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 .
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 1-14 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.
As to claim 1, this claim recites that a first (meth)acrylate polymer can include a crosslinking monomeric unit having a pendant (meth)acryloyl group and a second (meth)acrylate polymer contains 0.3-3 wt% of a crosslinking monomeric unit having a pendant (meth)acryloyl group. However, it is unclear whether pendant (meth)acryloyl group is present in the crosslinking monomer unit or in a (meth)acrylate polymer that is formed by reaction between a precursor (meth)acrylate polymer containing functional group (e.g. hydroxyl) and an unsaturated reagent compound including isocyanate group and (meth)acryloyl group. See 0041 of US Patent Application Publication No. 20230365841 A1 of the present application (“published application”). Specifically, the published application discloses isocyanatoethyl (meth)acrylate (IEM) monomer as the unsaturated reagent compound that contains both isocyanate and (meth)acryloyl group (see 0041). The published application further discloses that IEM monomer is reacted with a precursor (meth)acrylate polymer containing e.g. hydroxyl group to introduced pendant (meth)acryloyl group in the (meth)acrylate polymer. If IEM monomer is “crosslinking monomer”, such monomer does not contain pendant (meth)acryloyl group. The specification does not disclose crosslinking monomer having pendant (meth)acryloyl group. Therefore, it is unclear how the crosslinking monomeric unit as recited in the claim contains pendant (meth)acryloyl group. For purpose of examination, if prior art discloses monomers such as IEM, it will meet the claimed crosslinking monomer having pendant (meth)acryloyl group.
As to claim 4, this claim recites “the first (meth)acrylate polymer further comprises optional monomeric units derived from a non-hydroxy-containing polar monomer.” The recitation “further comprises optional monomeric units” renders claim indefinite, because it is unclear whether the monomeric units are positively required. The examiner respectfully submits that applicant delete “optional”.
As to claim 5, it is unclear whether “0 to 5 weight percent crosslinking monomeric units derived from a crosslinking monomer” refers to the crosslinking monomer unit having pendant (meth)acryloyl group or derived from a UV crosslinking monomer having an aromatic ketone group of claim 1 (see first (meth)acrylate polymer comprising “3)”.
As to claim 6, this claim recites “the first (meth)acrylate polymer comprises 0.1 to 5 weight percent crosslinking monomeric units…”. It is unclear whether the crosslinking monomeric units refer to the “optional crosslinking monomeric unit having pendant…aromatic ketone group” recited in parent claim 1.
As to claim 7, this claim recites “the second (meth)acrylate polymer further comprises optional monomeric units derived from a non-hydroxy-containing polar monomer.” The recitation “further comprises optional monomeric units” renders claim indefinite, because it is unclear whether the monomeric units are positively required. The examiner respectfully submits that applicant delete “optional”.
As to claim 8, it is unclear whether the recitation “0.3 to 3 weight percent monomeric unit having the pendant (meth)acryloyl group” refers to the “3) crosslinking monomeric unit having a pendant (meth)acryloyl group in an amount ranging from….” as set forth in claim 1. For purpose of examination, the aforementioned recitation is interpreted to refer to the crosslinking monomer unit of claim 1.
Furter, as to claim 8, this claim recites “non-hydroxy-containing polar monomer”. It is unclear whether applicant intends to claim “monomeric units derived from a non-hydroxy-containing polar monomer”, because the rest of the claim uses recitation “monomeric units derived from” to refer to other monomers recited in claim 8.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP2013213085 A (“JP085”) in view of Behling et al. (US 20160289513 A1).
As to claims 1, 5, and 8, the recitation “optional” is interpreted as not required. Further, the recitations disclosing various ranges of monomeric units where the lower end point is “0” are interpreted as not required (e.g. see recitation in claim 5 at line 3 “0 to 10 weight percent monomeric units derived from the hydroxy-containing monomer”).
As to claim 1, JP085 discloses a crosslinkable pressure sensitive adhesive (PSA) composition (crosslinkable composition) (abstract and claim 4 of JP085).
Further, as to claim 1, the PSA composition of JP085 comprises a (meth)acrylic acid ester polymer A (first (meth)acrylate polymer) having Mw of 300,000 to 2,000,000 (claim 1 of JP085). The claimed Mw range 100,000 Daltons to 1,500,000 Daltons overlaps or lies within the range disclosed by JP085 such that prima facie case of obviousness exists. MPEP 2144.05 (I).
Further, as to claim 1, the PSA composition of JP085 comprises a reactive (meth)acrylic acid ester polymer B (second (meth)acrylate polymer) having Mw of 10,000 to 100,000 (claim 1). The claimed Mw range of 5,000 Daltons to less than 100,000 Daltons overlaps or lies within the range disclosed by JP085 such that prima facie case of obviousness exists. MPEP 2144.05 (I).
Further, as to claim 1, JP085 discloses 100 parts by weight of the (meth)acrylic acid ester polymer A and 5 to 50 parts by weight of the reactive (meth)acrylic acid ester polymer B (claim 1). As such, wt% of the reactive (meth)acrylic acid ester polymer in the PSA composition of JP085 is 4.8 to 33 wt% with the balance (meth)acrylic ester polymer A in the amount of 95.2 to 67 wt%. The claimed range of the first (meth)acrylate polymer of 50-95 wt% overlaps or lies within the range disclosed by JP085 (67-95.2 wt%) such that prima facie case of obviousness exists. Further, the claimed range of the second (meth)acrylate polymer of 5-50 wt% overlaps or lies within the range disclosed by JP085 (4.8 to 33 wt%) such that prima facie case of obviousness exists. MPEP 2144.05 (I).
Further as to claim 1, JP085 discloses that the (meth)acrylic acid ester monomer includes (meth)acrylic acid alkyl ester having alkyl group of 1 to 20 carbon atoms (the first (meth)acrylate polymer comprises “1) monomeric unit derived from an alkyl (meth)acrylate”) (0033).
Further, as to claim 1, JP085 discloses that the reactive (meth)acrylic acid ester polymer B contains (meth)acrylic acid alkyl ester having alkyl group of 1 to 20 carbon atoms (the second (meth)acrylate polymer comprises “1) monomeric unit derived from an alkyl (meth)acrylate”) (0051 and 0054).
Further, as to claim 1, JP085 discloses that the reactive (meth)acrylic acid ester polymer B contains functional group X containing monomers including hydroxyl group containing monomer (0052-0053). Further, JP085 discloses that the functional group containing monomer can be used in the amount of 5-40% by mass (0055), which overlaps with the claimed range of 30-70 wt% of a monomeric unit derived from a hydroxy-containing monomer such that prima facie case of obviousness exists.
Further, as to claim 1 limitation of second (meth)acrylate polymer comprising “crosslinking monomeric unit having a pendant (meth)acryloyl group in an amount ranging from 0.3 to 3 weight percent….”, JP085 discloses that The reactive (meth)acrylic acid ester polymer (B) having a polymerizable double bond in its side chain is obtained by reacting a (meth)acrylic acid ester polymer (b1) having a functional group (x)-containing monomer as a constituent monomer unit with a polymerizable double bond-containing compound (b2) having a substituent (y) that reacts with the functional group (x). Further, JP085 and present application disclose same mechanisms to introduce a pendant (meth)acryloyl group. JP085 discloses that a (meth)acrylic ester polymer (b1) contains functional group such as hydroxyl group that is reacted with a polymerizable double-bond containing compound such as (meth)acryloxyethyl isocyanate (0058-0059 of JP085). The present specification discloses same mechanism. See 0039-0041 of the published application. As such, JP085 discloses claimed crosslinking monomeric unit having a pendant (meth)acryloyl group.
As to claim 1, JP085 is silent as to explicitly disclosing the amount of crosslinking monomeric unit having e pendant (meth)acryloyl group (0.3-3 wt%).
Behling discloses an adhesive including a (meth)acrylate copolymer having pendant (meth)acryloyl group (abstract). Behling further discloses a (meth)acrylate precursor polymer having e.g. hydroxyl group (0048) that is reacted with isocyanatoethyl acrylate (IEM) or methacrylate (0096). Further, Behling discloses 60 grams of (meth)acrylate precursor polymer and 1.2 grams of IEM (Table 3, Ex 1), which converts to 1.96 wt% of IEM (1.2/(60+1.2)) * 100 = 1.96 wt%, which is within the claimed range of 0.3 to 3 wt%.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the amount of crosslinking monomer as claimed and as disclosed by Behling and use it to form the second (meth)acrylate polymer of JP085, because JP085 desires such a monomer in the formation of the second (meth)acrylate polymer.
As to claim 2, JP085 as set forth previously a (meth)acrylic acid ester polymer A (first (meth)acrylate polymer) having Mw of 300,000 to 2,000,000 (claim 1).
As to claim 3, JP085 as set forth previously discloses a reactive (meth)acrylic acid ester polymer B (second (meth)acrylate polymer) having Mw of 10,000 to 100,000 (claim 1).
As to claim 4, JP085 discloses that the polymer (A) further contains an alkokyalkyl group containing (meth)acrylic acid ester (0033), amino group containing monomer (0039), and (meth)acrylamide containing monomer (0040).
As to claim 5, JP085 discloses that the (meth)acrylic acid ester polymer A contains 70-99 wt% of (meth)acrylic acid alkyl ester having alkyl group of 1 to 20 carbon atoms (0041), which overlaps with the claimed range of 65-100 wt% monomeric units derived from the alkyl (meth)acrylate.
As to claim 6, the recitation “0.1 to 5 weight percent crosslinking monomeric unit…” is interpreted to refer to different crosslinking monomeric unit than the first (meth)acrylate polymer comprising “3) an optional crosslinking monomeric unit having a pendant (meth)acryloyl group….” as recited in claim 1, because claim 6 does not explicitly refer to the “crosslinking monomer unit having a pendant (meth)acryloyl group…” of claim 1. JP085 discloses that the (meth)acrylic ester polymer A includes 1.0 to 20 wt% of a functional group containing monomer (0043) such as a monomer having carboxyl group (0036). The claimed range of 0.1 to 5 wt% overlaps or lies within the range disclosed by JP085 such that a prima facie case of obviousness exists.
As to claim 7, JP085 discloses that the reactive (meth)acrylic acid ester polymer contains “optionally used other monomers” (0051) such as carboxyl group containing monomer, amino group containing monomer, a substituted amino group containing monomer, or epoxy group containing monomer (0052).
As to claim 8, JP085 discloses that the reactive (meth)acrylic acid ester contains 0-97 wt%, preferably 60-95 wt%, and more preferably 70-90 wt% of (meth)acrylic acid alkyl ester monomer (0055), which overlaps with the claimed range of 5-85 wt% of monomeric units derived from the alkyl (meth)acrylate.
Further, as to claim 8, JP085 discloses that the reactive (meth)acrylic acid ester polymer B contains functional group X containing monomers including hydroxyl group containing monomer (0052-0053). Further, JP085 discloses that the functional group containing monomer can be used in the amount of 5-40% by mass (0055), which overlaps with the claimed range of 30-70 wt% of a monomeric unit derived from a hydroxy-containing monomer such that prima facie case of obviousness exists.
Further, as to claim 8, as set forth previously JP085 as modified by Behling renders obvious claimed 0.3-3 wt% of monomeric units having the pendant (meth)acryloyl group.
As to claim 9, JP085 discloses that the PSA composition contains photoinitiator (claim 2 and 0031).
As to claims 10 and 11, JP085 discloses PSA composition irradiated with active energy rays such as UV rays to form PSA (0023 and 0130).
As to claims 12-14, JP085 renders obvious these claims from the disclosure at 0130, 0148, claim 12).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Takizawa et al. (US 20030008140 A1) discloses acrylic polymer composition, Husemann et al. (US 6586491) discloses polyacrylate blends, Jeong et al. (US 20120171480 A1) discloses adhesive composition and optical member, Kurian et al. (US 20160289514 A1) discloses crosslinkable and crosslinked compositions, Kurian et al. (US 9828532 B2) discloses crosslinkable and crosslinked compositions, Simone et al. (US 20240101809 A1) discloses crosslinkable and crosslinked compositions, Beveridge et al. (US 20190241690 A1) discloses crosslinkable and crosslinked compositions, Zhang et al. (US 20190010368 A1) discloses PSA compositions and articles, Zhang et al. (US 20190002734 A1) discloses curable adhesive composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANISH P DESAI/ Primary Examiner, Art Unit 1788
September 29, 2025