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 .
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, 3-8, 11-12, 15-17, 20-22 and 24-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-16, 18-20 and 23-26 of copending Application No. 18009136 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other as below.
Regarding claims 1, 3-8, 11-12, 15-17, 20-22 and 24-27, 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, 3-8, 11-12, 15-17, 20-22 and 24-27 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, 3-8, 11-12, 15-17, 20-22 and 24-27, 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, 3-8, 11-12, 15-17, 20-22 and 24-27 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, 3-8, 11-12, 15-17, 20-22 and 24-27 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, 3-4, 6-8, 15-16 and 20-22, Katami discloses a pressure sensitive adhesive sheet comprising a pressure sensitive adhesive (PSA) layer (title), wherein the PSA layer contains an acrylic polymer, as a main component, (paragraph 0065) comprising a mixture of monomer components constituting an acrylic polymer (paragraphs 0068-0070), wherein the acrylic polymer comprises 30 to 95 parts by weight 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). 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 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 5, Katami in view of Taketa discloses the PSA sheet of claim 1, wherein the acrylic polymer comprises methyl acrylate (paragraph 0070).
Regarding claims 11-12, 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 17, Katami in view of Taketa discloses the PSA sheet of claim 15, wherein the PSA layer has a gel fraction from 65 to 99% (paragraph 0159).
Regarding claim 24, 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 25, 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 26, 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 27, 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, 3-8, 11-12, 15-17, 20-22 and 24-27 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, 3-4, 6-8, 15-16, 20-22,, Katami discloses a pressure sensitive adhesive sheet comprising a pressure sensitive adhesive (PSA) layer (title) wherein the PSA layer contains an acrylic polymer, as a main component, (paragraph 0065) comprising a mixture of monomer components constituting an acrylic polymer (paragraphs 0068-0070), wherein the acrylic polymer comprises 30 to 95 parts by weight 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). 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.
Regarding 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 5, Katami in view of Taketa discloses the PSA sheet of claim 1, wherein the acrylic polymer comprises methyl acrylate (paragraph 0070).
Regarding claims 11-12, 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 17, Katami in view of Taketa discloses the PSA sheet of claim 15, wherein the PSA layer has a gel fraction from 65 to 99% (paragraph 0159).
Regarding claim 24, 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 25, 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 26, 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 27, 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).
Response to Arguments
Applicant's arguments filed 06/23/2026 have been fully considered but they are not persuasive.
Applicant states that the provisional non-statutory double patenting rejections be held in abeyance. It is noted that the claims are not allowable at this time and therefore the double patenting rejection is maintained.
Applicant argues that Takeda discloses a liquid acrylic copolymer in adhesive layer but the acrylic copolymer is used at most in an amount of 5 wt%. However, it is noted that the examiner is not relying on Takeda reference for acrylic polymer as a base polymer in the adhesive. Katami reference is relied on for such limitation as explained above in the rejection.
Applicant argues that the examiner’s position appears to be rely on improper hindsight in an attempt to establish a prima facie case of obviousness. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The rejection is not based on hindsight but rather on motivation to combine found in the references themselves. Further, it is the examiner's position that the combination is not based on hindsight but rather on motivation to combine found in Takeda itself, namely, adhesive sheet containing pressure sensitive layer comprising 40 wt% or less of hydrogenated polybutadiene, i.e. hydrogenated polyolefinic resin, to improve adhesion.
Applicant argues that if Katami were somehow modified to include a hydrogenated polyolefin resin, the polyfunctional acrylate of Katami would not react with the crosslinkable functional groups in the acrylic polymer and the hydrogenated polyolefin resin to form a crosslinked structure. However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicant points to examples in Takano and argues that comparative example 1 had less adhesive force to copper foil but stronger adhesive force to polyimide and this the effect of the adhesive aid on adhesive strength appears unpredictable. However, it is noted that the data is not persuasive given that the claims are rejected under Katami in view of Takano. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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