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 .
Response to Amendment
Upon entry of the amendment filed on 08 August 2025, Claim(s) 1-4 and 6-15 is/are amended; Claim(s) 14 and 15 is/are withdrawn; and Claim(s) 16-18 is/are added. The currently pending claims are Claims 1-18.
Based on applicants’ remarks and amendments (e.g. the specific components and loading amounts), the 102 rejections based on Suzuki or Takashima are withdrawn. However, they are not found persuasive regarding the Mizobata reference and the rejections are maintained. Further, it is noted that the newly-added claims 16-18 are also rejected based on Mizobata (see below).
Claim Objections
Claim 18 is objected to because of the following informalities: misspelling of “dimethlyacrylate”. Appropriate correction is required.
Allowable Subject Matter
Claim 18 is allowed.
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.
Claim(s) 1-13 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Mizobata (WO-2020050169-A1, a machine translation is provided and referenced from hereon).
Claims 1-9, 13 and 18: Mizobata discloses an adhesive composition comprising a (meth)acrylic monomer, an ionic liquid with imidazolium and a bromide/chloride/sulfonate/amide components and a polymerization initiator such as AIBN at various loading amounts (abs, ¶26-29, 49-57, 60-67 and Tables 1-3 with accompanying text). Mizobata discloses the disassembling and (re)peeling property thus meeting the claimed debondable limitation and the conductive lamination application (abs, ¶2-3 and Tables 1-3 and Figs 1-5 with accompanying text). The Mizobata reference discloses the claimed invention with the various functional groups and moieties such as imidazolium (see EMIM-MESO3), methyl, trifluoro and sulfonate at various loading amounts but does not disclose the adhesive composition with the claimed elements with enough specificity to anticipate the claimed invention. Nevertheless, given that Mizobata discloses each of the moieties and functional groups in a similar adhesive, it would have been obvious to one of ordinary skill in the chemical art at the time of the invention to utilize any of the taught functional groups and components since Mizobata teaches each one. Therefore, it would have been obvious to one of ordinary skill in the art to pursue the known potential solutions with a reasonable expectation of success since the reference is directed to a similar field of endeavor. It is also noted that the fact that many components are disclosed would not have made any of them, such as the imidazolium, methyl, trifluoro and sulfonate for the ionic liquid and the azo nitrile initiator, less obvious. Here, Mizobata discloses each of the claimed components and there is no evidence nor teaching that the selection of the claimed components would be repugnant to a skilled artisan. Further, obviousness only requires a reasonable expectation of success. See MPEP 2143.
Claims 1, 2 and 10-12: Mizobata discloses the polyhydric alcohol and conductive additives such as metal powder and carbon black (¶49-55, 86 and Tables 1 and 2 with accompanying text). The Mizobata reference discloses the claimed invention but does not explicitly disclose the claimed loading ranges. Given that the Mizobata reference discloses loading ranges that overlap with the presently claimed range, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize any of the taught percentages, including those presently claimed, to obtain a suitable composition. According to MPEP 2131.03 and MPEP 2144.05, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990). In addition, a prima facie case of obviousness exists because the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976; In re Woodruff, 919 F.2d 1575, 16USPQ2d 1934 (Fed. Cir. 1990). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to optimize known variables, i.e. the loading amounts, since the reference also discloses a similar adhesive end-product. Further, obviousness only requires a reasonable expectation of success. It is noted that solubilizers and conductive particles are not necessarily present under BRI since the instant limitations recite a range up to 10 wt. % (see claim 2 to indicate that 0 is the lower limit).
Claims 16 and 17: Mizobata discloses 0.01-20 pbm of a conductive filler such as silica and calcium carbonate.
Response to Arguments
Applicant’s arguments, see pg. 1-4, filed 08 August 2025, with respect to the Suzuki or Takashima reference have been fully considered and are persuasive. The 102 and 103 rejections based on Suzuki or Takashima have been withdrawn.
Applicant's arguments filed 08 August 2025 regarding the Mizobata reference have been fully considered but they are not persuasive.
Applicant argues that Mizobata does not disclose or make obvious the surprising results described in examples 1-5 of the specification as shown in Tables 1-8.
The examiner respectfully disagrees and notes that, in order to overcome the prima facie case of obviousness, the applicant may show (1) criticality or unexpected result of the range, (2) the prior art teaches away from the claim or (3) a pertinent secondary factors to rebut the rejection under 35 USC 103. MPEP 2144.05. Here, the applicant intends to show the criticality or unexpected result of examples 1-5 and Tables 1-8. However, it is noted that the Showing in applicant’s specification is not commensurate with the instant claims. In particular, the Showing in applicant’s specification are directed to specific and distinct components and loadings amounts and differ from the instant claims which are directed to a broad and generic components and amounts. After a careful evaluation and consideration of the Showing, it is the examiner’s position that the specific limitations presented in the Showing would not inexorably extrapolate to the instant broader limitations. Applicant is welcomed to provide any evidence that the narrower components and amounts recited in the Showing would inevitably lead to the same critical and unexpected results in the broader components of the instant claims 1-16. In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of non-obviousness fails to outweigh the evidence of obviousness. Thus, the Showing has been found insufficient to overcome the rejections and the rejections are maintained.
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.
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/TRI V NGUYEN/Primary Examiner, Art Unit 1764