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 § 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.
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 1-3 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ochi et al. (KR 2019/0136945 A, “Ochi”). The disclosure of Ochi is based off a machine translation of the reference included with this action.
With respect to claims 1, 7-9, and 11, Ochi discloses a protective film comprising an adhesive layer ([0001], [0009]). The adhesive comprises a base polymer ([0071]) that includes polyurethane ([0011], [0082], [0139]) and a crosslinking agent (i.e., curing agent) that includes aliphatic or aromatic polyisocyanate ([0133-0136]). The polyurethane is made from a polyurethane prepolymer and a polyfunctional polyisocyanate ([0159]), where the prepolymer is made from a mixture of 0-90 mol% polyester polyol and 0-90 mol% polyether polyol ([0084], [0086], [0088]). These amounts overlap the presently claimed ranges. 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 (CCPA 1976); In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990). The ratio of NCO to OH in the urethane prepolymer and polyfunctional polyisocyanate is 0.05 to 4.0 ([0170]). Given the instant specification discloses the nitrogen atom content being 0.5-1.50 wt% is obtained by controlling the NCO/OH ratio to be within the claimed range (see instant specification, page 8, lines 9-13), it is clear the nitrogen content of Ochi would necessarily overlap with that presently claimed. The polyether polyol includes triols ([0090]) and therefore, the polyurethane is made from 0-90 mol% diol and 0-90 mol% triol. Although there is no disclosure of the amount of diol and triol in wt%, it is clear the amounts in mol% would necessarily overlap those presently claimed. The adhesive further includes a catalyst and a leveling agent ([0140]).
Regarding the adhesive film having an increase rate of peel strength of 180% or less, the adhesive film having an initial peel strength of 1-12 gf/in, and a modulus of 0.05-0.8 MPa at 25°C, while there may be no explicit disclosure from Ochi regarding the adhesive film having these properties, given that Ochi discloses an otherwise identical adhesive film made from otherwise identical materials in overlapping amounts, it is clear the adhesive film of Ochi would necessarily inherently have these properties, absent evidence to the contrary.
In light of the overlap between the claimed adhesive film and that taught by Ochi, it would have been obvious to one of ordinary skill in the art to use an adhesive film that is both taught by Ochi and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 2, Ochi discloses the protective film has a haze of 5% or less ([0038]).
With respect to claim 3, while there may be no explicit disclosure from Ochi regarding the adhesive film having a peel strength of 12 gf/in or less as measured by leaving the adhesive film at 50°C for 3 days and then at 25°C for 30 minutes, given that Ochi discloses an otherwise identical adhesive film made from otherwise identical materials in overlapping amounts, it is clear the adhesive film of Ochi would necessarily inherently have this property, absent evidence to the contrary.
With respect to claim 6, while there may be no explicit disclosure from Ochi regarding the urethane-based binder being a hyper-branched binder, given that the instant specification discloses that the use of a diol and triol in the claimed amounts results in a hyper-branched polyurethane (instant specification, page 13, lines 22-23) and given that Ochi discloses the urethane prepolymer is made from 0-90 mol% diol and 0-90 mol% triol, which would necessarily overlap the wt% of diol and triol presently claimed as set forth in the above rejection of claim 1, then it is clear the urethane prepolymer of Ochi would necessarily form a hyperbranched polymer due to the presence of the diol and the triol.
With respect to claim 10, Ochi discloses the crosslinking agent is used in an amount of, for instance, 3.4 parts per 100 parts polyurethane ([0236]).
With respect to claim 12, given that claim 12 only further limits an optional embodiment of claim 11, the claim is considered met by the prior art.
With respect to claim 13, Ochi discloses the protective film comprises an adhesive layer that is on a base layer (i.e., substrate) ([0024]) and is used in an optical component ([0251]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ochi et al. (KR 2019/0136945 A, “Ochi”) as applied to claims 1 and 11 above, and further in view of Aotani et al. (JP 2017-145333 A, “Aotani”). The disclosure of Ochi is based off a machine translation of the reference included with this action. The disclosure of Aotani is based off a machine translation of the reference included with the action mailed 17 December 2025.
With respect to claim 12, Ochi does not disclose the use of a plasticizer.
Aotani teaches an adhesive for a surface protection film ([0001], [0012]) comprising a polyurethane prepared by reacting a polyol with a polyisocyanate and a curing agent ([0015]). The curing agent includes diisocyanates ([0039]). The adhesive contains a plasticizer ([0042]) which is an ester compound that is not a urethane ester ([0011], [0042]), where the ester is made by reacting polyethylene glycol or polypropylene glycol (i.e., a polyalkylene glycol) with a dicarboxylic acid such as adipic acid (i.e., a C6 polycarboxylic acid) ([0043]). The ester provides superior heat resistance and wettability ([0042]).
Ochi and Aotani are analogous inventions in the field of polyurethane adhesives made from polyols and a polyisocyanate curing agent.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane adhesive of Ochi to contain the plasticizer made from polyethylene glycol or polypropylene glycol with adipic acid as taught by Aotani in order to provide an adhesive having superior heat resistance and wettability (Aotani, [0042]).
Response to Arguments
Due to the amendment to claims 1 and 3, the objections to claims 1 and 3 are withdrawn.
Due to the cancellation of claims 4-5, the 35 U.S.C. 103 rejections of claims 4-5 are withdrawn.
Due to the amendment to claim 1, the 35 U.S.C. 103 rejections set forth in the action mailed 17 December 2025 have been withdrawn. This is because none of Takahashi, Sasaki, Aotani, nor He discloses a urethane-based binder comprising a unit derived from a polyether-based polyol in an amount of 40-65 mol% and a unit derived from a polyester-based polyol in an amount of 1-15 mol%. Takahashi, Sasaki, and He are silent regarding this limitation. At best, Aotani discloses the use of at least 50 mol% of a polyester-based polyol ([0020]). However, upon updating the searches, a new reference, Ochi, was found. As set forth above, Ochi discloses a polyurethane made from a polyurethane prepolymer and a polyfunctional polyisocyanate ([0159]), where the prepolymer is made from a mixture of 0-90 mol% polyester polyol and 0-90 mol% polyether polyol ([0084], [0086], [0088]). These amounts overlap the presently claimed ranges. 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 (CCPA 1976); In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990). Thus, the claims are newly rejected under 35 U.S.C. 103 for the reasons set forth above.
Applicant’s arguments filed 16 March 2026 have been fully considered, but they are not persuasive.
Regarding the use of Aotani as a reference, Applicant argues Aotani does not disclose wherein the mol% of the polyester-based polyol is less than the mol% of the polyether-based polyol. Applicant points to [0020] of Aotani for support.
In response to Applicant’s argument, the examiner acknowledges this. However, Aotani is no longer being used to meet this limitation. Rather, Aotani is now being used to solely teach a plasticizer made from polyethylene glycol or polypropylene glycol with adipic acid, which provides an adhesive having superior heat resistance and wettability ([0042]). It is noted that the “test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference… Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”, In re Keller, 642 F.2d 413, 208 USPQ 871, 881 (CCPA 1981) and that “combining the teachings of references does not involve an ability to combine their specific structures”, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA).
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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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