DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
As previously set forth: The claims have an effective date of the filing of the provisional: 10/13/26
Response to Arguments
Applicant argues picking and choosing is a 103 approach not an anticipation rationale.
The Examiner disagrees. Picking one option from a list is held by the Office to be anticipated. Had there been multiple components picked from a list (e.g. a combination of elements), a 103 would be appropriate, however, when only one option is chosen from a list a 102 rejection is appropriate. Arguments herein are not persuasive and the 102 position over Graham thusly stands as previously set forth.
Applicant argues letting the adhesive sit at room temperature does not meet the curing definition of the specification.
The Examiner disagrees. The broadest reasonable interpretation is set forth that the passage of time meets such. Applicant argues what “crosslinking” is defined as, however, crosslinking is not required by the curing of the claim. Although the Examiner has put forth crosslinking on page 7 of the non-final such was in relation to adding a crosslinker as a different way to cure the composition. Arguments herein are thusly not persuasive and the rejection stands as previously set forth.
Applicant argues the Tg requirements are not met
The Examiner agrees and removes position over claim 21.
Applicant argues there is no evidence that the properties would necessarily result from Graham.
The Examiner disagrees. The Examiner has put forth how the reference meets and embraces the composition requirements of the claims, thus, the properties are deemed to be inherent, or, embraced by the reference. Absence a quantitative showing of such Applicant’s arguments are not found persuasive.
Applicant argues using Goetz for claim 4 is improper because Graham requires the particles to protrude from the layer.
The Examiner agrees and removes position over claim 4.
Applicant argues Goetz solves a different problem than Graham and shouldn’t be combined.
The Examiner disagrees. Crosslinking and not crosslinking adhesive films are taught to function equivalently in Goetz. Proper motivation to combine has been set forth. Though a different problem is solved in Goetz the teaching of crosslinked and noncrosslinked adhesives functioning the same would be expected to persist no matter the end use of the adhesive. Arguments herein are thusly not persuasive.
Claim Rejections - 35 USC § 102
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) 1-3, 5-6, 8-12, 15, 18, 20-21 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Graham (US 2009/0246478-equivalent to WO 2009/120412 of the ISR).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics.
Graham discloses adhesive compositions comprising non-tacky microspheres (title), said adhesives are pressure sensitive (abstract). The composition comprises two primary components, an adhesive blend matrix, and, microspheres [0018]. Said microspheres are exemplified to be polyisooctylacrylate (table 1) having a diameter of 81 microns [0063]. The microsphere is exemplified to be 286.4g isooctylacrylate and 71.6 crosslinker (table 1) which converts to be 80% isooctylacrylate (286.4+71.6=358, 286.4/358=80%). Said adhesive matrix is exemplified to be a composition formed from polymerizing 100 g isooctylacrylate and 4.15 g acrylamide [0069] (ethyl acetate and heptane are solvents). This calculates to 96% isooctylacrylate (a C8 acrylate ester) and 4% acrylamide (a polar monomer).
The above polymerized adhesive matrix meets the “at least partially polymerized” requirements of claim 1. Isobornyl acrylate may be chosen as the microsphere monomer [0021], substituting such for the exemplified isooctylacrylate is picking only one element from a list. Thus, use of 80% isobornyl acrylate is anticipated.
Elements above anticipate claims 1-3, 5-6. Example 1 uses 23 parts having 35% solids of adhesive matrix and 1 part microspheres having 51% solids, this converts to 6.35 parts microsphere per 100 parts adhesive ( (.35*23) + (1*.51) = 8.03 ; .51/8.03 = x/100 ; x=6.35), anticipating claim 8. Use of isooctylacrylate in the matrix, as above, anticipates claim 9, elements above meet claim 10-12. The adhesive may be a hot melt (e.g. no solvent) [0037], as required by claim 15. The adhesive is applied to a sheet, as required by claim 18. There is not definition of curing in claim 20, such may just be letting the adhesive rest at room temperature. Elements above thusly meet claim 20.
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) 7, 15-17, 22 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Graham.
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. New Claim 22 is added and is met by [0033] of Graham that discloses the particle size ranges from 1-300 micrometers, embracing and thusly rendering prima facie obvious the requirements of claim 22. See In re Wertheim.
Graham includes elements as set forth above. Regarding claims 7, 16, 17, since the same composition as claimed is anticipated (as discussed above), and, there are no other considerations in the specification in order to meet the properties of these claims, the refractive index, peel adhesion and haze of the above claims is deemed to be anticipated or prima facie obvious as being embraced by the reference. If there is any difference between the product of the reference and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." 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. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102." See MPEP 2112(III) and In re Best, 562 F2d at 1255, 195 USPQ at 433
Regarding claim 15, alternative to the anticipation position above, in light of the picking of a hot melt in combination with the isobornylacrylate microparticles, the combination is deemed prima facie obvious. Though picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985)
Claim(s) 13-14, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graham in view of Goetz (US 6288172).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. Claim 4 has been removed for reasons above.
Regarding claims 13-14, 20: Graham includes elements as set forth above. Graham discloses pressure sensitive adhesives comprising an adhesive matrix and microspheres. Graham does not disclose a crosslinking agent for the adhesive matrix.
Goetz discloses pressure sensitive adhesives (abstract). Said adhesives comprise an adhesive matrix and microspheres (abstract), thus akin to Graham. Goetz discloses the matrix to be film forming acrylate compositions (Column 3 lines 48-49) and include monomers such as isooctylacrylate (Column 4 line 34) and polar monomers such as acrylamide (Column 4 line 67), thus akin to the matrix of Graham. The adhesive matrix may, or may not, further comprise a crosslinking agent (Column 5 lines 5-6). Goetz thusly teaches adhesive matrixes function equivalently with, or, without crosslinking agents. The crosslinking agent is added in amounts consistent with their use as long as the pressure sensitive adhesive properties are retained (Column 5 lines 20-23). When used, curing (e.g. crosslinking) is prima facie obvious since that is the reason for adding a crosslinking agent.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include in Graham the use of crosslinking agents and crosslinking the film, as taught by Goetz, since this is recognized in the art as a functional equivalent to noncrosslinked adhesive films.
Further, regarding the amounts of crosslinking agent, Goetz discloses that the factors to consider when determining the level of crosslinker added includes MW of the crosslinker and degree of multifunctionality (Column 5 lines 20-25), thus one would increase or decrease the amount of crosslinker depending on the above variables which renders prima facie obvious the instantly claimed range.
Allowable Subject Matter
Claims 4, 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Applicant’s arguments regarding claim 4 are persuasive. Although there is motivation in Goetz this is not sufficient because the primary reference Graham specifically discloses the desire for the diameter of the microsphere to be greater than the thickness of the adhesive coating [0053] and that this is so the microspheres protrude above the surface [0059]. Graham explicitly teaches away from claim 4, and, the light diffusing properties that may be afforded by changing the thickness of the layers (taught by Goetz) does not seem pertinent to the easel/pad products of Graham.
Applicant’s arguments drawn to claim 21 are also persuasive, Graham discloses that higher Tg monomers such as isobornyl acrylate may be used, however, the overall Tg of the resultant polymer of the microparticles must be below -20C, which does not meet the requirements of claim 21.
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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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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