslinker.
Just et al. disclose the adhesive as set forth above. Although there is no explicit disclosure that the adhesive is a pressure sensitive adhesive or that the adhesive is in the form of a sheet, given that Just et al. disclose the adhesive comprising a (meth)acrylic ester polymer and crosslinker as presently claimed, it is clear that the adhesive would necessarily be a pressure sensitive adhesive. Further, given that adhesives are used to bond two materials, it would have been obvious to one of ordinary skill in the art to use the adhesive of Just et al. in the form of a sheet to effectively bond two materials, i.e. to function as an adhesive. Accordingly, Just et al. disclose an adhesive sheet comprising a pressure-sensitive adhesive layer as presently claimed.
Just et al. do not disclose a gel fraction of the pressure sensitive adhesive as presently claimed. Just et al. do not disclose the adhesive sheet has an adhesive strength to soda-lime glass as presently claimed.
Kishioka disclose a pressure sensitive adhesive layer comprising an acrylic polymer made from alkyl (meth)acrylate monomer and OH group-containing monomer (see Abstract and paragraphs 0032, 0033 and 0037). The pressure sensitive adhesive has a gel fraction of 30 to 80 wt% in order to provide foaming resistance and peeling resistance (see paragraph 0072).
In light of motivation for using pressure sensitive adhesive having a gel fraction of 30 to 80 wt% disclosed by Kishioka as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the pressure sensitive adhesive having gel fraction of 30 to 80 wt% in order to provide foaming resistance and peeling resistance, and thereby arrive at the claimed invention.
Accordingly, Just et al. in view of Kishioka disclose the adhesive sheet as presently claimed. Just et al. in view of Kishioka do not disclose the adhesive sheet has an adhesive strength to soda-lime glass as presently claimed. However, given the adhesive sheet of Just et al. in view of Kishioka is identical to that presently claimed, it is inherent or obvious that the adhesive sheet has an adhesive strength to soda-lime glass as presently claimed.
Regarding claim 4, Just et al. in view of Kishioka disclose the adhesive sheet as presently claimed.
Further, regarding a carbon dioxide-derived monomer “obtained using carbon dioxide as raw material’, “0.1 mol or more of carbon dioxide is consumed form 1 mol of the carbon dioxide- derived monomer when producing the carbon dioxide-derived monomer” and “the carbon dioxide-derived monomer is obtained by reacting an epoxy group-containing compound and carbon dioxide”, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product’, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Just et al. in view of Kishioka meets the requirements of the claimed product, Just et al. in view of Kishioka clearly meet the requirements of present claims.
Regarding claims 6-8, Just et al. in view of Kishioka disclose the adhesive sheet as presently claimed. Given that the pressure-sensitive adhesive including a (meth)acrylic ester polymer and a crosslinker of Just et al. in view of Kishioka is identical to that presently claimed, it is inherent or obvious that the pressure- sensitive adhesive has presently claimed properties.
Regarding claim 9, Just et al. in view of Kishioka disclose the adhesive sheet as presently claimed.
Further, Kishioka discloses a separator (release film) can be used on a surface of the pressure sensitive adhesive sheet to protect surface of the pressure-sensitive adhesive layer until use, wherein the pressure sensitive adhesive sheet is between two sheets of separator (release film) (see paragraphs 0028, 0085, 0093).
Therefore, as taught by Kishioka, it would have been obvious to one of the ordinary skill in the art to prepare pressure sensitive adhesive sheet comprising two release sheets, and the pressure sensitive adhesive layer interposed between the two release sheets as to be in contact with release surfaces of the two release sheets in Just et al. in view of Kishioka in order to protect surface of the pressure sensitive adhesive layer until use, and thereby arrive at the claimed invention.
Regarding claims 10 and 11, Just et al. in view of Kishioka disclose the adhesive sheet as set forth above.
Further, Kishioka disclose the pressure sensitive adhesive sheet can be used for preparing optical products such as liquid crystal display (see paragraph 0096). A plastic film such as a functional film or functional plate having polarizing property (polarizing plate) can be adhered on an adherend made of plastic plate such as polarizing plate using the pressure sensitive adhesive sheet (see paragraphs 0097, 0099)
Therefore, as taught by Kishioka, it would have been obvious to one of the ordinary skill in the art to prepare liquid crystal display comprising the pressure sensitive adhesive layer between polarizing plates which are plastic plates in Just et al. in view of Kishioka, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 09/08/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments are moot in light of new grounds of rejections.
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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/ Supervisory Patent Examiner, Art Unit 1787
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