DETAILED ACTION
Claim Objections
Claim 1 is objected to because of the following informalities: In line 3 of claim, please replace “the reaction” with “a reaction”.
Claim 1 is objected to because of the following informalities: In line 8, please replace “the increase” with “an increase”.
Claim 10 is objected to because of the following informalities: In line 1, please replace “comprising” ” with “comprising: ”.
Claim 10 is objected to because of the following informalities: In line 6, please replace “the reaction” with “a reaction”.
Claim 10 is objected to because of the following informalities: On page 22, line 1, please replace “the increase” with “an increase”.
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.
Claim 7 is rejected under 35 U.S.C. 112(d) 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. Claim is drawn to a pressure sensitive adhesive composition that is optically clear. The independent claim states that the pressure sensitive adhesive composition is optically transparent. Neither the claims nor specification differentiates the two terms and working examples do not provide quantitative test data to distinguish the two properties. Thus, despite a difference in wording, claims appear to describe the same material, and therefore, it is deemed that claim 7 fails to limit further the subject of claim 1.
Claim 16 is rejected under 35 U.S.C. 112(d) 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. Claim is drawn to an adhesive article with an adhesive layer comprising a pressure sensitive adhesive composition that is optically clear. Independent claim 10 states that the pressure sensitive adhesive composition is optically transparent. Neither the claims nor the specification differentiates the two terms and working examples do not provide quantitative test data to distinguish the two properties. Thus, despite a difference in wording, claims appear to describe the same material, and therefore, it is deemed that claim 16 fails to limit further the subject of claim 10.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 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.
Claims 1-4, 6-13, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Asano et al. (WO 2019/123892; equivalent US 11,286,370 relied upon for translation).
Example 1 in Table 1 of Asano et al. discloses an adhesive composition comprising an acrylic copolymer matrix made of hydroxyethyl acrylate, ethylhexyl acrylate, methyl acrylate, and t-butyl acrylate and 0.60 parts, based on 100 parts of copolymer, of bis(2,6-diisopropylphenyl)carbodiimide. The adhesive composition is useful as a layer in an adhesive sheet (col. 15, line 15) and an optical sheet (col. 18, line 22; col.19, line 67). Table 2 shows that the composition exhibits a haze value (JIS K7261-1) of 0.3 %. Inventors state that when an adhesive layer displays a haze value that is excessively high, the adhesive layer is reduced in transparency (col. 19, lines 32-35).
Since the adhesive composition of the prior art exhibits a low haze value, one of ordinary skill in the art would conclude that the adhesive composition is optically transparent and optically clear. In light of the fact that the adhesive composition has substantially the same chemical constitution as that described in instant claims, one of ordinary skill in the art would have reasonable basis to expect it to exhibit substantially the same cohesive property under test conditions set forth in instant claims. Since the PTO cannot perform experiments, the burden is shifted to the Applicants to establish an unobviousness difference. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112-2112.02.
Claims 1, 2, 4-11, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sueoka (JP 2019-108426).
Sueoka discloses a curable adhesive composition comprising a urethane (meth)acrylate, a hydroxyl group containing (meth)acrylate, and an acid scavenger selected from carbodiiminde compounds and calcined hydrotalcites (claims 1-6). The adhesive composition is applied to a single plastic film or sheet or in between a laminate of two plastic films or sheets (claims 7 and 8, paragraph [0086]). Applications of the obtained laminate include optical films (paragraph [0087]). Table 1 shows that articles comprising the adhesive composition exhibit a haze of about 0.1 % to about 0.4 %. Since the adhesive composition of the prior art exhibits a low haze value, one of ordinary skill in the art would conclude that the adhesive composition is optically transparent and optically clear. In light of the fact that the adhesive composition has substantially the same chemical constitution as that described in instant claims, one of ordinary skill in the art would have reasonable basis to expect it to exhibit substantially the same cohesive property under test conditions set forth in instant claims. Since the PTO cannot perform experiments, the burden is shifted to the Applicants to establish an unobviousness difference. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112-2112.02.
Reference teaches further that hydroxyl group containing (meth)acrylates include 2-hydroxyethyl (meth)acrylate and 4-hydroxybutyl (meth)acrylate, which satisfy the structural features set forth in Formula 1; see paragraph [0067]. Useful carbodiimides include aromatic monocarbodiimides such as N,Nʹ-bis(2,6-diisopropylphenyl)carbodiimide (paragraph [0037]). The content of carbodiimide is about 2 to 30 parts by mass or about 3 to 20 parts by mass (paragraph [0039]), although working examples show use of a practical amount of 1 to 5 parts by mass. The content of calcined hydrotalcite is about 1 to 5 parts by mass or about 2 to 5 parts by mass (paragraph [0044]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/Primary Examiner, Art Unit 1762 January 20, 2026
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