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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory.
Election/Restrictions
The applicant has elected Group I (claims 28-31) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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 of this title, 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) 28-31 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Egashira et al. (WO 2019059081) in view of Locko et al. (US 20030229178), both listed on IDS.
As to claims 28-31, Egashira (abs., examples, claims) discloses a pressure sensitive adhesive tape (1, 8) having excellent water sealing (52) used for electronic devices. The adhesive composition (14, 22-29) cast on a substrate (44) comprises acrylic copolymers and a rosin-based or terpene-phenol based tackifer (29). The adhesive layer exhibits a storage modulus at 25°C of 50 to 200 kPa (falling within the claimed range of claim 29) and a peak loss tangent (tan δ) at a temperature of −20° C. to 5° C measured at a frequency of 1 Hz.
Egashira is silent on the compound of claims 1, 16, and 28.
In the same area of producing sealing adhesives (abs., claims, examples, 35) discloses a tackifier (3) comprising phenolic-modified rosin terpene resin having high heat resistance and good cold adhesion. The terpene (8, Ex.1) comprises alpha-pinene, the same terpene monomer used in instant examples and pgpub [0154]. The phenol embraces resorcinol (9), a species of the formula A-1 in claim 3, which would inherently meet the claimed free energy Δμ with polytetrafluoroethylene of −30 kcal/mol or less of claim 1 for meeting the claimed structure.
Therefore, as to claims 28-31, it would have been obvious to one of ordinary skill in the art to have modified the adhesive tape disclosed by Egashira and replaced the tackifier with the aforementioned one of Locko, because the resultant adhesive tape would yield improved high heat resistance and good cold adhesion.
Particularly to claim 29, Egashira is silent on the claimed properties measured at 10 Hz (Egashira measures at 1 Hz). However, combining Egashira and Locko would yield an adhesive composition substantially similar to the one of this application. The Mw of Egashira’s acrylic copolymers is 300k to 2M, falling within the range of the Mw range (200k-2M) of the acrylic copolymers in instant pubub [0174]. Egashira’s acrylic copolymers (54) uses the same acrylic compomers (butyl acrylate, hydroxyethyl acrylate, ethyl acetate etc.) as those of instant pubub [0164-0170, 0219, 0221]. The content of the tackifier in Egashira’s composition (clam 2) is 5-40 parts per 100 parts by mass in 100 parts of acrylic, sufficiently specific to meet the range (1-35 parts per 100 parts) of that of the compound of claim 1 in instant pgpub [0157]. The Mw of the aforementioned Locko’s tackier is 600-1k, falling within the range of the Mw range (400-10k) of the compound of claim 1 in instant pgpub [0128]. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. storage modulus and peak loss tangent measured at 10 Hz, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766