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 .
Priority
The instant application is the national stage entry of PCT/JP2021/038313 filed 15 October 2021. Acknowledgment is made of applicant's claim for foreign priority to foreign application JP2020-174005 filed 15 October 2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Examiner's Note
Applicant's amendments and arguments filed 9 January 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant's response, filed 9 January 2026, it is noted that claims 16 has been amended and claim 35 newly added. No new matter or claims has been added. Support can be found in the claims as originally filed and the specification at [0021].
Status of the Claims
Claims 16 and 18-35 are pending.
Claims 16 and 18-35 are rejected.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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 16 and 18-34 are rejected under 35 U.S.C. 103 as being unpatentable over Oh et al. (US 2018/0265827).
Oh teaches a formulation (Comp. B2) that comprises a monomer DMAA (N-dimethylacrylamide), a monomer DMAPMA (dimethylamino propyl-methacrylamide), a C8 monomer (N-2-ethylhexyl acrylamide) (3.83 g), and an initiator (Table 2a). Comp. B2 is prepared by mixing the monomers and heating the reaction vessel [0227-0233]. The water uptake of Comp. B2 is reported as being 0.1042 per gram of polymer, or about 10.4% per gram (Table 12). The C8 monomer (N-2-ethylhexyl acrylamide) reads on the N-mono-substituted (meth)acrylamide of formula I of instant claim 16 and is present in an amount of over 1% (3.83 g in a total of 200 g of composition equates to about 2%). DMAPMA reads on the compound of instant claim 31 and DMAA reads on that of instant claim 32.
Regarding the water uptake, the prior art value of 10.4% is slightly higher than the claimed endpoint of 10.0%, therefore a 10.0% water uptake would have been obvious. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (See MPEP 2131.03 (III)).
Regarding instant claims 18 and 30, the properties of surface tension and consistency of the N-substituted (meth)acrylamide are inherently present in N-2-ethylhexyl acrylamide, which reads on formula I and is identified by the Applicant in the specification [0022] as a suitable acrylamide for the claimed invention. It is noted that “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, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)). The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding instant claims 22, 24-29, and 33-34, the preamble of said claims recites an intended use of the claimed composition, do not result in a structural difference over the prior art, and are thus given minimal patentable weight (See MPEP 2111.02 (II)).
As such, claims 16,18-22, and 24-34 are obvious in view of the prior art.
Claims 16 and 18-35 are rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka et al. (US 2011/0253301) in view of Cox et al. (US 2021/0324243).
Yamanaka teaches a pressure sensitive adhesive layer comprising tert-octyl acrylamide in 10 parts per 100 parts resin (10%) [0152]. The adhesive layer is prepared using an initiator and a second monomer of isooctyl acrylate, which are then polymerized by UV radiation before a diacrylate crosslinking agent is added [0150].
Yamanaka does not teach the saturated water absorption.
Cox teaches pressure sensitive adhesives and states that lower water uptake prevents swelling and a decrease in resistivity [0046]. Lower water uptake is defined as 2 wt% or less [0046].
It would have been prima facie obvious to prepare the pressure sensitive adhesive layer comprising tert-octyl acrylamide of Yamanaka and to modify it with Cox to achieve a water uptake of 2% or less, in order to prevent swelling and a decrease in resistivity. The composition further comprising an initiator, a second monomer of isooctyl acrylate, a diacrylate crosslinking agent renders obvious instant claims 16, 19-21, and 31-32.
Regarding instant claims 18 and 30, the properties of surface tension and consistency of the N-substituted (meth)acrylamide are inherently present in tert-octyl acrylamide, which reads on formula I and is identified by the Applicant in the specification [0022] as a suitable acrylamide for the claimed invention. It is noted that “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, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)). The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding instant claims 22, 24-29, and 33-34, the preamble of said claims recites an intended use of the claimed composition, do not result in a structural difference over the prior art, and are thus given minimal patentable weight (See MPEP 2111.02 (II)).
Regarding claim 23, the composition of Yamanaka is used to form an adhesive layer. As such, claims 16 and 18-35 are obvious in view of the prior art.
Response to Arguments
Applicant's arguments filed 9 January 2026 have been fully considered but they are not persuasive. The Applicant argues, on pages 9-10 of their remarks that the water uptake of Comp Ex B2 in Oh has a water uptake of 10.42%, which is higher than 10.0% as claimed. Moreover, the Applicant argues that Oh teaches a preferred water uptake value of 2 g/g, which is approximately 200% or more.
In response, the Applicant is erroneously pointing to narrow embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments (see MPEP § 2123). While the comparative examples in the art are non-preferred, they still some efficacy in deposition on hair from tap water. As such, the compositions are useful for their intended use at the lower water uptake values of about 10.42% as well as the preferred higher values. That being said, the prior art value of 10.4% is slightly higher than the claimed endpoint of 10.0%, therefore a 10.0% water uptake would have been obvious. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (See MPEP 2131.03 (III)).
The Applicant argues, on page 9 of their remarks, that the prior art does not teach the identical chemical structure of the instant claims and therefore the recited properties are not necessarily present.
In response, both Oh and Yamanaka teach an N-substituted (meth)acrylamide that reads on the structure of claim 16. Accordingly, the properties of surface tension and consistency of the N-substituted (meth)acrylamide are inherently present in the compounds of formula I that are identified by the Applicant in the specification [0022] as suitable acrylamides for the claimed invention.
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 ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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