The arDETAILED 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 .
Priority
The claims have an effective date of the filing of the provisional: 10/13/26
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/29/23 has been being considered by the examiner.
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.
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).
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. Isobornyl acrylate microspheres will implicitly have the Tg of claim 21.
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.
Claim(s) 7, 15-17 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.
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) 4, 13-14, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Graham in view of Goetz (US 6288172).
Regarding claim 4: Graham includes elements as set forth above. Graham discloses pressure sensitive adhesives comprising an adhesive matrix and microspheres. Graham discloses coating such on substrates but does not disclose the thickness thereof.
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. Goetz discloses the light diffusing characteristics of the adhesive are affected by the microparticle size and the thickness of the dried adhesive when coated on a surface (Column 2 lines 45-53).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to increase or decrease the layer thickness depending on the light diffusing characteristics desired. When doing such it would embrace wherein the thickness of the matrix is larger than that of the particles, as required by claim 4.
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.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759