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 .
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.
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.
Claim(s) 1, 4, 6-8, 13-15, and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Yoon et al. (US 2014/0016067) in view of Niwa (US 2014/0065416) and Lee et al. (US 2014/0162044) as evidenced by Higuchi et al. (JP 2017171772) and Sigma Aldrich (Thermal Transitions of Homopolymers: Glass Transition & Melting Point).
Regarding claim 1, Yoon et al. teaches an optical display (paragraph [0011]) comprising an adhesive film formed from an adhesive composition (paragraph [0070]), the adhesive composition comprising: a (meth)acrylic copolymer containing hydroxyl group or carboxyl group (paragraph [0012]); wherein the (meth)acrylic copolymer containing hydroxyl group is a polymer of a monomer mixture comprising a (meth)acrylic monomer containing hydroxyl group (paragraph [0014]) or carboxyl group (paragraph [0015]) and a monomer, wherein the (meth)acrylic monomer containing hydroxyl group includes 2-hydroxyethyl(meth)acrylate, 4-hydroxybutyl(meth)acrylate, 6-hydroxyhexyl(meth)acrylate, 2-hydroxypropyl(meth)acrylate, etc. (paragraph [0015]) and the monomer includes methyl(meth)acrylate, ethyl(meth)acrylate, n-propyl(meth)acrylate, n-butyl(meth)acrylate, t-butyl(meth)acrylate, etc. (paragraph [0013]). Yoon et al. teaches wherein the (meth)acrylic monomer containing hydroxyl group is comprised in an amount of 10 to 30 parts by weight (paragraph [0012]) which overlaps the claimed range of about 5 wt% to about 40 wt%, and 35 parts to 79.9 parts by weight of comonomer (paragraph [0012]) which overlaps the claimed range of about 60 wt% to about 95 wt%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); see MPEP 2144.05.
Yoon et al. fails to teach wherein the comonomer has a glass transition temperature as claimed.
However, Niwa et al. teaches a pressure sensitive adhesive layer comprising an acrylic polymer formed from monomers including C-1-9 alkyl (meth)acrylate, polar group-containing monomer such as hydroxyl group-containing monomer and carboxyl group-containing monomer, and C-10-24 alkyl (meth)acrylates such as octadecyl (meth)acrylate (paragraphs [0048]-[0055]) which has a glass transition temperature of -100 oC as evidenced by Sigma Aldrich (page 6).
It would have been obvious to one of ordinary skill in the art to include octadecyl (meth)acrylate in the adhesive film of Yoon et al. in order to control the balance of adhesiveness (Niwa et al., paragraph [0052]).
Yoon et al. in view of Niwa et al. fails to teach the claimed properties.
However, Lee et al. teaches an adhesive film (See Abstract) comprising nanoparticles dispersed in the matrix (paragraphs [0031], [0052] and [0053]).
It would have been obvious to one of ordinary skill in the art to include nanoparticles in the adhesive film of Yoon et al. in view of Niwa et al. in order to allow the adhesive film to absorb external impact such as heat and the like and prevent cracking (Lee et al., paragraph [0031]).
Given that Yoon et al. in view of Niwa et al. and Lee et al. teaches adhesive film, including (meth)acrylic copolymer containing hydroxyl group and comonomer and nanoparticles identical to those of the present invention, it is clear that the adhesive film would necessarily inherently have properties, including index of refraction, haze, glass transition temperature, and storage modulus values as presently claimed, absent evidence to the contrary.
The limitation regarding “an adhesive film formed from an adhesive composition” is a process limitation. 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 Yoon et al. in view of Niwa et al. and Lee et al. meets the requirements of the claimed matrix, Yoon et al. in view of Niwa et al. and Lee et al. clearly meets the requirements of present claims.
Regarding claim 4, Yoon et al. teaches wherein the hydroxyl group-containing (meth)acrylate such as 4-hydroxybutyl acrylate (paragraph [0014]) which has a glass transition temperature (Tg) of -40oC as evidenced by Higuchi (page 9), which falls within the claimed range of about -80°C to -20oC.
Regarding claim 6, Yoon et al. teaches wherein the monomer comprising carboxyl group is 0.1 to 1 part by weight (paragraph [0012]) which falls within the claimed amount of about 10 wt% or less.
Regarding claim 7, Yoon et al. teaches wherein the monomer comprising hydroxyl group comprises alkyl(meth)acrylate such as 2-hydroxyethyl(meth)acrylate, 4 hydroxybutyl(meth)acrylate, which are C1 to C5 alkyl group-containing (meth)acrylic monomers having a hydroxyl group as presently claimed.
Regarding claim 8, Yoon et al. teaches wherein the monomer comprising carboxyl group comprises (meth)acrylic acid, crotonic acid, maleic acid, maleic anhydride, itaconic acid, fumaric acid, etc. (paragraph [0015]).
Regarding claim 13, Yoon et al. teaches wherein the adhesive composition further includes a crosslinking agent (paragraphs [0048] and [0076]).
Regarding claims 14, 15, 16, 17, 18, 19, and 20, given that Yoon et al. in view of Niwa et al. and Lee et al. teaches adhesive film having adhesive composition, including (meth)acrylic copolymer containing hydroxyl group and comonomer identical to that presently claimed, it is clear that the adhesive film would necessarily inherently have properties including haze, average slope, storage modulus, T-peel strength, recovery rate and bubble generation as presently claimed, absent evidence to the contrary.
Regarding claim 21, Yoon et al. teaches wherein the adhesive film has a thickness of approximately 25 µm (paragraph [0084]) which falls within the claimed range of about 10 µm to about 2 mm.
Regarding claim 22, Yoon et al. teaches further comprising an optical film; the adhesive film being attached to one or both surfaces of the optical film (paragraphs [0011], [0070] and [0077], claims 19-20).
Claim(s) 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Yoon et al. (US 2014/0016067) in view of Niwa (US 2014/0065416) and Lee et al. (US 2014/0162044) and further, in view of Mun et al. (US 2014/0205827).
Yoon et al. in view of Niwa et al. and Lee et al. is relied upon as disclosed above.
Regarding claims 23 and 24, Yoon et al. in view of Niwa et al. and Lee et al. fails to disclose the monomer mixture including amounts as claimed.
However, Mun et al. teaches an adhesive film comprising monomer mixture including a C.sub.1 to C.sub.20 alkyl group-containing alkyl(meth)acrylate in an amount of about 40 wt % to about 90 wt % (paragraph [0027]) and hydroxyl group-containing monomer in an amount of about 1 wt % to about 40 wt % (paragraph [0031]).
It would have been obvious to one of ordinary skill in the art to choose amounts of the comonomer and hydroxyl group-containing monomer of Yoon et al. in view of Niwa et al. and Lee et al. in order to control bubbling or detachment under heat resistance and humidity resistance conditions as well as to provide improved adhesion and good durability (Mun et al., paragraphs [0027] and [0031]).
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
Applicant amended claim 1 to include types of hydroxyl group-containing monomer and comonomer.
Applicant argues that the new Declaration provides Supplementary Comparative Example 3 that clearly demonstrates that the monomer mixture of the claimed invention provides a good foldability.
However, in the Declaration, it is not clear what monomers (a4) and (a5) represent. Clarification is requested.
Further, the data remains unpersuasive given that there is no proper side-by-side comparison. Further, the data is not persuasive given that the data is not commensurate in scope with the scope of the claims. For example, the examples use specifically two types of hydroxyl group-containing (meth)acrylate monomers, i.e. 2-ethylhexyl acrylate and 4-hydroxybutyl acrylate while the claims recite a broader list of hydroxyl group-containing (meth)acrylate monomers. The examples only use one type comonomer, i.e. isobornyl acrylate while the claims recite a broader list of comonomers.
Applicant argues that Mun fails to cure the deficiencies of Yoon in view of Lee and Niwa.
However, note that while Mun does not disclose all the features of the present claimed invention, Mun is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely amounts of the commoner and hydroxyl group-containing (meth)acrylate monomer, and in combination with the primary reference, discloses the presently claimed invention.
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 CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
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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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787