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 .
Election/Restrictions
Claims 8, 14, and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicants timely traversed the restriction (election) requirement in the reply filed on 1/7/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 11/4/2022 are accepted.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-7, 9-12, and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-36081A (herein referred to as Mitsubishi) in view of JP2020015801A (herein referred to as Watanabe).
Mitsubishi teaches a pressure sensitive adhesive composition (See “Solution”) section of translation) comprising a (meth)acrylic ester polymer (A) (see solution section) containing, as a monomer unit constituting the polymer, an ethylene carbonate-containing monomer having an ethylene carbonate structure represented by Formula (1) (0001; formula 3).
Mitsubishi teaches the molecular weight is a result effective variable that can be adjusted based on the amount of monomer adder, the initiator, the transfer agent, the reaction temperature and time and the like (0020). Mitsubishi further teaches the (meth)acrylic polymer should have a molecular weight distribution f (Mw/Mn) of 1.5 to 8, and a number average molecular weight of 3,000-150,000 (0020). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the molecular weight of the (meth)acrylic polymer disclosed in Mitsubishi. The motivation for doing so would have been that a polymer’s molecular weight is known to control the viscosity and processability of the polymer.
Mitsubishi does not teach that the composition should further comprise an ionic compound (b). However, Watanabe discloses an adhesive sheet having an adhesive layer wherein the adhesive layer contains an antistatic agent (abstract). Said antistatic agent is included in the adhesive is 0.1 mass% or more and 10 mass% or less (abstract). The antistatic agent is an ionic compound and may comprise a nitrogen-containing onium salt or an alkali metal salt (see all; page 4; claims 1-4). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include an ionic antistatic agent, such as an alkali metal salt, to the adhesive layer disclosed in Mitsubishi. The motivation for doing so would have been because Watanabe teaches such antistatic agents are useful in adhesive compositions in amounts of 0.1-10wt%.
With regards to claim 2, Mitsubishi teaches the pressure sensitive adhesive composition contains 0.5 mass% or more and 40 mass% or less of the ethylene carbonate-containing monomer as the monomer unit constituting the polymer (0006), preferably 2 to 30 mol% (0014) when used as a PSA.
With regards to claim 5, Mitsubishi teaches the pressure sensitive adhesive composition may comprise content of a crosslinker in the pressure sensitive adhesive composition is 0.1 mass parts or less with respect to 100 mass parts of the (meth)acrylic ester polymer (0029). Alternatively, said reference describes that "in adjusting the curable resin composition, the concentrations of the copolymer (A) and the cross-linking agent (B) are not limited, and can be selected from a wide range in consideration of the use, the coating method, the coating thickness, etc." (0029). Thus, it would have been obvious to one of ordinary skill in the art to appropriately adjust the contents of the copolymer and the cross-linking agent in the composition described for the purpose of obtaining desired characteristics.
With regards to claim 6, Mitsubishi teaches a pressure sensitive adhesive obtained by crosslinking the pressure sensitive adhesive composition taught therein (see all; 0030).
With regards to claim 7, Mitsubishi teaches a pressure sensitive adhesive sheet comprising at least a pressure sensitive adhesive layer, wherein the pressure sensitive adhesive layer is composed of the pressure sensitive adhesive taught therein (see all; 0030).
With regards to claims 9-11, Mitsubishi does not explicitly teach the claimed gel fraction or the claimed elastic modulus. However, it is known in the art that the gel fraction and elastic modulus of an acrylic adhesive is a result effective variable controlled by the crosslinking degree of the composition (see e.g. KR 20220136059; 2022209830 A1). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to control the crosslinking degree in the adhesive disclosed in Mitsubishi in order to control the gel fraction and elastic modulus of the composition.
With regards to claim 12, Mitsubishi does not teach the pressure sensitive adhesive sheet should have an adhesive strength to soda-lime glass of 1 N/25 mm or more and 100 N/25 mm or less. However, Watanabe teaches an adhesive laminate wherein the adhesive force of the laminate to the soda-lime glass is 19N/25mm or when the surface on the adhesive layer side of the laminate obtained by laminating the adhesive layer m is attached to the soda-lime glass see all). Such adhesive strength provides better blister resistance. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the adhesive strength relative to soda glass to above 19N/25mm in order to improve the blister resistance of the composition.
With regards to claims 16 and 17, the carbonate polymer disclosed in Mitsubishi reads on the claimed structure (see structure 2 on page 7 of the translation).
With regards to claim 18, Watanabe teaches the antistatic agent is an ionic compound and may comprise a nitrogen-containing onium salt or an alkali metal salt (see all; page 4; claims 1-4).
With regards to claim 19, the examiner takes the position that the “pseudo crosslinked structure formed by bonding the ethylene carbonate structure and the ionic compound (B) through interaction” is inherent to a composition comprising the claimed ethylene-carbonate polymer and the ionic compounds of Watanabe.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-36081A (herein referred to as Mitsubishi) in view of JP2020015801A (herein referred to as Watanabe), as applied to claims above, and further in view of WO2015/132888 (herein referred to as WO).
With regards to claim 13, Mitsubishi teaches a PSA composition, but does not teach applying two release sheets, wherein the pressure sensitive adhesive layer is interposed between the two release sheets so as to be in contact with release surfaces of the two release sheets. However, WO describes an adhesive sheet which includes two release sheets and an adhesive layer sandwiched between the release sheets so as to be in contact with the release surfaces of the two release sheets (Claims 1-6 and Figs. 1-2). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply release sheets to either side of the adhesive taught in Mitsubishi as WO teaches the application of such sheets to either side of an adhesive layer is a known industrial practice.
Response to Arguments
Applicant's arguments filed7/8/2026 have been fully considered but they are not persuasive.
Rejections under 35 U.S.C. §103
With regards to the rejection of claims 1-7 and 9-12 under 35 U.S.C. §103 as having been obvious over Mitsubishi (JP 2005-036081 A) in view of Watanabe (JP 2020-015801 A); and claim 13 is rejected under 35 U.S.C. §103 as having been obvious over Mitsubishi and Watanabe in view of Arai (WO 2015/132888 A1), applicant makes the following arguments:
Mitsubishi
Applicant argues the claims of Mitsubishi are directed to a "release agent," and that none of the claims are directed to a "pressure-sensitive adhesive." Said argument is noted but is not persuasive as a reference may be relied upon for all that it fairly teaches and is not limited to the claimed subject matter. Applicant fails to rebut the examiner’s position with regards to any of the teachings for which Mitsubishi was relied upon to teach. Thus, applicants’ arguments are not persuasive. Applicants further argue the reference does not mention the problem addressed by the present disclosure, namely, "providing excellent step conformability while suppressing the occurrence of optical unevenness" (see, e.g., paragraph [0009]). Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims. Specifically, excellent step conformability and suppression of the occurrence of optical unevenness is not claimed; furthermore, applicants have not shown said features are inherent to the claimed invention. The examiner further notes the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Watanabe
With regards to Watanabe, applicants argue said reference describes the function of the antistatic agent (ionic compound) is to obtain a pressure-sensitive adhesive layer that exhibits not only excellent antistatic properties but also, unexpectedly, favorable blister
resistance. Applicants argue the present specification describes the claimed ionic compound as having different/further benefits in the claimed composition. Specifically, applicants argue
the role of the antistatic agent (ionic compound) in Watanabe is to provide blister resistance, whereas the role of the ionic compound in the present disclosure is to provide step conformability. Thus, applicants argue the functions of the ionic compounds in the two references are clearly different. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims; the claims do not explicitly require the ionic compound to perform any specific function. Furthermore, applicants have not demonstrated said functions/beneficial results are inherent to the composition as claimed. Furthermore, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Amended Claim 1
Applicants further argue claim 1 is amended to further require, "wherein the (meth)acrylic
ester polymer (A) has a weight-average molecular weight of 500,000 or more and 2,000,000 or
less." Applicants note. paragraph [0020] of Mitsubishi states that "the molecular weight of the resulting copolymer (A) is usually from 10,000 to 400,000 in terms of weight-average molecular weight (Mw)" and contains no disclosure of an Mw of 500,000 or more. Thus, Mitsubishi provides no motivation to increase the Mw to 500,000 or more. Said argument is noted but is not persuasive for the reasons noted above. Furthermore, the examiner notes that an application is not limited to its preferred or exemplary embodiments and may be relied upon for all that it fairly teaches.
Applicants further argues when the molecular weight is relatively low, the concentration of polymer-derived functional groups (i.e., the number of reaction sites) in the film becomes relatively high, resulting in a greater number of crosslinking points with the crosslinking agent and when the molecular weight is relatively high, the film tends to become harder, while the concentration of polymer-derived functional groups (i.e., the number of reaction sites) in the film becomes relatively low, resulting in fewer crosslinking points with the crosslinking agent. Consequently, the resulting film possesses not only a certain degree of hardness but also flexibility and tackiness. Said argument is noted but is not persuasive as counsel’s arguments cannot take the place of evidence; there is no evidence of record supporting applicants’ conclusion with regards to the properties achieved when the molecular weight is relatively high or relatively low. Furthermore, applicants have not demonstrated said argument is commensurate in scope with the claims as said properties are not explicitly claimed and applicants have not demonstrated they are inherent to the claimed invention.
New Claims 16 and 17
Applicants argue Mitsubishi requires, as an essential constituent, a (meth)acrylic copolymer (A) having a five-membered cyclic carbonate group which necessarily includes a carboxy structure -COO-. Applicant argues new claims 16 and 17 use an ethylene carbonate-containing monomer that does not include a carboxy structure -COO-. The examiner respectfully disagrees. Specifically, the structure of claims 16 and 17 each contain a carboxy structure:
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Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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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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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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