Detailed Office Action
Applicant's amendments and arguments filed on 8/29/2025 have been entered and fully considered. Claim 1 is amended. Claims 8-17 are withdrawn from examination. Claims 1-17 remain pending.
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 .
Response to Amendments and Arguments
Applicant’s amendment to claim 1 is acknowledged. This amendment is addressed below in the 35 USC 103 section.
Applicant’s arguments are not persuasive. They are addressed below in the order that they appear in the arguments of 8/29/2025.
Applicant states that first, MIKI is not in the "same" field of endeavor as the present invention. MIKI relates to a dicing die-bonding film including a substrate, a PSA layer, and a die-bonding adhesive layer in order, the dicing die-bonding film is attached to a semiconductor wafer, the semiconductor wafer is diced, and then the diced semiconductor wafer and die-bonding adhesive layer are peeled from the PSA layer and substrate, and then the diced semiconductor wafer is bonded to an adherend via the die-bonding adhesive layer. Thus, MIKI does not relate at all to a PSA sheet that bonds together optical elements (e.g., polarizing film). Accordingly, MIKI is not in the same field of endeavor.
The Examiner respectfully disagrees. The instant application deals with an acrylic pressure sensitive adhesive that contains a UV absorbing or blocking agent and the adhesive is applied to an electronic device such as an LCD. MIKI discloses an acrylic pressure sensitive adhesive layer that contains a UV blocking agent and the adhesive is applied to an electronic device such as semiconductor chips {[0019], [0029], [0011], [0009]}. Both the instant application and MIKI are in the same field of endeavor.
Applicant states that second, the Federal Circuit has emphasized that the prior art's failure to recognize a problem solved by the claimed invention is evidence of an absence of a reason to attempt to improve upon the prior art. See Leo Pharm. Prods. Ltd v. Rea, 726 F.3d 1346, 1353 (Fed. Cir. 2013). In this case, the problem solved by the claimed invention is the deterioration of curability and physical properties of the PSA when an UV absorbing agent is incorporated. See e.g., [0008] of the specification. Neither KATAMI nor MIKI recognize this problem. In fact, the problem solved by KATAMI is the internal reflection caused by a difference in refractive index between the PSA layer and one of the optical elements bonded together by the PSA layer. See e.g., [0004]. The problem solved by MIKI is to reduce the effect of UV rays on semiconductor chips. See e.g., [0009]. As KATAMI and MIKI do not recognize the problem solved by the claimed invention, such is evidence of a lack of obviousness.
The Examiner relied on MIKI for the UV blocking or absorbing agent and not KATAMI. Furthermore, it has been held that the reason or motivation to modify a reference (note KATAMI was modified by MIKI) may often suggest what the inventor (in this case MIKI) has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggests the combination to achieve the same advantage or result discovered by the applicant. In another word, rationale different from applicant’s is permissible {see MPEP 2144(IV)}.
Applicant states that regarding DISSOLVED, applying this kind of reference to the technical field of the present invention - where the distinction between dispersion and solution constitutes a fundamental and influential difference - lacks rational basis.
The Examiner notes that DISSOLVED was not a prior art rejection rather just an evidence showing that a dispersion of small particles in a liquid can be considered a solution. MIKI, explicitly, discloses that the UV blocking agent is in a solution {[0011]}, therefore, the purpose for providing this evidence wasn’t for the rejection of the limitation of “solution”, rather providing further evidence for existence of a solution.
Applicant states that arguments sake that a person of ordinary skill in the art would have modified KATAMI in view of MIKI, the modification would still not result in the claimed invention precisely because of the fundamental difference between a dispersion and
Solution. MIKI does not expressly disclose permeation of the ultraviolet blocking agent into the adhesive layer. It is evident that the ultraviolet blocking agent is dispersed and fixed within the die bond layer 3. Accordingly, a person of ordinary skill in the art reading MIKI, as a whole, would not have understood MIKI as teaching the technical concept of allowing the ultraviolet blocking agent to permeate into the pressure-sensitive adhesive layer 2.
The Examiner respectfully disagrees. MIKI, explicitly, discloses that the ultraviolet absorber in a solution can be added directly to the adhesive layer {[0011] note the option of applying the solution of UV blocking agent directly to the adhesive layer}. Therefore, even assuming that the concentration of the UV absorber in the solution is homogeneous, once it is added to the adhesive layer from an adhesive layer surface, a concentration gradient develops across the adhesive layer, resulting in permeation of the absorber agent from the spot that is added to the totality of the thickness of this adhesive layer. MIKI discloses such permeation as the result of natural diffusion of the absorber agent.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over KATAMI (US-2016/0115357), hereinafter KATAMI, in view of MIKI (JP-2012099826-A, and its English translation), hereinafter MIKI, YOON (US-2017/0298257), hereinafter YOON, and as evidenced by DISSOLVED (Sizes of substances dissolved), hereinafter DISSOLVED. Note that the italicized text below are the instant claims.
Regarding claim 1, KATAMI discloses A method for producing a pressure-sensitive adhesive sheet {[abstract], [claim 32]}, comprising:
forming a pressure-sensitive adhesive layer formed of a transparent, light-cured base pressure-sensitive adhesive material on a support {[claim 32], [0050] note using light lamp to harden or curing the layer, thus light-cured};
irradiating the pressure-sensitive adhesive layer with an ultraviolet ray to cure the pressure-sensitive adhesive layer {[0048] note irradiation with UV, [0050] note using light lamp to harden or curing the layer};
providing a solution of an agent; applying the solution to one of opposite surfaces of the cured pressure-sensitive adhesive layer to cause the agent contained in the solution to infiltrate from the one surface in a thickness direction of the pressure-sensitive adhesive layer; and drying the pressure-sensitive adhesive layer {[0042] note applying a solution of an agent and then drying, [FIG. 5] note solution 19 is applied to one of the opposite surface of 20, [0048]/[0052] note the adhesive is cured first and then the solution or dispersion is applied}.
KATAMI, however, is silent on the agent being an “ultraviolet absorbing agent” and that “wherein a concentration of the ultraviolet absorbing agent in the solution is 1 to 50% by weight”.
In the same filed of endeavor that is related to UV curable pressure-sensitive adhesive used in electronics, MIKI discloses that ultraviolet absorber in a solution can be added directly to the adhesive layer {[0011] note the option of applying the solution of UV blocking agent directly to the adhesive layer}. MIKI also discloses the concentration range of the UV absorbing agent in the solution {[0013]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teaching of MIKI in the method of KATAMI and have added a UV absorber agent with the disclosed concentration range to the solution of dispersion of KATAMI.
As disclosed by MIKI, the advantage of such addition is the UV protection of the electronics that the adhesive is applied onto {[0007], [0009]}. The Examiner notes that the pressure-sensitive adhesive of KATAMI is also applied to electronics {[0002]} and can benefit from inclusion of the UV blocking agent of MIKI.
The Examiner notes that MIKI discloses that the UV absorber agent has a very small particle size of 0.1 to 80 µm or less {[0012]}. As evidenced by DISSOLVED (see page 2 highlighted text), at these very low particle sizes the dispersion is considered a solution.
The Examiner notes that MIKI teaches concentrations greater than zero and less than 80% which encompasses the claimed range. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range {see MPEP 2144.05 (I)}.
Regarding the infiltration of the UV absorber agent, the Examiner notes that this limitation is the intended result of the application of the process steps. As the combination of KATAMI and MIKI discloses the same process steps in substantially the same manner as the instant claim, it is the Examiner’s position that substantially the same results will occur which is the infiltration of the agent in the solution from one surface in a thickness direction. Notably, the applicant’s disclosure does not specify any additional method steps that results in such infiltration. If applying the same method steps in substantially the same manner does not inherently result in this infiltration, then a question of scope of enablement and/or omitting essential method limitation can be brought for claim 1.
Combination of KATAMI and MIKI, however, is silent on the choices of the UV absorbing agent as recited in the Markush group amendments to claim 1. The Examiner notes that MIKI discloses that the choices for the UV light shielding or absorbing agent is not limited {[0050]}, therefore, other shielding agents beyond those taught by MIKI {[0051]} can potentially be substituted.
In the same filed of endeavor that is related to acrylic adhesive composition for electronic device, YOON discloses wherein the ultraviolet absorbing agent comprises at least one selected from the group consisting of a triazine-based ultraviolet absorbing agent, a benzotriazole-based ultraviolet absorbing agent, a benzophenone-based ultraviolet absorbing agent, an oxybenzophenone-based ultraviolet absorbing agent, a salicylic acid ester-based ultraviolet absorbing agent, and a cyanoacrylic acid-based ultraviolet absorbing agent {[abstract]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the UV absorber agent of MIKI with the UV absorber agent of YOON, since it has been held that a simple substitution of one known element for another to obtain predictable results are obvious {see MPEP 2143 (I)(B)}. In the case predictable results are achieved since both arts are adding the UV absorbing agent for the same purpose to the same adhesive in the same field of endeavor.
Regarding concentration of the UV absorber, the Examiner notes that YOON’s suggested range {[0012]} falls within the range discussed above, thus, there is no contradiction regrading this issue.
The Examiner notes that for the rest of the dependent claims, modified KATAMI has the solution or dispersion of UV absorber agent.
Regarding claim 2, Modified KATAMAI discloses wherein the solution of the ultraviolet absorbing agent is a solution in which the ultraviolet absorbing agent is dissolved in a solvent, and the method comprises drying the pressure-sensitive adhesive layer to evaporate the solvent of the solution {[0042]}.
Regarding claims 3 and 7, MIKI discloses wherein the solution of the ultraviolet absorbing agent further comprises a dye compound having a maximum absorption wavelength in an absorption spectrum present in a wavelength region of 380 to 430 nm (claim 3), wherein a maximum absorption wavelength of the ultraviolet absorbing agent in an absorption spectrum is present in a wavelength region of 300 to 400 nm (claim 7) {[0051] note that calcium carbonate and barium sulfate are white pigments or dye and carbon is a black pigment or dye, [0047]}. The Examiner notes that the motivation statement outlined under claim 1 applies to this claim as well.
The Examiner also notes that MIKI discloses a range of 280 to 380 nm that touches (claim 3) or partially overlaps (claim 7) with the claimed ranges. A prima facie case of obviousness is established when a claimed narrow range partially overlaps the broad range or touches this range. Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30. Also, MPEP 2144.05 (I).
Regarding claim 4 limitation of “further comprising providing a solution of a dye compound having a maximum absorption wavelength in an absorption spectrum present in a wavelength region of 380 to 430 nm, and applying the solution to one of opposite surfaces of the cured pressure-sensitive adhesive layer” see the discussions under claim 1 for applying the solution to an opposite surface and claim 3 for a solution of a dye compound in the claimed wavelength range.
Regarding claim 5 limitation of “wherein the solution of the dye compound is a solution in which the dye compound is dissolved in a solvent”, as discussed under claim 1, KATAMI discloses the dispersion in a solvent or dispersion liquid 19 {[0042]}. Also as detailed under claim 1, MIKI discloses that the UV absorber agent has a very small particle size and is in a solution {[0011]-[0012]}. As evidenced by DISSOLVED (see page 2 highlighted text), at these very low particle sizes the dispersion is considered a solution.
Regarding claim 6, KATAMI discloses further comprising laminating a release sheet onto a surface of the pressure-sensitive adhesive layer on a side opposite to the support {[0048]}.
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 S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748