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 .
Examiner’s Note
The Examiner acknowledges the amendments of claims 1, 9, 11, 13, & 19, as well as the cancellation of claims 8 & 18.
Claim Objections
Claims 1, 9, & 19 are objected to because of the following informalities:
Claim 1 is objected to because the recitation of “…wherein upon curing to form a cured adhesive composition…” is a separate and distinct claim element from “R4 is…” and thus should be an indentation. See MPEP 608.01(i).
The claim should read:
wherein
X is -O- or -NH-;
R4 is a hydroxy-substituted alkyl or hydroxy-substituted heteroalkyl group; and
wherein upon curing to form a cured adhesive composition, the cured adhesive composition has a shear storage modulus (G') of greater than 90 kiloPascals (kPa) when measured at 70°C and at a frequency of 1 radian/second; and
a Tan Delta of 0.2 or less at 70°C where Tan Delta is the calculated ratio (G"/G') of the measured shear storage modulus (G') and shear loss modulus (G"), and wherein the cured adhesive composition is optically clear and does not flow into small holes in a substrate surface on which the cured adhesive composition is dispose
Claims 9 & 19: “an further comprising acid-functional (meth)acrylate” should be amended to recite “an acid-functional (meth)acrylate.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 7, 9 – 17, & 19 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “small” in claims 1 & 11 is a relative term which renders the claim indefinite. The term “small” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 2 – 7, 9 – 17, & 19 – 20 are dependent on claims 1 or 11, and therefore also rejected.
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 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, 2, 5 – 7, 9 – 11, 14, 15, & 19 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Behling et al. (US 2018/0265748 A1), in view of Fukuda et al. (US 2020/0123422 A1), Fujii et al. (US 2013/0095339 A1), and CN 110333607 A (2019).
With regard to claims 1 & 11, Behling et al. teach a curable adhesive composition, and an article comprising cured adhesive composition disposed on at least a portion of the second major surface of the substrate, wherein the substrate comprises a first major surface and a second major surface (paragraph [0009]).
The cured adhesive composition has the following components:
A curable (meth)acrylate copolymer having a weight average molecular weight in a range of 100,000 to 400,000 Da (paragraph [0010]); An optional photoinitiator (paragraph [0010]); and wherein the curable (meth)acrylate copolymer comprises:
A first monomeric unit of Formula (I) in an amount in a range of 50 to 94 wt% based on a total weight of monomeric units in the curable (meth)acrylate copolymer
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,
wherein R1 is hydrogen or methyl; and R2 is an alkyl, heteroalkyl, aryl, aralkyl, or alkaryl group (paragraph [0010]);
A second monomeric unit of Formula (II) in an amount in a range of 6 – 10 wt% based on the total weight of monomeric units in the curable (meth)acrylate copolymer (paragraph [0010])
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A third monomeric unit of Formula (III) in an amount in a range of 0.05 to 5 wt% based on the total weight of monomeric units of the curable (meth)acrylate copolymer
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wherein R3 comprises 1) an aromatic ketone group that causes hydrogen abstraction from a polymeric chain when exposed to UV radiation or 2) a (meth)acryloyl group that undergoes free radical polymerization in the presence of the photoinitiator when exposed to UV or VIS light radiation (paragraph [0010); and
An optional fourth monomeric unit of Formula (IV) in an amount in a range of 0 – 20 wt% based on the total monomeric units of the curable (meth)acrylate copolymer
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wherein X is -O- or -NH-; R4 is hydroxy-substituted alky or hydroxy-substituted heteroalkyl group (paragraph [0010]);
Furthermore, Behling et al. teach other monomeric materials having multiple (meth)acryloyl groups (i.e, polyfunctional (meth)acrylates) can be combined with the curable (meth)acrylate copolymer. These monomers can be added to adjust the crosslink density of the cured (meth)acrylate copolymer (paragraph [0076]). That is, these monomers are usually added to the curable (meth)arylate copolymer after it has been formed (paragraph [0076]). Example monomers include polyurethane diacrylates (paragraph [0077]). Behling suggest these monomer materials having multiple (meth)acryloyl groups are crosslinkers (paragraph [0078]).
Behling et al. teach the curable/cured adhesive composition is optically clear (paragraph [0020]).
However, Behling et al. do not teach the additional monomeric materials (i.e., “co-curable additive mixture”) include at least one epoxy (meth)acrylate oligomer and at least one amine-functional (meth)acrylate.
Fukuda et al. teach a photocurable adhesive sheet formed from an adhesive composition comprising a crosslinking agent that may be used singly or in combination of two or more kinds thereof (paragraph [0118]). Polyfunctional (meth)acrylate as crosslinking agents are preferred in viewpoint of ease of controlling the crosslinking reaction (paragraph [0117] – [0120]). Examples include polyfunctional acrylic oligomers, such as an epoxy (meth)acrylate and a urethane (meth)acrylate (paragraph [0121]).
The pressure sensitive adhesive composition may further contain a monofunctional monomer that reacts with the crosslinkable functional group of the crosslinker. Such monomer functional monomers include dimethylaminopropyl(meth)acrylamide (DPMAPMA) (i.e., “an amine-functional (meth)acrylate) (paragraph [0126]). The (eth)acrylamide monomer improves adhesion to the adherent and the effect of suppressing hygrothermal whitening (paragraph [0127]).
Therefore, based on the teachings of Fukuda et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine an epoxy (meth)acrylate oligomer and a urethane (meth)acrylate oligomer as the polyfunctional (meth)acrylate crosslinking agents taught by Behling et al. because these oligomers allow for easy control of the crosslinking reaction. Furthermore, it would have been obvious to one of ordinary skill in the art to include a monofunctional monomer, such as an amine-functional (meth)acrylate, to react with the crosslinkable functional groups of the crosslinking agents for improving adhesion of the adhesive composition to the adherent and suppress hygrothermal whitening.
The curable composition often has a low shear storage modulus, G’ at lamination temperature (e.g., 40 – 80°C), that is less than 100 kPa, when measured at 1 radian/second frequency (paragraph [0100]), which overlaps with Applicant’s claimed range of greater than 90 kiloPascals (kPa) when measured at 80°C and at a frequency of 1 radian/second.
Behling et al. do not teach the cured adhesive composition has a Tan Delta of 0.2 or less at 70°C where Tan Delta is the calculated ratio (G”/G’) of the measured shear storage modulus (G’) and shear loss modulus (G”).
Behling et al. teach the optional monomeric units may be used for adjusting the rheological properties, such as shear storage modulus (G’) and glass transition temperature, and therefore the calculated tan delta ([0062]).
Fujii et al. teach a cured resin composition, such as an adhesive, positioned between substrates of a display device (paragraph [0028] & [0068]). The cured resin composition is formed from a resin composition containing (meth)acrylate monomer components (paragraphs [0037] – [0038]), oligomers (paragraph [0039]), crosslinking agents (paragraph [0040]), and a polymerization photopolymerization initiator (paragraph [0041]). The cured resin composition has a tan delta of 0 or larger, more preferably 0.2 or larger and 2 or less, at 0 to 70°C, such that the cured composition is sufficiently (elastically) soft, preventing peripheral unevenness, and preventing rapid physical properties changes (e.g., phase transformation) in the operating temperature range of 0 – 70°C (paragraphs [0028], [0032], [0035], [0069] – [0070], [0109], & [0141] – [0142]). The tan delta is defined as the dynamic loss elastic modulus (E”) divided by the dynamic storage elastic modulus (E’) (paragraph [0007]).
Therefore, based on the teachings of Fujii et al., it would have been obvious to one of ordinary skill in the art to adjust the monomeric units of the (meth)acrylate copolymer taught by Behling et al. for achieving a tan delta in the range of 0 – 2 in a temperature range of 0 – 70°C in order to achieve a (meth)acrylate-based adhesive composition of sufficient elastic softness, prevent peripheral unevenness upon lamination with substrates, and prevent rapid changes in phase transformation (solid vs. liquid state) during operation of the display device in the temperature range of 0 – 70°C.
A tan delta in the range of 0 – 2 in the temperature range of 0 – 70°C, as taught by Fujii et al., includes Applicant’s claimed range of 0.2 or less at 70°C. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Behling et al. teach the adhesive is applied to the surface of a substrate of a display device, such as optical elements. Optical elements include touch sensors using glass substrates (paragraphs [0003], [0018], [0103]). The adhesive taught by Behling et al. reduces refractive index mismatch between substrates and an air gap, which reduces sunlight and ambient light reflections inherent in the use of multi-layered display panels (paragraph [0003]).
Behling et al. do not teach the second major surface of the substrate, wherein the openings comprise holes through the substrate or cavities within the substrate.
CN 110333607 A teach a collimating structure for display devices, such as cameras and mobile phones (pg. 1). The collimating structure comprises first light-blocking substrate (11) and a second blocking substrate (31), both of which comprise a plurality of holes through said substrate. The openings are for the passage of light to form a light transmitting region (33) (pg. 8). The second blocking substrate (31) may be formed of a transparent material, such as glass (pg. 9). The blocking substrate (11)/(31) is joined to a photosensitive device (13), such as a chip, via bonding (i.e., an adhesive material) (pg. 6).
Therefore, it would have been obvious to one of ordinary skill in the art to form the optically clear adhesive material taught by the combined teachings of Behling et al., Fukuda et al., and Fujii et al. as the bonding material joining the transparent glass blocking substrate (31) to a photosensitive device, such as a chip, comprising a plurality of holes (openings) in the collimating structure of the display device taught by CN 110333607 A, because the adhesive taught by Behling et al. reduces refractive index mismatch between substrates and an air gap, which reduces sunlight and ambient light reflections inherent in the use of multi-layered display panels.
CN 110333607 A do not explicitly teach a bonding (adhesive) material for joining the light-blocking substrate and the photosensitive device cover the openings of the light-blocking substrate without flowing into said opening.
However, the rheological properties (Tg, tan delta) of the adhesive layer taught by the combination of Behling et al., Fukuda et al., and Fujii et al. would result in a bonding (adhesive) material that does not flow into the plurality of through openings, such that an elevated feature of the adhesive is raised above the plane of the surface of the light-blocking substrate(s) taught by CN 110333607.
With regard to claims 12 – 13, as discussed above for claim 11, CN 110333607 A do not explicitly teach a bonding (adhesive) material for joining the light-blocking substrate and the photosensitive device cover the openings of the light-blocking substrate without flowing into said opening, such that the adhesive composition provides an elevated feature raised above the plan of the second major surface of the substrate.
However, the rheological properties (Tg, tan delta) of the adhesive layer taught by the combination of Behling et al., Fukuda et al., and Fujii et al. would result in a bonding (adhesive) material cover the plurality of openings, but would not flow into the openings, such that an elevated feature of the adhesive is raised above the plane of the surface of the light-blocking substrate(s) taught by CN 110333607.
With regard to claims 2 & 14, Behling et al. teach the additional monomer materials (i.e., “co-curable additive mixture”) are present in the amount of 0 – 30 parts per hundred (pph) based on the weight of the curable (meth)acrylate copolymer, more preferably, at least 5 pph and up to 25 pph (paragraph [0076]). In other words, the co-curable additive mixture is present in the amount of 25 parts/125 parts x 100% = 20 wt. % of the total dry weight of the curable components (wherein the copolymer is present in the amount of 80 wt. %), and 5 parts/105 parts x 100% = 4.7 wt.% co-curable additive mixture of the total dry wight of the curable components (wherein the copolymer is present in the amount of 95.3 wt. %).
With regard to claims 5 & 16, as discussed above for claim 1, Fukuda et al. teach the amine-functional (meth)acrylate comprises DMAPMA (N-[3-(Dimethylamino)propyl]methacrylamide).
With regard to claims 9 & 19, Behling et al. teach the curable (meth)acrylate copolymer comprises: (a) monomeric units of Formula (I) comprising a mixture of first monomeric units with different R2 groups, such that the R2 groups preferably having 1 – 8 carbon atoms (paragraph [0040]), (b) monomer units of Formula (II) comprising (meth)acrylamide (paragraph [0046]), (c) monomer units of Formula (III) formed by polymerizing a hydroxy-functional (meth)acrylate into the (meth)acrylate matrix and subsequently reacting with an isocyanate-functional (meth)acrylate to form the units of Formula (III) (paragraph [0052]).
Behling et al. teach an embodiment in which the curable copolymer is preferably free or substantially free of monomeric units having acidic groups, such as monomeric units derived from (meth)acrylic acid, wherein the term “substantially free” means the amount of the monomeric unit is less than 0.5 wt. % (paragraph [0067]). In other words, Behling et al. suggests an embodiment of the copolymer comprising an acid-functional (meth)acrylate monomer unit in the amount of less than 0.5 wt. %.
With regard to claims 10 & 20, Behling et al. teach the final glass transition temperature (Tg) of the copolymer is typically equal to at least -20°C (paragraph [0044]), resulting in a cured adhesive composition having a Tg of -20°C or less as shown in Tables 4 & 8, which overlaps with Applicant’s claimed range of -6°C or less.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Claim(s) 3 – 4 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over Behling et al., Fukuda et al., Fujii et al., & CN 110333607 A (2019), as applied to claims 1 & 11 above, and further in view of Kropp et al. (US 2009/0155597 A1).
With regard to claims 3 – 4 & 15, Behling et al., Fukuda et al., and Fujii et al. fail to teach the epoxy (meth)acrylate oligomer of the curable adhesive composition (i.e.,” the additive mixture”) comprises a material of general Formula V, such that group L1 is a bisphenol A group.
Kropp et al. teach a conductive adhesive precursor for forming a cured adhesive for bonding two substrates together in electronic device components (paragraphs [0004] & [0032]). The adhesive precursor comprises a free-radically polymerizable (meth)acrylate monomer mixture, a photoinitiator, and a thermal curative (i.e., “curing agent” or “crosslinker”) for sufficient development of a strong bond between two substrates (paragraphs [0005] – [0011], & [0048] – [0049]), such as an epoxy di(meth)acrylate oligomer of CN104 made by Sartomer® (paragraphs [0052]).
Therefore, based on the teachings of Kropp et al., it would have been obvious to one of ordinary skill in the art to use an epoxy di(meth)acrylate oligomer of CN104 made by Sartomer® as the epoxy (meth)acrylate oligomer as the epoxy-based polyfunctional acrylic oligomers crosslinking agent taught by Fukuda et al. because it known in the art for forming an adhesive composition that forms sufficiently strong bonds between two substrates used in an electronic device.
Sartomer® CN104 is the preferred epoxy (meth)acrylate oligomer used by Applicant (see original specification, pg. 23). Therefore, the epoxy (meth)acrylate oligomer of Sartomer® CN104 as taught by Kropp et al., inherently meets Applicant’s claimed Formula V, wherein L1 is a bisphenol A group.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
Claim(s) 6 – 7 & 17 are rejected under 35 U.S.C. 103 as being unpatentable over Behling et al., Fukuda et al., Fujii et al., & CN 110333607 A (2019), as applied to claims 1 & 11 above, and further in view of Deitch et al. (US 2003/0083436 A1).
With regard to claims 6 – 7 & 17, Behling et al., Fukuda et al., and Fujii et al. fail to teach the urethane (meth)acrylate oligomer comprises a material of general Formula VI, wherein the group L2 comprises polyester segments linked by urethane groups.
Deitch et al. teach an adhesive composition comprising polyacrylate polymers and curing agents (paragraphs [0018] – [0019], wherein suitable curing (crosslinking) agents include acrylated urethane oligomers (paragraph [0019]). The preferred acrylated urethane oligomer used in the examples include an aliphatic polyester urethane diacrylate CN983 made by Sartomer® (Table 5, paragraph [0032]).
Therefore, based on the teachings of Deitch et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use a urethane diacrylate oligomer known in the art for sufficient crosslinking polyurethane polymers in an adhesive composition, such as CN983 made by Sartomer®.
Sartomer® CN983 is the preferred urethane acrylate oligomer used by Applicant (see original specification, pgs. 23 – 24). Therefore, Deitch et al. teaching of Sartomer® CN983 as taught by Dietch et al., inherently meets Applicant’s claimed the preferred acrylated urethane oligomer inherently meets Applicant’s claimed Formula V, wherein L2 comprises polyester segments linked by urethane groups.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
Response to Arguments
Applicant argues, “Claims 1, 9, 11, 13, and 19 are objected to because of the following informalities:
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“Applicants are puzzled by this objection as the recitation “the R4 group” does not appear in claim 1, and after the expression ‘R4 is a hydroxy-substituted alky or hydroxy-substituted heteroalkyl group,’ the ‘and wherein’ is located on the next line. If the Examiner continues to see an issue with the way the claim is written, applicants are willing to discuss correction” (Remarks, Pg. 11).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Applicant’s claim 1 recites “R4.” R4 is a functional group of the recited monomer unit of the copolymer. See last paragraph of page 3 of claim 1 of the claims.
The objection was not with regard to the recitation of the “R4 group” of claim 1 but rather with regard to the limitation recited immediately after the recited R4 group of claim 1: “…wherein upon curing to form a cured adhesive composition, the cured adhesive composition has a shear storage modulus (G’) of greater than 90 kiloPaskcals (kPa) when measured at 70°C and at a frequency of 1 radian/second…” This is a separate and distinct claim element compared to the recited the R4 functional group of the copolymer, and as such, should be not only a separate line, but also be an indentation. See MPEP 608.01(i). Therefore, the objection has been maintained, but re-worded to clarify the problem
Applicant has amended claims 9, 11, 13, & 19 to correct the typographical errors. Therefore, the objections of these claims are withdrawn.
Applicant argues with regard to the rejection of claims 9 & 19 under 35 U.S.C. § 112(b), “Applicants believe that it was clear from how the claim was written that since none of monomer groups (a) – (d) had acid-functional (meth)acrylates as a possibility, that the acid-functional monomer was an additional monomer not included in the original sets of monomers. For clarification, applicants have added the language ‘further comprising’ to clarify that this is an additional monomer” (Remarks, Pg. 12).
EXAMINER’S RESPONSE: In light of Applicant’s amendment of claims 9 & 19, the rejection under 35 U.S.C. § 112(b) is withdrawn.
Applicant argues, “Applicants point out that there are many issues with the Examiner’s combination of the teachings of Fukuda with that of Behling. First of all, while Behling’s cured layer is optically clear, that of Fukuda et al. is not. Applicants have amended claims 1 and 11 to include optical clarity of the cured layer as a requirement. It is unclear what affects the addition of an epoxy (meth)acrylate oligomer and a monofunctional amine monomer to the composition of Behling would have on the optical clarity of the compositions of Behling. One of skill in the art would understand this and have to carry out undue experimentation to determine the effect” (Remarks, Pg. 14).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As previously discussed, based on the teachings of Fukuda et al., it would have been obvious to one of ordinary skill in the art to incorporate epoxy (meth)acrylate oligomer and dimethylaminopropyl (meth)acrylamide (DMAPMA) (i.e., “amine-functional (meth)acrylate”) into the optically clear pressure sensitive adhesive composition taught by Behling et al.
Applicant assertion it is unclear what affects the addition of epoxy (meth)acrylate oligomer would have on the optical clarity and would require undue experimentation. However, evidentiary references provided cited herein teach both epoxy (meth)acrylate and DMAPMA are colorless and transparent liquids. See Bednarczyk et al., section 2.2 regarding epoxy (meth)acrylate and Monteck™ DMAPMA data sheet with regard to DMAPMA. Therefore, based on the evidentiary references, a person of ordinary skill in the art at the time of the effective filing date would have no reason to believe incorporation of epoxy (meth)acrylate oligomer and DMAPMA would hinder the optical clarity of the pressure sensitive adhesive composition taught by Behling et al.
Applicant argues, “One of skill in the art is not motivated to even try this combination because the reasons given by the Examiner as motivation, namely improved adhesion to the adherend and suppression of hygrothermal whitening, are not issues for the composition of Behling, nor are the issues for the current compositions. Rather, the weakness of Behling that is addressed in the current compositions and articles is described in detail in the current specification, namely high temperature and high humidity stability and the ability for a coating of the cure composition when adhered to a substrate with pinholes to not flow into the pinholes over time” (Remarks, Pg. 14).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, adhesion is a necessary property of a pressure sensitive adhesive. One of ordinary skill in the art would be motivated to optimize this property based on the intended use of the composition. It is not necessary for the primary reference to acknowledge deficiency of a property in order for it to be obvious to one of ordinary skill in the art to improve upon the property necessary for the intended use of the composition.
Second, as discussed by the cited secondary reference of Fukuda et al., the motivation to suppress of hygrothermal whitening is desired for maintaining the optical clarity of the pressure sensitive adhesive composition taught by the primary reference of Behling et al.
Third, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below). See MPEP 2144.IV.
Applicant argues, “Applicants point out that changing the tan delta of cured polymer is not a trivial matter, especially with complicated curable compositions such as those of Behling. If one looks at Fujii, the curable compositions to form the resin are relatively simple (see paragraphs [0037] – [0041]) compared to the composition of Behling and therefore provides no teaching that would suggest how to modify the compositions of Behling to achieve the desired tan delta range” (Remarks, Pg. 17).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed in the previous office action, Behling et al. teach modifying tan delta by adjusting the rheology (i.e., viscosity) of the composition. Therefore, based on the teachings of Behling et al., one of ordinary skill in the art would know how to adjust the composition to achieve the target tan delta 0 or greater at 70C taught by Fujii et al.
Applicant argues, “Additionally, if one were looking to achieve a tan delta range of 0.2 or lower, one would not look to Fujii, as Fujii teaches a range of 0 – 2.0, preferably 0.2 – 20. See paragraph [0035]” (Remarks, Pg. 17).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As previously discussed, Fujii teaches a tan delta range of 0 – 2.0, more preferably 0.2 to 20 at 70C. The broader tan delta range and the more preferred tan delta range taught by Fujii et al. overlaps with Applicant’s claimed range of 0.20 or less. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Applicant argues, “Applicants also point out that the only examples prepared by Fujii have tan delta value of tan delta are all above 0.2 as shown in Table 4” (Remarks, Pgs. 17 – 18).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed in the previous office Action, Fujii et al. teach a tan delta value of 0 or more at 70°C, and more preferably 0.2 or more. However, the teachings of a reference are not limited to the most preferred embodiments.
MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Applicant argues, “Applicants have pointed out the lack in the combination of Behling, Fukuda, and Fujii above. Without commenting on Kropp or the teachings therein, Applicants point out Kropp contains no teachings to overcome the fundamental lack in the combination of Behling, Fukuda, and Fujii” (Remarks, Pg. 19).
Applicant argues, “Applicants have pointed out the lack in the combination of Behling, Fukuda, and Fujii above. Without commenting on Deitch or the teachings therein, Applicants point out Deitch contains no teachings to overcome the fundamental lack in the combination of Behling, Fukuda, and Fujii” (Remarks, Pg. 19).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
Applicant argues, “Applicant argues, “Applicants have pointed out the lack in the combination of Behling, Fukuda, and Fujii above. Without commenting on CN 110333607 or the teachings therein, Applicants point out CN 110333607 contains no teachings to overcome the fundamental lack in the combination of Behling, Fukuda, and Fujii” (Remarks, Pg. 20).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Applicant’s previously argued the references of Behling, Fukuda, and Fujii do not teach amended claims 1 & 11 recitation of “wherein the cured adhesive composition…does not flow into small holes in a substrate surface on which the cured adhesive composition is disposed.” However, the previous office action rejected the limitation regarding the presence of holes in a substrate based on the teachings of CN 110333607.
Furthermore, as previously discussed, the rheological properties (Tg, tan delta) of the adhesive layer taught by the combination of Behling et al., Fukuda et al., and Fujii et al. would result in a bonding (adhesive) material that does not flow into the plurality of through openings taught by CN 110333607.
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781