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 .
Applicant’s election without traverse of Group I, Claims 1 – 7 in the reply filed on 4/30/2026 is acknowledged. Claims 8-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ozaki (JP 20144234460 as listed on the IDS dated 4/28/2023).
Regarding claim 1, Ozaki teaches an adhesive composition for use in an adhesive sheet (Abstract) wherein the adhesive composition has a storage modulus at 25 °C of 1.0 x 107 to 2.4 x 108Pa (corresponding 10 MPa to 240 MPa) thereby reading on the claimed range of 10 MPa to 500 MPa.
Ozaki is silent on the storage modulus of the adhesive at 37 °C.
However, Ozaki teaches the adhesive is formed from monomer units such methyl acrylates and acrylonitrile (claim 3), further comprising a hydroxyl group containing (meth)acrylate (claim 4), and wherein the monomer units are 2-ethylhexyl (meth)acrylate, butyl acrylate, among others ([0018], [0026]). These monomer units are the same or substantially similar to the monomer units used in the instant application’s pressure sensitive adhesive resin (see instant specification Examples). Because of the substantially similar monomers and the overlapping storage modulus at 25 °C, the adhesive resin of Ozaki is expected to have an overlapping storage modulus at 37 °C as required by the instant claim. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Ozaki is further silent on the surface hardness at 37 °C.
However, Ozaki teaches the surface hardness of the adhesive can be optimized based on the resin thickness and storage modulus ([0025], [0048]). Case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the surface hardness for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding claims 2 and 3, Ozaki is further silent on the unloading curve displacement and the area inside the unloading curve displacement.
However, as set forth above, Ozaki teaches the adhesive is formed from monomer units that are the same or substantially similar to the monomer units used in the instant application’s pressure sensitive adhesive resin. Because of the substantially similar monomers and the overlapping storage modulus at 25 °C, the adhesive resin of Ozaki is expected to have the same or overlapping unloading curve displacement and the area inside the unloading curve displacement as required by the instant claim. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding claim 4, Ozaki teaches the adhesive having a glass transition temperature from -20 °C to 10 °C (Abstract) wherein after crosslinking the glass transition temperature is 20 to 40 °C (claim 7) thereby reading on the claimed range of 5 to 40 °C.
Regarding claim 5, Ozaki teaches acrylic resins (claim 3).
Regarding claim 6, Ozaki teaches an adhesive sheet (Title, Abstract).
Regarding claim 7, Ozaki teaches a peel strength of 5.4, 5.6 N/25 mm, respectively (Table 1).
Ozaki does not particularly teach the peel strength at 10 mm.
However, as set forth above, Ozaki teaches the adhesive is formed from monomer units that are the same or substantially similar to the monomer units used in the instant application’s pressure sensitive adhesive resin. Because of the substantially similar monomers and the overlapping storage modulus at 25 °C, the adhesive resin of Ozaki is expected to have the same or overlapping peel strength as required by the instant claim. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ha et al. (US PG Pub 2011/0149211)
Ha et al. teach a pressure sensitive adhesive (Abstract) wherein the pressure sensitive adhesive is used in a film [0005], wherein the pressure sensitive adhesive has a soft area and a hard area, wherein the soft and hard areas are formed by combining at least two pressure sensitive adhesives having a higher storage modulus than the other area [0023] in order to achieve excellent durability and reliability. Ha et al. teach the hard area having a store modulus of 1 MPa to 50 MPa [0024] at a temperature of 30 °C. Ha et al. teach monomer units containing hydroxy groups, acrylates, and nitrogen including N-vinyl pyrrolidone [0041].
Joo, et al. (US PG Pub 2014/0045319 A1)
Joo discloses a pressure-sensitive adhesive sheet comprising a substrate film, wherein the film has a modulus of 10 to 200 MPa (claims 1, 20, 25) and a glass transition temperature of -20 °C or more (claum 3), wherein a preferred embodiment the film has a Tg of 18 °C and a modulus of 185 MPa (see Table 1 Example 2). Joo further discloses optimizing physical properties such as hardness [0038]. Joo et al. teach (meth)acrylic polymer components [0010] including nitrogen containing monomers [0026] and hydroxyl groups [0023].
Turner et al. (WO 2019/204541 A1; as listed on the IDS dated 4/28/2023)
Turner et al. teach an adhesive composition comprising a storage modulus at 37 °C from about 3 MPa to 9.5 MPa (Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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