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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 25 February 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to claim 11, the claim recites “wherein the antistatic agent comprises an ionic compound” in lines 1-2. However, claim 1, which claim 11 depends from, already recites “wherein the antistatic agent is an ionic antistatic agent”. Thus, claim 1 establishes that the antistatic agent comprises an ionic compound, and therefore claim 11 fails to further limit claim 1. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 6, 8-9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yamagata et al. (JP 2018-123282 A, “Yamagata”) in view of Inao et al. (US 2013/0017392 A1, “Inao”). The disclosure of Yamagata is based off a machine translation of the reference included with the action mailed 16 July 2025.
With respect to claims 1, 6, 8-9, and 11, Yamagata discloses an adhesive composition containing a polymer (A) having an active hydrogen-containing functional group and an isocyanate-based crosslinking agent (B) (i.e., isocyanate-based curing agent) ([0011-0012]). The polymer (A) is at least one of an acrylic polymer and a urethane polymer ([0015]) and the active hydrogen-containing functional group is a hydroxyl group ([0013]) (i.e., the urethane polymer (A) is a hydroxyl group-containing urethane resin). The acrylic polymer is a copolymer of an alkyl (meth)acrylate and a functional group monomer containing an active hydrogen ([0027]). The alkyl (meth)acrylate includes (meth)acrylic acid alkyl esters having 4-12 carbons, including butyl (meth)acrylate, isobutyl (meth)acrylate, t-butyl (meth)acrylate, pentyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, and isononyl (meth)acrylate ([0028]), corresponding to the claimed alkyl (meth)acrylate monomer having 4-10 carbon atoms. The active hydrogen-containing functional group monomer includes 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl (meth)acrylate, 4-hydroxybutyl (meth)acrylate, 6-hydroxyhexyl (meth)acrylate, and 8-hydroxyoctyl (meth)acrylate ([0030]), corresponding to the claimed (meth)acrylate monomer containing a hydroxyl group. Other monomers including (meth)acrylic acid alkyl esters having an alkyl group with a carbon number other than 4-12 can be included, such as tetradecyl (meth)acrylate and eicosyl (meth)acrylate ([0033]), corresponding to the claimed alkyl (meth)acrylate monomer having 12-22 carbon atoms. Further other monomers include those having a halogen atom, such as fluorine (meth)acrylate ([0035]), corresponding to the claimed (meth)acrylate monomer containing a fluorinated substituent. The composition further contains an antistatic agent (E) ([0011]) in order to impart excellent antistatic properties ([0060]). The antistatic agent (E) is an ionic compound ([0016], [0060]).
However, Yamagata does not disclose wherein the (meth)acrylate copolymer is contained in an amount of 0.5 to 5 parts by weight based on 100 parts by weight of the urethane resin.
Inao teaches an adhesive made from an acrylic copolymer having a crosslinkable functional group and a urethane resin ([0027]). The crosslinkable functional group is a hydroxyl functional group ([0033]). The acrylic copolymer and urethane resin are present in a ratio of acrylic copolymer/urethane resin of 40/60 to 1/99 ([0027] (7), [0101]) in order to provide an adhesive having sufficient adhesive strength ([0102]). From this ratio, per 100 parts by weight of the urethane resin, the acrylic copolymer is present in an amount of 1.01 (1*100/99 ≈ 1.01) to 66.7 (40*100/60 ≈ 66.7) parts by weight, which overlaps the presently claimed range.
Yamagata and Inao are analogous inventions in the field of adhesives made from acrylic copolymers and urethane resins.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of Yamagata to have the acrylic copolymer be present in 1.01-66.7 parts by based on 100 parts by weight of the urethane resin, including the amounts presently claimed, as taught by Inao in order to provide an adhesive having sufficient adhesive strength (Inao, [0102]).
Regarding the (meth)acrylate copolymer being a copolymer of a monomer mixture including 0.1-10 wt% of a (meth)acrylate monomer containing a hydroxyl group, 0.1-5 wt% of a (meth)acrylate monomer containing a fluorine-based substituent, 80-95 wt% of an alkyl (meth)acrylate monomer having an alkyl group of 1-10 carbon atoms, and 1-10 wt% of an alkyl (meth)acrylate monomer having an alkyl group of 12-22 carbon atoms, Yamagata in view of Inao discloses the (meth)acrylic acid alkyl ester having an alkyl group of 4-12 carbon atoms (corresponding to the claimed alkyl (meth)acrylate monomer having 4-10 carbon atoms) is present in an amount of 70-99.9 mass% of the monomer component (Yamagata, [0029]); this overlaps the presently claimed range. The active hydrogen-containing functional group monomer (corresponding to the claimed (meth)acrylate monomer containing a hydroxyl group as set forth above) is present in an amount of 0.1-30 mass% of the monomer components (Yamagata, [0032]); this overlaps the presently claimed range. The other monomers (i.e., the (meth)acrylic acid alkyl esters having an alkyl group with a carbon number other than 4-12, corresponding to the claimed alkyl (meth)acrylate monomer having 12-22 carbon atoms as set forth above, and the monomers having a halogen atom, corresponding to the claimed (meth)acrylate monomer containing a fluorinated substituent) are present in an amount of 29.9% by mass or less in the monomer components (Yamagata, [0037]).
Yamagata in view of does not teach individual amounts of the alkyl (meth)acrylates having 12-22 carbon atoms and the (meth)acrylate monomer containing a fluorinated substituent. However, it would have been obvious to one of ordinary skill in the art to choose equal amounts of each component, i.e., up to 14.95% (29.9/2 = 14.95%) of each component.
When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely… on a conclusion of obviousness, ‘from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.’” In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Therefore, one of ordinary skill in the art would have used 14.95% or less of the alkyl (meth)acrylate having 12-22 carbon atoms and 14.95% or less of the (meth)acrylate monomer containing a fluorinated substituent in the monomer mixture; these ranges overlap the presently claimed ranges. 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 the adhesive layer formed from the adhesive composition exhibiting a surface resistivity of 106 to 1011 Ω/□ and a surface protective film comprising the adhesive layer formed from the adhesive composition exhibiting a peel force of 4 gf/in or less when peeled from glass at a peel angle 180° at a peel speed of 0.3 m/min, while Yamagata in view of Inao may not explicitly recite the adhesive layer formed from the adhesive composition has these properties, given that Yamagata in view of Inao discloses an otherwise identical adhesive composition made from otherwise identical components in overlapping amounts, it is clear the adhesive layer made from the adhesive composition of Yamagata in view of Inao and a surface protective film comprising that adhesive layer would necessarily inherently have these properties, absent evidence to the contrary.
Regarding the ionic antistatic agent having no migration to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, while there may be no explicit disclosure from Yamagata in view of Inao regarding the ionic antistatic agent having no migration to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, given that Yamagata in view of Inao discloses an otherwise identical adhesive composition made from otherwise identical components in overlapping amounts, including an otherwise identical ionic antistatic agent as presently claimed, it is clear the ionic antistatic agent of Yamagata in view of Inao would necessarily inherently not migrate to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, absent evidence to the contrary.
With respect to claim 3, Yamagata discloses the crosslinking agent (B) ([0011-0012]) is present in an amount of 0.1-20 parts by mass based on 100 parts by mass of the urethane polymer (A) ([0014]), overlapping the presently claimed range. 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).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yamagata et al. (JP 2018-123282 A, “Yamagata”) in view of Inao et al. (US 2013/0017392 A1, “Inao”) as applied to claim 1 above, and further in view of Koide (JP 2018-058952 A). The disclosures of Yamagata and Koide are based off machine translations of the references included with the action mailed 16 July 2025.
With respect to claim 2, while Yamagata in view of Inao discloses the urethane resin as set forth in the above rejection of claim 1, Yamagata in view of Inao does not disclose wherein the urethane resin has a weight-average molecular weight of 50,000-200,000.
Koide teaches a pressure sensitive adhesive used in surface protective films ([0009]) where the adhesive comprises a polyurethane having a weight average molecular weight of 10,000-500,000 in order to achieve a high level of coatability, tackiness, and cohesive strength ([0099]).
Yamagata in view of Inao and Koide are analogous inventions in the field of adhesives made from polyurethanes and used with surface protective films.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane of Yamagata in view of Inao to have a weight average molecular weight in the range taught by Koide, including values presently claimed, in order to provide an adhesive having a high level of coatability, tackiness, and cohesive strength (Koide, [0099]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over as being unpatentable over Yamagata et al. (JP 2018-123282 A, “Yamagata”) in view of Inao et al. (US 2013/0017392 A1, “Inao”) as applied to claim 1 above, and further in view of Sim et al. (KR 10-2017/0034636 A, “Sim”). The disclosures of Yamagata and Sim are based off machine translations of the references included with the action mailed 16 July 2025.
With respect to claim 7, while Yamagata in view of Inao discloses the use of fluorine (meth)acrylate (Yamagata, [0035]) as set forth in the above rejection of claim 1 (i.e., discloses the use of a (meth)acrylate monomer containing a fluorinated substituent), Yamagata does not disclose wherein the (meth)acrylate monomer containing a fluorinated substituent comprises at least one of the compounds presently claimed.
Sim teaches a fluorine-containing acrylic adhesive composition ([0001]). The fluorine-containing acrylate monomer is selected from one or more monomers including tetrafluoropropyl (meth)acrylate and hexafluorobutyl (meth)acrylate in order to provide an adhesive having excellent contamination resistance ([0046]).
Yamagata in view of Inao and Sim are analogous inventions in the field of acrylate-based adhesives comprises a fluorine-containing acrylate monomer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fluorine (meth)acrylate of Yamagata in view of Inao to be at least one of tetrafluoropropyl (meth)acrylate and hexafluorobutyl (meth)acrylate as taught by Sim in order to provide an adhesive composition having excellent contamination resistance (Sim, [0046]).
Claims 12-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yamagata et al. (JP 2018-123282 A, “Yamagata”) in view of Inao et al. (US 2013/0017392 A1, “Inao”) as applied to claim 1 above, and further in view of Choi et al. (WO 2019/083255 A2, “Choi”). The disclosure of Yamagata is based off a machine translation of the reference included with the action mailed 16 July 2025, while the disclosure of Choi is based off US 2020/0343479 A1, which serves as an English language equivalent.
With respect to claims 12-13, while Yamagata in view of Inao discloses the adhesive composition as set forth in the above rejection of claim 1 and further discloses its use in a surface protection film (Yamagata, [0126-0127]) having a support (Yamagata, [0127]), antistatic layer (Yamagata, [0138]), and separator that protects the adhesive layer (Yamagata, [0136]), Yamagata in view of Inao does not disclose a first substrate layer, an antistatic layer positioned on at least one surface of the first substrate layer, an adhesive layer, and a release film comprising a second substrate layer, antistatic layers positioned on both surfaces of the second substrate layer, and a release layer in this order.
Choi teaches an optical film (i.e., surface protection film) comprising an antistatic layer 11A, base film 111 (i.e., first substrate), adhesive layer 124, release layer 123, antistatic layer 11B, protective film 131 (i.e., second substrate), and antistatic layer 11C ([0022-0023], Fig. 1). The adhesive layer is acryl-based ([0055]). The surface protective film provides an excellent antistatic function and prevents foreign substances and device defects generated from static electricity ([0011]). As can be seen in Fig. 1 below, the adhesive layer 124 is in direct contact with the release layer 123.
PNG
media_image1.png
288
292
media_image1.png
Greyscale
Yamagata in view of Inao and Choi are analogous inventions in the field of surface protection films having antistatic layers and acryl-based adhesive layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface protective film of Yamagata in view of Inao to be the surface protective film taught by Choi with the adhesive layer of Yamagata in view of Inao in order to provide a surface protective film with excellent antistatic function that prevents foreign substances and device defects generated from static electricity (Choi, [0011]).
With respect to claim 15, while there may be no explicit disclosure from Yamagata in view of Inao and Choi regarding the surface protective film having a peel force of 4 gf/in or less as measured at a peel angle of 180° and a peel speed of 0.3 m/min after attachment to glass, given that Yamagata in view of Inao and Choi discloses an otherwise identical surface protective film made from identical layers made from identical materials as those presently claimed, it is clear the surface protective film of Yamagata in view of Inao and Choi would necessarily inherently have a peel force of 4 gf/in or less as measured at a peel angle of 180° and a peel speed of 0.3 m/min after attachment to glass, absent evidence to the contrary.
Claims 1, 4, 6, 8-9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP 2002-235052 A, “Kuwabara”) in view of Yamagata et al. (JP 2018-123282 A, “Yamagata”) and Inao et al. (US 2013/0017392 A1, “Inao”). The disclosures of Kuwabara and Yamagata are based off machine translations of the references included with the action mailed 16 July 2025.
With respect to claims 1, 4, 6, 8-9, and 11, Kuwabara discloses a pressure sensitive adhesive ([0005]) comprising an acrylic polymer made from hydroxy-containing monomer (corresponding to the claimed (meth)acrylate monomer having a hydroxyl group) and an isocyanate compound (corresponding to the claimed isocyanate-based curing agent) ([0018], [0020]). Further, the acrylic polymer is also made from alkyl acrylates including methyl (meth)acrylate (corresponding to the claimed alkyl (meth)acrylate monomer having 1 carbon atom), stearyl (meth)acrylate (corresponding to the claimed alkyl (meth)acrylate monomer having 18 carbon atoms), and fluorine-containing (meth)acrylate monomers (corresponding to the claimed (meth)acrylate monomer containing a fluorinated substituent) ([0024]). The hydroxy-containing monomer includes 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl (meth)acrylate, and 4-hydroxybutyl (meth)acrylate ([0020]). The weight average molecular weight of the acrylic polymer is 5,000-500,000 ([0029]), overlapping the presently claimed range. The adhesive further contains a pigment dispersed in a polyurethane resin having hydroxyl groups (corresponding to the claimed hydroxyl group-containing urethane resin, wherein the dispersing resin is mixed with the acrylic component ([0059]). The composition further contains additives including antistatic agents ([0056]). Kuwabara further discloses contains at least 30 wt% total of (meth)acrylic monomers ([0019]) (i.e., there is at least 30 wt% of (meth)acrylic-based monomers compared to non-(meth)acrylic monomers – e.g., olefin monomers, vinyl ester monomers, etc.).
While Kuwabara discloses the (meth)acrylic monomers in the monomers constituting the acrylic polymer is 30 wt% or more ([0019]), Kuwabara does not disclose wherein the acrylic polymer is a monomer mixture including: 0.1-10 wt% of a (meth)acrylate monomer containing a hydroxyl group, 0.1-5 wt% of a (meth)acrylate monomer containing a fluorine-based substituent, 80-95 wt% of an alkyl (meth)acrylate monomer having an alkyl group of 1-10 carbon atoms, and 1-10 wt% of an alkyl (meth)acrylate monomer having an alkyl group of 12-22 carbon atoms, nor does Kuwabara disclose the use of an ionic antistatic agent, nor does Kuwabara disclose wherein the (meth)acrylate copolymer is contained in an amount of 0.5 to 5 parts by weight based on 100 parts by weight of the urethane resin.
Yamagata teaches an adhesive composition containing a polymer (A) having an active hydrogen-containing functional group and an isocyanate-based crosslinking agent (B) (i.e., isocyanate-based curing agent) ([0011-0012]). The polymer (A) is at least one of an acrylic polymer and a urethane polymer ([0015]) and the active hydrogen-containing functional group is a hydroxyl group ([0013]) (i.e., the urethane polymer (A) is a hydroxyl group-containing urethane resin). The acrylic polymer is a copolymer of an alkyl (meth)acrylate and a functional group monomer containing an active hydrogen ([0027]). The alkyl (meth)acrylate includes (meth)acrylic acid alkyl esters having 4-12 carbons, including butyl (meth)acrylate, isobutyl (meth)acrylate, t-butyl (meth)acrylate, pentyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, and isononyl (meth)acrylate ([0028]), corresponding to the claimed alkyl (meth)acrylate monomer having 4-10 carbon atoms. The (meth)acrylic acid alkyl esters having 4-12 carbon atoms are present in an amount of 70-99.9% by mass of the monomer component in order to provide an acrylic polymer having desired glass transition temperature, fluidity, and sufficient adhesive area ([0029]). The active hydrogen-containing functional group monomer includes 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl (meth)acrylate, 4-hydroxybutyl (meth)acrylate, 6-hydroxyhexyl (meth)acrylate, and 8-hydroxyoctyl (meth)acrylate ([0030]), corresponding to the claimed (meth)acrylate monomer containing a hydroxyl group. The active hydrogen-containing functional group monomer is present in an amount of 0.1-30% by mass in order to provide an acrylic polymer having sufficient crosslinking formation and cohesive force ([0032]). Other monomers including (meth)acrylic acid alkyl esters having an alkyl group with a carbon number other than 4-12 can be includes, such as tetradecyl (meth)acrylate and eicosyl (meth)acrylate ([0033]), corresponding to the claimed alkyl (meth)acrylate monomer having 12-22 carbon atoms. Further other monomers include those having a halogen atom, such as fluorine (meth)acrylate ([0035]), corresponding to the claimed (meth)acrylate monomer containing a fluorinated substituent. The other monomers (i.e., the (meth)acrylic acid alkyl esters having an alkyl group with a carbon number other than 4-12 and the fluorine (meth)acrylate) are present in amounts of 29.9% or less in order to provide an acrylic having a desired glass transition temperature, fluidity, and sufficient adhesive area ([0037]). The composition further contains an antistatic agent (E) ([0011]) in order to impart excellent antistatic properties ([0060]). The antistatic agent (E) is an ionic compound ([0016], [0060]).
While Yamagata does not teach individual amounts of the alkyl (meth)acrylates having 12-22 carbon atoms and the (meth)acrylate monomer containing a fluorinated substituent, it would have been obvious to one of ordinary skill in the art to choose equal amounts of each component (i.e., up to 14.95% (29.9/2 = 14.95%) of each component). When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely… on a conclusion of obviousness, ‘from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.’” In re Bozek, 416 F.2d 1385, 1390, 160 USPQ 545, 549 (CCPA 1969). Therefore, one of ordinary skill in the art would have used 14.95% or less of the alkyl (meth)acrylate having 12-22 carbon atoms and 14.95% or less of the (meth)acrylate monomer containing a fluorinated substituent in the monomer mixture; these ranges overlap the presently claimed ranges. 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).
Kuwabara and Yamagata are analogous inventions in the field of adhesives made from (meth)acrylic resin copolymers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the (meth)acrylic resin of Kuwabara to contain an ionic antistatic agent and to be made of 70-99.9% by mass of (meth)acrylic acid alkyl esters having 4-12 carbon atoms, 0.1-30% by mass of the (meth)acrylate monomer containing a hydroxyl group, 14.95% by mass or less of the alkyl (meth)acrylate monomer having 12-22 carbon atoms, and 14.95% by mass or less of the (meth)acrylate monomer containing a fluorinated substituent as taught by Yamagata in order to provide an acrylic adhesive having excellent antistatic properties, a desired glass transition temperature, fluidity, and sufficient adhesive area and cohesiveness (Yamagata, [0029], [0032], [0037], [0060]).
However, Kuwabara in view of Yamagata does not disclose wherein the (meth)acrylate copolymer is contained in an amount of 0.5 to 5 parts by weight based on 100 parts by weight of the urethane resin.
Inao teaches an adhesive made from an acrylic copolymer having a crosslinkable functional group and a urethane resin ([0027]). The crosslinkable functional group is a hydroxyl functional group ([0033]). The acrylic copolymer and urethane resin are present in a ratio of acrylic copolymer/urethane resin of 40/60 to 1/99 ([0027] (7), [0101]) in order to provide an adhesive having sufficient adhesive strength ([0102]). From this ratio, per 100 parts by weight of the urethane resin, the acrylic copolymer is present in an amount of 1.01 (1*100/99 ≈ 1.01) to 66.7 (40*100/60 ≈ 66.7) parts by weight, which overlaps the presently claimed range.
Kuwabara in view of Yamagata and Inao are analogous inventions in the field of adhesives made from acrylic copolymers and urethane resins.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of Kuwabara in view of Yamagata to have the acrylic copolymer be present in 1.01-66.7 parts by based on 100 parts by weight of the urethane resin, including the amounts presently claimed, as taught by Inao in order to provide an adhesive having sufficient adhesive strength (Inao, [0102]).
Regarding the adhesive layer formed from the adhesive composition exhibiting a surface resistivity of 106 to 1011 Ω/□ and a surface protective film comprising the adhesive layer formed from the adhesive composition exhibiting a peel force of 4 gf/in or less when peeled from glass at a peel angle 180° at a peel speed of 0.3 m/min, while Kuwabara in view of Yamagata and Inao may not explicitly recite the adhesive layer formed from the adhesive composition has these properties, given that Kuwabara in view of Yamagata and Inao discloses an otherwise identical adhesive composition made from otherwise identical components in overlapping amounts, it is clear the adhesive layer made from the adhesive composition of Kuwabara in view of Yamagata and Inao and a surface protective film comprising that adhesive layer would necessarily inherently have these properties, absent evidence to the contrary.
Regarding the ionic antistatic agent having no migration to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, while there may be no explicit disclosure from Kuwabara in view of Yamagata and Inao regarding the ionic antistatic agent having no migration to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, given that Kuwabara in view of Yamagata and Inao discloses an otherwise identical adhesive composition made from otherwise identical components in overlapping amounts, including an otherwise identical ionic antistatic agent as presently claimed, it is clear the ionic antistatic agent of Kuwabara in view of Yamagata and Inao would necessarily inherently not migrate to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, absent evidence to the contrary.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP 2002-235052 A, “Kuwabara”) in view of Yamagata et al. (JP 2018-123282 A, “Yamagata”) and Inao et al. (US 2013/0017392 A1, “Inao”) as applied to claim 1 above, and further in view of Koide (JP 2018-058952 A). The disclosures of Kuwabara, Yamagata, and Koide are based off machine translations of the references included with the action mailed 16 July 2025.
With respect to claim 2, while Kuwabara in view of Yamagata and Inao discloses the urethane resin as set forth in the above rejection of claim 1, Kuwabara in view of Yamagata and Inao does not disclose wherein the urethane resin has a weight-average molecular weight of 50,000-200,000.
Koide teaches a pressure sensitive adhesive used in surface protective films ([0009]) where the adhesive comprises a polyurethane having a weight average molecular weight of 10,000-500,000 in order to achieve a high level of coatability, tackiness, and cohesive strength ([0099]).
Kuwabara in view of Yamagata and Inao and Koide are analogous inventions in the field of pressure sensitive adhesives made from polyurethanes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane of Kuwabara in view of Yamagata and Inao to have a weight average molecular weight in the range taught by Koide, including values presently claimed, in order to provide an adhesive having a high level of coatability, tackiness, and cohesive strength (Koide, [0099]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP 2002-235052 A, “Kuwabara”) in view of Yamagata et al. (JP 2018-123282 A, “Yamagata”) and Inao et al. (US 2013/0017392 A1, “Inao”) as applied to claim 1 above, and further in view of Sim et al. (KR 10-2017/0034636 A, “Sim”). The disclosures of Kuwabara, Yamagata, and Sim are based off machine translations of the references included with the action mailed 16 July 2025.
With respect to claim 7, while Kuwabara in view of Yamagata and Inao discloses the use of fluorine-containing (meth)acrylate monomers (corresponding to the claimed (meth)acrylate monomer containing a fluorinated substituent) (Kuwabara, [0024]), Kuwabara in view of Yamagata and Inao does not disclose wherein the fluorine-containing (meth)acrylate monomers comprises at least one of the compounds presently claimed.
Sim teaches a fluorine-containing acrylic adhesive composition ([0001]). The fluorine-containing acrylate monomer is selected from one or more monomers including tetrafluoropropyl (meth)acrylate and hexafluorobutyl (meth)acrylate in order to provide an adhesive having excellent contamination resistance ([0046]).
Kuwabara in view of Yamagata and Inao and Sim are analogous inventions in the field of acrylate-based adhesives comprises a fluorine-containing acrylate monomer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fluorine (meth)acrylate of Kuwabara in view of Yamagata and Inao to be at least one of tetrafluoropropyl (meth)acrylate and hexafluorobutyl (meth)acrylate as taught by Sim in order to provide an adhesive composition having excellent contamination resistance (Sim, [0046]).
Response to Arguments
Due to the amendment to claim 1, the objections to claim 1 are withdrawn.
Due to the amendment to claim 1, the 35 U.S.C. 112(a) rejections of claims 1-15 are withdrawn.
Due to the cancellation of claims 5 and 14, the 35 U.S.C. 112(d) rejections of claims 5 and 14 are withdrawn.
Applicant’s arguments filed 25 February 2026 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues that Yamagata generically discloses ionic compounds as possible antistatic agent, but does not disclose suggesting an ionic antistatic agent in the claimed adhesive composition, and that Yamagata does not identify ionic antistatic agents as preferred, necessary, or critical, nor does Yamagata provide direction to one of ordinary skill in the art to select ionic antistatic agents over the other alternatives. Applicant further argues Yamagata does not disclose nor suggest selecting an ionic antistatic agent to achieve the claimed surface resistivity of 106 to 1011 Ω/□. Applicant argues Yamagata does not associate ionic antistatic agents with the claimed resistivity range, such that the examiner’s prior reliance on inherency no longer applies because the amended claims require a structural selection that is not disclosed nor suggested by Yamagata. Applicant additionally argues Kuwabara does not disclose selecting ionic antistatic agents. Applicant further argues that claim 1 requires the (meth)acrylate copolymer comprises 0.1-5 wt% of a (meth)acrylate monomer containing a fluorine-based substituent, which neither Yamagata nor Kuwabara allegedly explicitly disclose. Applicant argues that while the references generically disclose fluorine-containing components, the generic disclosure does not amount to a disclosure of the specific claimed amount. Applicant further argues the Office’s position of inherency regarding the surface resistivity is incorrect because the cited references at best suggest that antistatic properties may be obtained. Applicant further argues the amendment to claim 1 requiring 0.5-5 parts by weight of the (meth)acrylate copolymer with respect to 100 parts by weight of the urethane resin defines a weight ration that is critical to achieving the technical effect of the (meth)acrylate copolymer floating to the outer surface of the adhesive layer in a “small amount synergistic” manner, reducing peel force via its hydrophobic groups, while its hydroxyl groups crosslink with the urethane resin and isocyanate curing agent to prevent antistatic migration. Applicant argues Yamagata does not disclose a urethane resin as the main component and a small amount of (meth)acrylate copolymer, nor the claimed weight ratio, but instead discloses the acrylate polymer in Yamagata accounts for 70-99.9 mass% of the monomer components (Yamagata, [0029]), which Applicant argues is inconsistent with the small amount synergistic ratio. Applicant argues that although the ratio disclosed by Inao overlaps with the presently claimed invention, its purpose is to prevent the adhesive strength from decreasing due to reduced thickness, which Applicant argues is “completely opposite” to the purpose of the present application of achieving low peel force and preventing residue. Applicant additionally argues none of the cited references disclose the newly added limitation of claim 1 “no migration of the ionic antistatic agent to the glass surface after storage at 60°C and 90% relative humidity for 10 days”. Applicant further argues claim 1’s four-component balance is critical. Applicant additionally argues that the examiner’s proposed combination lacks a reasonable expectation of success at immobilizing ionic species while maintaining low peel force and controlled resistivity. Applicant additionally argues that none of the cited references suggests incorporating hydroxyl-containing fluorinated copolymers into a urethane-crosslinked system would immobilize an ionic species while maintaining both low peel force and controlled surface resistivity. Applicant further argues the examiner’s obviousness rejections are based off impermissible hindsight reasoning. Applicant additionally argues the Office’s position of inherency regarding surface resistivity and peel force is incorrect, and that the mere presence of an ionic antistatic agent in Yamagata does not establish that no migration necessarily occurs under the claimed environmental stress. Applicant further argues the claimed compositional range is not routine optimization of a result-effective variable, and that Yamagata does not identify the specific weight ratio of fluorinated (meth)acrylate copolymer to urethane resin, nor does Yamagata recognize the incompatibility between low peel force and suppression of ionic antistatic agent migration. Applicant argues the instant specification demonstrates that amounts outside the claimed 0.5-5 parts per 100 parts urethane result in a loss of the desired combined performance, which Applicant argues demonstrates criticality. The examiner respectfully disagrees for the following reasons.
In response to Applicant’s argument that Yamagata merely discloses an ionic antistatic agent as being one from a list of many, this is not found persuasive. Given that the antistatic agents disclosed by Yamagata includes ionic antistatic agents identical to that presently claimed, it would have been obvious to one of ordinary skill in the art to choose any antistatic agent in Yamagata including the claimed ionic antistatic agent, absent some evidence to the contrary. One of ordinary skill in the art would consider all the antistatic agents disclosed by Yamagata to be equivalent and interchangeable and equally suitable, absent a showing of criticality by Applicant of the claimed ionic antistatic agent. In MPEP 2141, III, one of the rationales set forth as to “why” the claimed invention would be obvious is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, given that Yamagata discloses a finite number of antistatic agent and given that the references discloses all the antistatic agents being equally applicable, there would be a reasonable expectation of success when using the ionic antistatic agent as set forth by the examiner. It is further noted that the fact that “the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious…”. See, e.g., Merck & Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”). Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004); see also MPEP 2123 II.
In response to Applicant’s argument that Yamagata does not disclose selecting an ionic antistatic agent to achieve the claimed surface resistivity of 106 to 1011 Ω/□, this is not found persuasive. The examiner acknowledges there is no explicit disclosure from Yamagata in view of Inao regarding the adhesive layer formed from the adhesive composition exhibiting a surface resistivity of 106 to 1011 Ω/□. However, while Yamagata in view of Inao may not explicitly recite the adhesive layer formed from the adhesive composition has these properties, given that Yamagata in view of Inao discloses an otherwise identical adhesive composition made from otherwise identical components in overlapping amounts, it is clear the adhesive layer made from the adhesive composition of Yamagata in view of Inao and a surface protective film comprising that adhesive layer would necessarily inherently have these properties, absent evidence to the contrary. The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the references teach all of the claimed components. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not. Further, as set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103.
In response to Applicant’s argument that Kuwabara does not disclose an ionic antistatic agent, the examiner agrees – while Kuwabara discloses the use of an antistatic agent ([0056]), Kuwabara does not disclose wherein the antistatic agent is an ionic antistatic agent. However, Kuwabara is not being used to meet this limitation; rather, Yamagata is being used. As set forth above, Yamagata discloses the use of an antistatic agent, including ionic antistatic agents, in order to impart excellent antistatic properties (Yamagata, [0011], [0016], [0060]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the antistatic agent of Kuwabara to be the antistatic agent, including an ionic antistatic agent, as taught by Yamagata in order to impart excellent antistatic properties (Yamagata, [0011], [0016], [0060]).
In response to Applicant’s argument that the cited references do not disclose the use of 0.1-5 wt% of a (meth)acrylate monomer containing a fluorine-based substituent, this is not found persuasive. As set forth above, Yamagata discloses the (meth)acrylic acid alkyl ester having an alkyl group of 4-12 carbon atoms (corresponding to the claimed alkyl (meth)acrylate monomer having 4-10 carbon atoms) is present in an amount of 70-99.9 mass% of the monomer component ([0029]), overlapping the presently claimed range. The active hydrogen-containing functional group monomer (corresponding to the claimed (meth)acrylate monomer containing a hydroxyl group) is present in an amount of 0.1-30 mass% of the monomer components ([0032]), overlapping the presently claimed range. Yamagata discloses the use of other monomers, either alone or in combination ([0037]), where the other monomers include (meth)acrylic acid alkyl esters having an alkyl group with a carbon number other than 4-12 (corresponding to the claimed alkyl (meth)acrylate monomer having 12-22 carbon atoms as set forth above) ([0033]) and monomers having halogen atoms, such as fluorine (meth)acrylate ([0035]). These other monomers (i.e., the (meth)acrylate monomer containing a fluorinated substituent and the alkyl (meth)acrylate having 12-22 carbon atoms) are present in an amount of 29.9% by mass or less ([0037]). While Yamagata may not disclose individual amounts of the alkyl (meth)acrylates having 12-22 carbon atoms and the (meth)acrylate monomer containing a fluorinated substituent, it would have been obvious to one of ordinary skill in the art to choose equal amounts of each component (i.e., up to 14.95% (29.9/2 = 14.95%) of each component). When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely… on a conclusion of obviousness, ‘from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.’” In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Therefore, one of ordinary skill in the art would have used 14.95% or less of the alkyl (meth)acrylate having 12-22 carbon atoms and 14.95% or less of the (meth)acrylate monomer containing a fluorinated substituent in the monomer mixture; these ranges overlap the presently claimed ranges. 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). Thus, Yamagata discloses amounts overlapping the presently claimed ranges and therefore, in combination with the other references, renders the claims obvious.
In response to Applicant’s argument that the Office’s position of inherency regarding the surface resistivity is incorrect, this is not found persuasive. The examiner acknowledges there is no explicit disclosure from the cited reference regarding the adhesive layer formed from the adhesive composition exhibiting a surface resistivity of 106 to 1011 Ω/□. However, while the cited references may not explicitly recite the adhesive layer formed from the adhesive composition has these properties, given that the cited references disclose an otherwise identical adhesive composition made from otherwise identical components in overlapping amounts, it is clear the adhesive layer made from the adhesive composition of the cited references and a surface protective film comprising that adhesive layer would necessarily inherently have these properties, absent evidence to the contrary. The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the references teach all of the claimed components. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not. Further, as set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103.
In response to Applicant’s argument that the references do not disclose a small amount of the (meth)acrylate copolymer, and that Yamagata discloses the acrylate polymer accounts for 70-99.9 mass% of the monomer components, this is not found persuasive. Firstly, the examiner acknowledges neither Yamagata nor Kuwabara disclose wherein the (meth)acrylate copolymer is contained in an amount of 0.5 to 5 parts by weight based on 100 parts by weight of the urethane resin. However, Inao teaches an adhesive made from an acrylic copolymer having a crosslinkable functional group and a urethane resin ([0027]). The crosslinkable functional group is a hydroxyl functional group ([0033]). The acrylic copolymer and urethane resin are present in a ratio of acrylic copolymer/urethane resin of 40/60 to 1/99 ([0027] (7), [0101]) in order to provide an adhesive having sufficient adhesive strength ([0102]). From this ratio, per 100 parts by weight of the urethane resin, the acrylic copolymer is present in an amount of 1.01 (1*100/99 ≈ 1.01) to 66.7 (40*100/60 ≈ 66.7) parts by weight, which overlaps the presently claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of Yamagata or Kuwabara to have the acrylic copolymer be present in 1.01-66.7 parts by based on 100 parts by weight of the urethane resin, including the amounts presently claimed, as taught by Inao in order to provide an adhesive having sufficient adhesive strength (Inao, [0102]). Secondly, in response to Applicant’s argument that Yamagata discloses the acrylate polymer accounts for 70-99.9 mass% of the monomer components, the examiner respectfully disagrees. Yamagata discloses the (meth)acrylic acid alkyl ester having an alkyl group of 4-12 carbon atoms (corresponding to the claimed alkyl (meth)acrylate monomer having 4-10 carbon atoms) is present in an amount of 70-99.9 mass% of the monomer component ([0029]). That is, the (meth)acrylic acid alkyl ester is present in an amount of 70-99.9 mass% of the (meth)acrylate copolymer, not the overall adhesive composition, and thus Yamagata does not teach away from small amount of the (meth)acrylate copolymer.
In response to Applicant’s argument that Inao’s purpose of having a small amount of (meth)acrylate copolymer relative to the urethane is different than that of the present application, this is not found persuasive. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Further, “obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation.” In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1966). Additionally, the fact that applicant 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).
In response to Applicant’s argument that the cited references are silent regarding the limitation “no migration of the ionic antistatic agent to the glass surface after storage at 60°C and 90% relative humidity for 10 days” and that this is not an inherent property, this is not found persuasive. While there may be no explicit disclosure from the cited references regarding the ionic antistatic agent having no migration to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, given that the cited references disclose an otherwise identical adhesive composition made from otherwise identical components in overlapping amounts, including an otherwise identical ionic antistatic agent as presently claimed, it is clear the ionic antistatic agent of the cited references would necessarily inherently not migrate to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, absent evidence to the contrary. The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the references teach all of the claimed components. Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not. Further, as set forth in MPEP 2112.01 II, “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 102 or 35 U.S.C. 103.
In response to Applicant’s argument that they have demonstrated criticality and unexpectedly superior results from the claimed four-component balance, this is not found persuasive because the data is not commensurate in scope with the claims for the following reasons.
Firstly, the Examples relate to specific monomer mixtures made from specific monomers being 87 parts by weight butyl methacrylate, 7 parts by weight stearyl methacrylate, 3 parts by weight hydroxybutyl acrylate, and 3 parts by weight tridecafluorooctyl acrylate ([0098], [00102], [00107], [00109]), whereas the present claims broadly allow for any (meth)acrylate monomer containing a hydroxyl group, any (meth)acrylate monomer containing a fluorine-based substituent, any alkyl (meth)acrylate having any alkyl group of 1-10 carbon atoms, and any alkyl (meth)acrylate having any alkyl group of 12-22 carbon atoms.
Secondly, the Examples relate to specific amounts of the specific monomers above being 87 wt% butyl methacrylate (87*100/[87+7+3+3] = 87%), 7 wt% stearyl methacrylate (7*100/[87+7+3+3] = 7%), 3 wt% hydroxybutyl acrylate (3*100/[87+7+3+3 = 3%), and 3 wt% tridecafluorooctyl acrylate (3*100/[87+7+3+3] = 3%), whereas the present claims broadly allow for 80-95 wt% of any alkyl (meth)acrylate monomer having any alkyl group of 1-10 carbon atoms, 1-10 wt% of any alkyl (meth)acrylate monomer having 12-22 carbon atoms, 0.1-10 wt% of any (meth)acrylate monomer having a hydroxyl group, and 0.1-5 wt% of any (meth)acrylate monomer containing any fluorine-based substituent. There is no data provided at any of the upper or lower endpoints of the claimed ranges.
Thirdly, the Examples relate to (meth)acrylate copolymers having a specific weight-average molecular weight of 28,000 g/mol ([0098], [00102], [00107], [00109]), whereas the present claims broadly allow for any (meth)acrylate copolymer having any weight-average molecular weight.
Lastly, the Examples relate to a specific adhesive composition made by mixing 100 parts by weight of a specific urethane resin having a weight-average molecular weight of 120,000 being SH-101 from Toyochem Co., Ltd.; 1.5 parts by weight of the (meth)acrylate copolymer above; 0.05 or 0.1 parts by weight of a pyridinium-based antistatic agent being IL-P14 from Koei Chem Co., Ltd., or 0.01 or 0.05 parts by weight of an ammonium-based antistatic agent; and 15 parts by weight of a mixture containing an isocyanurate isocyanate trimer and an isophorone diisocyanate at a weight ratio of 7:3 being DR7030X from Samyoung Ink Co., Ltd. ([0099], [00102-00103], [00109-00110]), whereas the present claims broadly allow for any urethane resin containing a hydroxyl group present in any amount, any isocyanate-based curing agent present in any amount, any amount of any (meth)acrylate copolymer made from the claimed monomer mixture, and any antistatic agent in any amount.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
In response to applicant’s argument that none of the cited references suggests incorporating hydroxyl-containing fluorinated copolymers into a urethane-crosslinked system would immobilize an ionic species while maintaining both low peel force and controlled surface resistivity, this is not found persuasive. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Further, “obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant’s motivation.” In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1966). Additionally, the fact that applicant 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).
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). Here, the motivation to combine the references come from the references themselves as set forth above and not from the present specification, and thus the examiner has not used impermissible hindsight reasoning.
In response to Applicant’s argument that the mere presence of an ionic antistatic agent in Yamagata does not establish that no migration necessarily occurs under the claimed environmental stress, this is not found persuasive because Applicant has not provided any evidence to support this position. While there may be no explicit disclosure from the cited references regarding the ionic antistatic agent having no migration to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, given that the cited references disclose an otherwise identical adhesive composition made from otherwise identical components in overlapping amounts, including an otherwise identical ionic antistatic agent as presently claimed, it is clear the ionic antistatic agent of the cited references would necessarily inherently not migrate to a surface of the glass after storage at 60°C and 90% relative humidity for 10 days, absent evidence to the contrary.
In response to Applicant’s argument that the claimed composition range is not merely routine optimization and demonstrates criticality, this is not found persuasive because the data provided in the specification that Applicant relies upon for support for their position of non-obviousness is not commensurate in scope with the claims as set forth above.
In response to Applicant’s argument that Yamagata does not identify the specific weight ratio of the fluorinated (meth)acrylate copolymer to urethane resin, this is not found persuasive. The examiner acknowledges Yamagata is silent regarding the specific weight ratio of the fluorinated (meth)acrylate copolymer to the urethane resin, but Yamagata is not being used to meet this limitation. Instead, Inao is being used. As set forth above, Inao teaches an adhesive made from an acrylic copolymer having a crosslinkable functional group and a urethane resin ([0027]). The crosslinkable functional group is a hydroxyl functional group ([0033]). The acrylic copolymer and urethane resin are present in a ratio of acrylic copolymer/urethane resin of 40/60 to 1/99 ([0027] (7), [0101]) in order to provide an adhesive having sufficient adhesive strength ([0102]). From this ratio, per 100 parts by weight of the urethane resin, the acrylic copolymer is present in an amount of 1.01 (1*100/99 ≈ 1.01) to 66.7 (40*100/60 ≈ 66.7) parts by weight, which overlaps the presently claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive of Yamagata to have the acrylic copolymer be present in 1.01-66.7 parts by based on 100 parts by weight of the urethane resin, including the amounts presently claimed, as taught by Inao in order to provide an adhesive having sufficient adhesive strength (Inao, [0102]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571) 272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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 E 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787