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 .
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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Claims 4, 10 and 11 recite the amount of acrylic monomer with respect to the composition and not the base resin as in Claim 1. Every reference in the as-filed specification refers to the amount of acrylic monomer with respect to the base resin itself and not the overall composition.
Drawings and Specification Objection
The drawings and specification are objected to because when there is only one figure it is to be referenced as “The Figure” rather than Figure 1. See 37 CFR.1.184(u)(1) and 37 CFR 1.121(d). Similarly, the Brief Description of the Drawing section must also refer to “The Figure” rather than Figure 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” (emphasis added) If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 8-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xia (U.S. 20040202879).
Xia teaches pressure sensitive adhesive (PSA) compositions comprising a PSA and a high Tg polymer. In the examples (See Table 1), the polymer additives comprise an acrylamide or meth acrylamide (NNDMA or DMAEMA) and have molecular weights and glass transition temperatures in the anticipating the claimed ranges of these properties of Claim 1, Claim 4, and Claim 5 and oligomer additive of these claims.
Table 2 exemplifies PSA 1 and PSA 2 which have 7 or 7.5 parts of acrylic acid monomer in them. This anticipates Claim 1’s base resin and acrylic acid monomer limitation.
The examples of Xia use 15 parts of a polymer additive (any in Table 2) and 85 parts of the PSA. This is a ratio of 15/85 = x /100 or x = 17.6 parts of additive (oligomer claimed) per 100 parts of base resin anticipating Claim 1 and Claim 3.
7 wt% acrylic acid in 85 parts of PSA 1 (similarly for PSA2) is 5.95 wt% of acrylic acid monomer in the composition as the total of 15 additive and 85 PSA is 100. This anticipates the range of Claim 2 as this claim recites the range with the respect to the overall composition and not the base resin. For PSA 2 the amount of acrylic acid would be slightly higher in the composition as the amount of acrylic acid in the PSA is higher.
The above also anticipates Claim 10, Claim 11, Claim 12, Claim 13, Claim 14 as these claims are the same limitations but for the acrylic acid amount being limited to a base resin.
Claim 6 and Claim 15 are anticipated as Xia teaches the high Tg monomer can be specifically t-butyl methacrylate, isobornyl acrylate and cyclohexyl methacrylate in ¶[0060]. As every one of the claimed monomers of Claim 6 and Claim 15 are specifically taught by Xia for the same purpose as in the instant claims Xia is sufficiently specific to anticipate Claim 6 and Claim 13. Alternatively, one of ordinary skill in the art can at once envisage each of the above high Tg monomers taught by Xia in practicing the examples of Xia because they are specifically taught by Xia for this purpose. This also anticipates Claim 6 and Claim 15.
With respect to Claim 8, Claim 9, Claim 15 and Claim 16, Xia does not teach the holding time nor the polycarbonate adhesion of these claims. However, as Xia anticipates the monomers used, molecular weights, glass transition temperatures and the amount of these components with respect to each other, one of ordinary skill in the art is reasonably suggested, when tested appropriately, the exemplified compositions of Xia must possess the recited properties of Claim 8, Claim 9, Claim 15 and Claim 16. Note that Applicant presents multiple example formulations in their as-filed specification but fails to present any data on the results of testing of any of these formulations.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xia (U.S. 20040202879) as evidenced by Huseman (U.S. 20040234753) and Shimizu (JP2013147587; reference made to included English machine translation).
Xia teaches PSA (base resins) made from isooctyl acrylate and acrylic acid (93/7) or isooctyl acrylate, methyl acrylate and acrylic acid (57.5/35/7.5). See Table 2.
Xia does not teach the Tg of these resins.
Huseman, in ¶[0017]-¶[0018] provides evidence the glass transition temperature can be calculated by using the Fox equation.
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Shimizu provides evidence the homopolymer Tg of acrylic acid is 106 oC / 379.15 K (¶[0027]), methyl acrylate 8 oC / 281.15 K (¶[0025]), and iso-octyl acrylate -70 oC / 203.15 K (¶[0030]).
Therefore, the Tg of PSA1 of Xia can be calculated as 1/Tg = 0.93 / 203.15 + 0.07 / 379.15 => Tg = 209.97 – 273.15 = -63.18 oC (or very nearly the Tg of the iso-octyl acrylate itself).
The Tg of PSA2 of Xia can be calculated as 1/Tg = 0.575 / 203.15 + 0.35 / 281.15 + 0.075 / 379.15 => Tg = 234.02 – 273.15 = -39 oC
Therefore, PSA2 anticipates the claimed range of Claim 7.
Claim Rejections - 35 USC §§ 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Or
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 6 and 15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Xia (U.S. 20040202879).
Xia is applied as above.
Claim 6 and Claim 15 are anticipated as Xia teaches the high Tg monomer can be specifically t-butyl methacrylate, isobornyl acrylate and cyclohexyl methacrylate in ¶[0060]. As every one of the claimed monomers of Claim 6 and Claim 15 are specifically taught by Xia for the same purpose as in the instant claims Xia is sufficiently specific to anticipate Claim 6 and Claim 13. Alternatively, one of ordinary skill in the art can at once envisage each of the above high Tg monomers taught by Xia in practicing the examples of Xia because they are specifically taught by Xia for this purpose. This also anticipates Claim 6 and Claim 15.
Alternatively, Xia does not exemplify a composition in which the high Tg monomer is t-butyl methacrylate, isobornyl acrylate and cyclohexyl methacrylate.
In ¶[0060] Xia specifically teaches the high Tg monomer can be t-butyl methacrylate, isobornyl acrylate and cyclohexyl methacrylate.
It would have been obvious to a person having ordinary skill in the art at the time the inventio was filed to practice the inventio of Xia such that the high Tg monomer in the examples was t-butyl methacrylate, isobornyl acrylate or cyclohexyl methacrylate because Xia teaches this in ¶[0060]
This anticipates or in the alternative meets the limitations of Claim 6 and Claim 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766