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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/24/2025 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 7-16, 19-20 and 23-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 10-12, 15-17, 20-22 and 24-27 of copending Application No. 18009390 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other as below.
Regarding claims 1-3, 7-16, 19-20 and 23-26, the copending claims disclose the same PSA sheet as claimed in present claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 7-16, 19-20 and 23-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 13-26 and 29-36 of copending Application No. 17951378 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other as below.
Regarding claims 1-3, 7-16, 19-20 and 23-26, the copending claims disclose the same PSA sheet as claimed in present claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 7-16, 19-20 and 23-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 is amended to recites “the polyfunctional (meth)acrylate reacts with crosslinkable functional groups in the acrylic polymer (A) and the hydrogenated polyolefin resin (B) to form crosslinked structures”. Applicant points to paragraph 0162 in the specification. However, there is no support found in the present specification regarding such phrase.
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) 1-3, 7-16, 19-20 and 23-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katami et al. (US 2015/0376477) in view of Takeda et al. (US 2013/0302602).
Regarding claims 1-2, 7-13 and 15-16, Katami discloses a pressure sensitive adhesive sheet comprising a pressure sensitive adhesive (PSA) layer (title) wherein the PSA layer contains an acrylic polymer comprising 30 to 95 of isostearyl acrylate, i.e. acrylic alkyl ester having a branched chain alkyl group having 10 to 24 carbon atoms, (paragraphs 0071, 0072), 5 to 30 parts by weight of hydroxyl group containing monomer based on the total amount of monomer components constituting acrylic polymer 100 parts by weight (paragraph 0075) and 5 to 30 parts by weight of nitrogen atom containing monomer based on the total amount of monomer components constituting acrylic polymer 100 parts by weight (paragraph 0077), wherein the PSA sheet has a total light transmittance in the visible wavelength region of not less than 88% (0157). Further, the PSA layer comprises polyfunctional acrylate wherein the polyfunctional acrylate is used as a crosslinking component (paragraph 0103).
Katami does not disclose hydrogenated polyolefinic resin such as hydrogenated polybutadiene.
Taketa discloses pressure sensitive adhesive sheet containing pressure sensitive layer comprising 40 wt% or less of hydrogenated polybutadiene, i.e. hydrogenated polyolefinic resin, to improve adhesion (paragraphs 0095-0096). Taketa further discloses that molecular weight of the resin can be set to any appropriate value and preferably the number average molecular weight is 5000 to 50000 (paragraph 0097).
It would have been obvious to one of ordinary skill in the art to use the hydrogenated resin of Taketa in the PSA of Katami to obtain improve adhesion. Further, given that the hydrogenated polyolefinic resin of Taketa is the same as claimed in present claims, it is clear that the hydrogenated polyolefinic resin of Katami in view of Taketa would possess the same properties as claim in present claims. 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).
Regarding storage elastic modulus, dielectric constant and peel adhesive strength, Katami discloses PSA sheet has a 180 peel strength to a glass plate not less than 14 N/20 mm (paragraph 0150). Given that the PSA sheet of Katami in view of Taketa discloses the same composition and the same structure as claimed in present claims, it is clear that the PSA sheet of Katami in view of Taketa would intrinsically possess the same properties as claimed in present claims.
Regarding claim 3, Katami in view of Taketa discloses the PSA sheet of claim 1, wherein the PSA layer has a gel fraction from 65 to 99% (paragraph 0159).
Regarding claim 14, Katami in view of Taketa discloses the PSA sheet of claim 1, wherein the acrylic polymer comprises methyl acrylate (paragraph 0070).
Regarding claims 19-20, Katami in view of Taketa discloses the PSA sheet of claim 1, wherein the PSA layer further comprises rust inhibitor such as benzotriazole compound (paragraphs 0055, 0057).
Regarding claim 23, Katami in view of Taketa discloses the PSA sheet of claim 1, wherein Katami discloses an optical component comprising the PSA sheet of claim 1 and a base layer, i.e. substrate, wherein the substrate comprises metal wiring on its face and the PSA is laminated on the face of the substrate on the side having the metal wiring (paragraphs 0186-0188).
Regarding claim 24, Katami in view of Taketa discloses the optical member of claim 23, wherein the metal wiring is metal mash or silver nanowire (paragraphs 0188, 0189).
Regarding claim 25, Katami in view of Taketa discloses the PSA sheet of claim 1, wherein Katami discloses a touch panel comprising the PSA sheet of claim 1 and a base layer, i.e. substrate, wherein the substrate comprises metal wiring on its face and the PSA is laminated on the face of the substrate on the side having the metal wiring (paragraphs 0184, 0186-0188).
Regarding claim 26, Katami in view of Taketa discloses the touch panel of claim 25, wherein the metal wiring is metal mash or silver nanowire (paragraphs 0188, 0189).
Claim(s) 1-3, 7-16, 18-20 and 23-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katami et al. (US 2015/0376477) in view of Takano et al. (US 2018/0244963).
Regarding claims 1-2, 7-13 and 15-16, Katami discloses a pressure sensitive adhesive sheet comprising a pressure sensitive adhesive (PSA) layer (title) wherein the PSA layer contains an acrylic polymer comprising 30 to 95 of isostearyl acrylate, i.e. acrylic alkyl ester having a branched chain alkyl group having 10 to 24 carbon atoms, (paragraphs 0071, 0072), 5 to 30 parts by weight of hydroxyl group containing monomer based on the total amount of monomer components constituting acrylic polymer 100 parts by weight (paragraph 0075) and 5 to 30 parts by weight of nitrogen atom containing monomer based on the total amount of monomer components constituting acrylic polymer 100 parts by weight (paragraph 0077), wherein the PSA sheet has a total light transmittance in the visible wavelength region of not less than 88% (0157). Further, the PSA layer comprises polyfunctional acrylate wherein the polyfunctional acrylate is used as a crosslinking component (paragraph 0103).
Katami does not disclose hydrogenated polyolefinic resin such as hydrogenated polybutadiene.
Takano discloses adhesive composition (abstract) comprising acrylic polymer and adhesive aid such as hydrogenated polybutadiene resin in an amount of from 3 to 50 mass % to obtain reduced adhesive residue and desired adhesive force (paragraph 0045). Takano discloses hydrogenated polybutadiene resin such as GI-1000 and GI-3000 (paragraphs 0134, 0140) which is the same as disclosed in the present specification and therefore it is clear that hydrogenated polybutadiene resin of Takano would have the same properties as claimed in present claims.
It would have been obvious to one of ordinary skill in the art to use the hydrogenated resin of Takano in the PSA of Katami to obtain reduced adhesive residue and desired adhesive force. Given that the adhesive composition of Katami in view of Taketa is the same as claimed in present claims, it is clear that the adhesive of Katami in view of Taketa would possess the same properties as claim in present claims.
Regarding storage elastic modulus, dielectric constant and peel adhesive strength, Katami discloses PSA sheet has a 180 peel strength to a glass plate not less than 14 N/20 mm (paragraph 0150). Given that the PSA sheet of Katami in view of Takano discloses the same composition and the same structure as claimed in present claims, it is clear that the PSA sheet of Katami in view of Takano would intrinsically possess the same properties as claimed in present claims.
Regarding claim 3, Katami in view of Takano discloses the PSA sheet of claim 1, wherein the PSA layer has a gel fraction from 65 to 99% (paragraph 0159).
Regarding claim 14, Katami in view of Takano discloses the PSA sheet of claim 1, wherein the acrylic polymer comprises methyl acrylate (paragraph 0070).
Regarding claims 19-20, Katami in view of Takano discloses the PSA sheet of claim 1, wherein the PSA layer further comprises rust inhibitor such as benzotriazole compound (paragraphs 0055, 0057).
Regarding claim 23, Katami in view of Takano discloses the PSA sheet of claim 1, wherein Katami discloses an optical component comprising the PSA sheet of claim 1 and a base layer, i.e. substrate, wherein the substrate comprises metal wiring on its face and the PSA is laminated on the face of the substrate on the side having the metal wiring (paragraphs 0186-0188).
Regarding claim 24, Katami in view of Takano discloses the optical member of claim 23, wherein the metal wiring is metal mash or silver nanowire (paragraphs 0188, 0189).
Regarding claim 25, Katami in view of Takano discloses the PSA sheet of claim 1, wherein Katami discloses a touch panel comprising the PSA sheet of claim 1 and a base layer, i.e. substrate, wherein the substrate comprises metal wiring on its face and the PSA is laminated on the face of the substrate on the side having the metal wiring (paragraphs 0184, 0186-0188).
Regarding claim 26, Katami in view of Takano discloses the touch panel of claim 25, wherein the metal wiring is metal mash or silver nanowire (paragraphs 0188, 0189).
Response to Arguments
Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive.
Applicant argues that the composition of the PSA layer of Katami and Takeda are different. However, it is noted that Takeda does disclose acrylic copolymer in B1 adhesive in paragraph 0087. Further, note that while Takeda does not disclose all the features of the present claimed invention, Takeda 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 40 wt% or less of hydrogenated polybutadiene, i.e. hydrogenated polyolefinic resin, to improve adhesion, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that Takeda teaches the use of a softening agent in a layer containing a thermoplastic elastomer. While examiner agrees that Takeda discloses the adhesive layer based on a thermoplastic elastomer, the adhesive layer of Takeda also discloses acrylic copolymer in B1 adhesive in paragraph 0087.
Applicant argues that since the purpose of adhesives differ between Katami and Takano, it would not been obvious to use the adhesive aid of Takano in Katami because Katami does not desire removal of the PSA. However, it is noted that one of the motivation to use adhesive aid of Takano in Katami is to provide desired adhesive force. Therefore, it is clear that the rejection is proper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787