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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Application Status
This is a first action on the merits. A preliminary amendment was filed on 27 February 2023 amending claim 10 and cancelling claims 1-9 and 12. Claims 13-21 have been added. Claims 10, 11, and 13-21 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 27 February 2023, 12 June 2023, and 13 November 2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings received on 27 February 2023 are acceptable.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 10, 13-18 and 20-21 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 11 and 14-32 of copending Application No. 18/023,613. The claims filed on 17 July 2025 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 10, Claim 11 of the ‘613 application also recites a display device comprising a display and support in which the display includes a cover member and an organic electroluminescence unit and a pressure-sensitive adhesive attached to the support. The adhesive includes a black first colorant and a metal oxide second colorant (reading on two species of colorants), has a light transmittance of 30% or lower (overlapping the claimed amount of 5% or higher) and a light reflectance of 8% or higher. The light reflectance is analogous to the haze value of the adhesive layer as this results in light being diffused and scattered away from the adhesive layer rather than passing through the adhesive layer. Thus this overlaps the claimed concept of a haze value of 20 or higher.
Regarding claim 13, claim 17 of the ‘613 application also recites a pressure-sensitive adhesive sheet having a pressure-sensitive adhesive layer which comprises at least two species of colorants. The adhesive layer has a light transmittance of 30% or lower (overlapping the claimed amount of 5% or higher) and a light reflectance of 8% or higher. The light reflectance is analogous to the haze value of the adhesive layer as this results in light being diffused and scattered away from the adhesive layer rather than passing through the adhesive layer. Thus this overlaps the claimed concept of a haze value of 20 or higher.
Regarding claim 14, Claim 17 of the ‘613 application recites a light transmittance of 30% or lower which overlaps the claimed range.
Regarding claim 15, claim 18 of the ‘613 application recites using from 1-10 wt. % of colorants which is within the claimed range of below 20% by weight.
Regarding claim 16, claim 19 of the ‘613 application recites this limitation.
Regarding claim 17, claim 22 of the ‘613 application recites this limitation.
Regarding claim 18, claim 23 of the ‘613 application recites this limitation.
Regarding claim 20, claim 25 of the ‘613 application recites this limitation.
Regarding claim 21, claim 26 of the ‘613 application recites this limitation.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 10, 11, 13, 15, 18, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hao (U.S. Pat. 9,960,389 B1).
Regarding claim 10, Hao discloses a polymeric adhesive film used for display devices, see abstract and col. 5, lines 64-66. The display includes an organic electroluminescent layer 102, a substrate 101 reading on a support as shown in FIG. 4, and adhesive films 12, 16, 20, and 24 shown in FIG. 3. Note that organic light-emitting diode panel 10 in FIG. 3 represents the more detailed laminate 100 shown in FIG. 4. See description at col. 11, lines 21-37 and col. 11, line 64 through col. 12, line 14.
The adhesive layer includes an adhesive polymer matrix and particles, see col. 5, lines 12-18 and lines 33-40. The adhesive layer has a visible light transmission of at least 85% and a bulk haze of from 15-80% (preferably 30-50%), see col. 5, lines 55-63.
The particles are uniformly dispersed within the adhesive polymer matrix, see col. 7 lines 22-23. Suitable particles include inorganic particles and combinations of particles, see col. 9, lines 6-13. Specific suitable inorganic particles include SiO2, Al2O3, ZrO2, ZnO, and mixtures thereof. Each of these are known white colorants. Using a blend of colorants reads on the claimed at least two species of colorants.
Although there are no specific examples in Hao which include a blend of multiple species of colorants, it would have been obvious to have used a blend of colorants to arrive at the claimed display device, as Hao teaches that a mixture of different particles can be used in the adhesive layer.
Regarding claim 11, Hao discloses a display device comprising an adhesive layer meeting the total light transmittance, haze value, and two species of colorants as described above in regards to claim 10. The display device shown in FIG. 3 includes a touch panel 22 which is further detailed as item 300 in FIG. 6. See description at col. 12, lines 40-54. This touch panel includes a first electrode 302 and second electrode 304 of a conductive metal such as copper metal mesh or silver nanowires, see col. 12, lines 55-66. The adhesive layers 20 and 24 in FIG. 3 cover at least a portion of the metal member surface of component 22 which is positioned between adhesive layers 20 and 24.
Regarding claim 13, Hao discloses a polymeric adhesive film used for display devices, see abstract and col. 5, lines 64-66.
The adhesive layer includes an adhesive polymer matrix and particles, see col. 5, lines 12-18 and lines 33-40. The adhesive layer has a visible light transmission of at least 85% and a bulk haze of from 15-80% (preferably 30-50%), see col. 5, lines 55-63.
The particles are uniformly dispersed within the adhesive polymer matrix, see col. 7 lines 22-23. Suitable particles include inorganic particles and combinations of particles, see col. 9, lines 6-13. Specific suitable inorganic particles include SiO2, Al2O3, ZrO2, ZnO, and mixtures thereof. Each of these are known white colorants. Using a blend of colorants reads on the claimed at least two species of colorants.
Although there are no specific examples in Hao which include a blend of multiple species of colorants, it would have been obvious to have used a blend of colorants to arrive at the claimed display device, as Hao teaches that a mixture of different particles can be used in the adhesive layer.
Regarding claim 15, Hao teaches that the amount of particles in the adhesive layer is less than 15 vol. % and preferably at least 1 vol. % of the layer, see col. 9, lines 14-23.
The volume loading of particles disclosed in Hao overlaps the claimed weight % range. For example, assuming a polymeric adhesive with a density of about 1.0 g/cm3 and ZrO2 particles with a density of about 5.7 g/cm3, using 1 vol. % of particles is about 5.4 wt. % particles in the layer.1
Regarding claim 18, a suitable polymer for the adhesive matrix is an acrylic based material, see col. 9, lines 44-65.
Regarding claim 20, FIG. 1 of Hao shows a single layer polymeric adhesive film with no substrate layer, see description at col. 3, lines 66-67 and col. 5, lines 4-11.
Regarding claim 21, Hao teaches that organic light emitting diodes (OLEDs) are used in cell phones, personal display devices, and digital cameras, see col. 1, lines 6-15. The invention of Hao is suitable for such portable electronic devices.
Claims 13-16 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020-037657 A. Applicant’s provided translation of JP ‘657 was relied upon for analysis.
Regarding claim 13, JP ‘657 discloses an adhesive sheet for laminating an optical member which comprises at least 1 coloring agent selected from metal oxides and carbon black, see paragraph [0008]. The adhesive sheet has a total light transmittance of 40% or more and preferably 65% or less, see paragraph [0016]. The adhesive sheet has a haze value of 0.5% or more and 30% or less, see paragraph [0017].
These ranges overlap the claimed ranges of a total light transmittance of 5% or higher and a haze value of 20 or higher. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Multiple coloring agents such as metal oxides and carbon black can be included as described in paragraph [0038].
Regarding claim 14, The adhesive sheet has a total light transmittance of 40% or more and preferably 65% or less, see paragraph [0016]. This overlaps the claimed range.
Regarding claim 15, the total amount of colorants in the adhesive is preferably 0.2 parts by mass or more and 5 parts or less, based on 100 parts by mass of the acrylic adhesive polymer, see paragraph [0041]. This is within the claimed range.
Regarding claim 16, Multiple coloring agents such as metal oxides and carbon black can be included as described in paragraph [0038]. Specific oxides such as titanium oxide, zirconium oxide, and others are specified in paragraph [0039].
Regarding claim 18, JP ‘657 teaches using an acrylic polymer as the adhesive polymer, see paragraphs [0012] and [0027].
Regarding claim 19, JP ‘657 does not expressly state the peel strength of the adhesive sheet on a stainless steel plate as determined by JIS Z 0237. However, JP ‘657 does teach that the adhesive composition may include a tackifier resin, see paragraph [0062]. One of ordinary skill in the pressure-sensitive adhesive art would be able to adjust the amount of tackifier present in the adhesive composition to arrive at the desired level of tack.
Regarding claim 20, JP ‘657 teaches that the adhesive sheet is a double-sided adhesive sheet with a pair of release sheets. See FIG. 1 and paragraph [0022]. Upon removal of the release sheets, the resulting adhesive sheet is a double-faced pressure-sensitive adhesive sheet free of a substrate as claimed.
Regarding claim 21, The limitation that the adhesive is “for use in joining a member in a portable electronic device” is deemed to be a statement with regard to the intended use and is not further limiting in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2111.02. In this case, JP ‘657 teaches that the adhesive sheet is used for adhering members of a touch panel and an image display device, see paragraph [0069]. Thus the adhesive sheet is considered to be capable of use for joining a member in a portable electronic device.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2020-037657 A in view of KR 2015-0049033 A. Applicant’s provided translations of JP ‘657 and KR ‘033 were relied upon for analysis.
Regarding claim 17, JP ‘657 discloses an adhesive sheet for laminating an optical member which comprises at least 1 coloring agent selected from metal oxides and carbon black, see paragraph [0008]. The adhesive sheet has a total light transmittance of 40% or more and preferably 65% or less, see paragraph [0016]. The adhesive sheet has a haze value of 0.5% or more and 30% or less, see paragraph [0017].
These ranges overlap the claimed ranges of a total light transmittance of 5% or higher and a haze value of 20 or higher. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Multiple coloring agents such as metal oxides and carbon black can be included as described in paragraph [0038].
However, JP ‘657 does not specify the ratio of the amount of two different coloring agents added.
KR ‘033 teaches an adhesive composition and adhesive sheet for touch screen displays which includes an acrylic resin, a curing agent, a white pigment, and a black pigment, see paragraphs [0003] and [0007]. The white pigment is included in the range of 0.5 to 10 parts by weight based on 100 parts of acrylic resin, see claim 8. The black pigment is included in the range of 0.1 to 3 parts by weight based on 100 parts of acrylic resin, see claim 10. The weight ratio of white pigment to black pigment is from 3:1 to 5:1. See claim 11. By considering the black pigment to be “C1” and the white pigment to be “C2”, this is a ratio of 1:5 to 1:3, or 0.200 to 0.333. This overlaps the claimed range.
It would have been obvious to have used a combination of white and black pigments in the disclosed ratios of KR ‘033 as the pigments of JP ‘657 to arrive at the claimed invention, as this can provide a grey color as desired, see KR ‘033 at [0068] and [0069].
KR ‘033 and JP ‘657 are analogous because they are similar in structure and function, as each discloses acrylic pressure-sensitive adhesive sheets with metal oxide and carbon black pigments for use with optical display devices.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
1 Sample calculation: 100 cm3 of loaded adhesive having 1 vol. % ZrO2 would include 1 cm3 of ZrO2 and 99 cm3 of adhesive matrix. Using assumed densities of 1.0 g/cm3 for the adhesive matrix and 5.7 g/cm3 for the ZrO2 particles, this means the 1 cm3 of particles have a mass of 5.7 g and the 99 cm3 of adhesive has a mass of 99 g. Thus the weight loading of particles is (5.7 g particles ÷ (5.7 g particles + 99 g adhesive))×100% = about 5.4 wt. % particles