DETAILED ACTION
Claim Status
Claim(s) 1-10 is/are pending.
Claim(s) 1-9 is/are rejected.
Claim(s) 10 is/are withdrawn from consideration.
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 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.
Withdrawal of Finality
The finality of the rejections of the previous Office Action mailed 10/28/2025 has been withdrawn after Examiner’s reconsideration in view of Applicant’s arguments filed 01/22/2026 which necessitate new grounds of rejection.
Therefore, the finality of the previous Office Action mailed 10/28/2025 is withdrawn.
Response to Election of Species
Applicant’s election without traverse of Group I (claims 1-9) in the reply filed on 08/29/2024 is acknowledged.
Claim 10 (Group II) is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/29/2024.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for: (A) a limited range of liquid adhesive precursor compositions; does not reasonably provide enablement for the entire compositional encompassed by the claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to make liquid precursors simultaneously exhibiting:
the recited physical properties:
(a) sufficient adhesive properties in a liquid state to enable the formation of a laminate with the liquid precursor bonding a particulate-contaminated substrate to a film layer (claims 1, 7);
(b) capability of being cured by actinic radiation (claims 1, 7);
(c) total solubility parameter and/or hydrogen component solubility parameter (claims 1, 7);
and optionally in combination with the additional recited property:
(e) being a single-phase solution (claim 4).
over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
PNG
media_image1.png
18
19
media_image1.png
Greyscale
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(A) The breadth of the claims;
(B) The nature of the invention;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(C) The state of the prior art;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) The level of one of ordinary skill;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) The level of predictability in the art;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(F) The amount of direction provided by the inventor;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(G) The existence of working examples; and
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A) the claims are relatively broad -- for example, but not limited to:
• claims 1-4, 6-8 contain no limitations on the composition of the liquid precursor as a whole;
• claims 5, 9 do not contain any requirements on the minimum amount of the polar (meth)acrylate (as long as said polar (meth)acrylate is present in any non-zero amount) in the liquid precursor as a whole;
• The claims do not contain any restrictions on the type(s) and amount(s) of other components (e.g., other monomers or polymers; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, surface-active agents; and/or other additives; etc. -- in particular, other components which can alter the adhesive properties, radiation-curing and/or solubility parameters) which can be present in the liquid precursor as a whole.
With respect to Wand factor (B), Applicant asserts that the combination of the recited: (i) total solubility parameter; and/or (ii) hydrogen component solubility parameter; in the liquid adhesive precursor composition (claims 1, 7) is required for adequate absorption of polar solvent for producing a single phase or minimally hazy actinic radiation-curable adhesive layer.
With respect to Wand factor (C)-(E), the prior art does not specifically teach radiation-curable liquid adhesive precursor compositions as a whole with a specific: (c) total solubility parameter and/or hydrogen component solubility parameter.
With respect to Wand factors (F)-(H), the disclosure as originally filed only discloses radiation-curable liquid adhesive precursor compositions (claim 1) with a limited range of: (A) liquid adhesive precursor compositions.
Therefore, it is the Examiner’s position that undue experimentation would be required to produce precursor compositions with the above recited physical properties (a)-(c) (claims 1, 7), and optionally (d) (claim 4), using liquid precursor compositions which are encompassed by the present claims, but are materially different from the acrylate-based compositions those used in the working Examples in the specification -- for example, but not limited to:
----------------------------------------------
• the composition of the liquid precursor as a whole -- The disclosure as originally filed only discloses liquid precursor compositions which exhibit recited physical properties (a)-(c) (claims 1, 7), and optionally recited property (d) (claim 4); using liquid precursor compositions which are effectively entirely composed of: (i) ethoxylated and/or propoxylated multifunctional acrylate compounds; and (ii) photoinitiators.
However, claims 1-4, 6-8 contain no limitations on the composition of the liquid precursor as a whole;
Claims 5, 9 do not contain any requirements on the minimum amount of polar (meth)acrylate in the liquid precursor as a whole as long as the required polar (meth)acrylate is present in any non-zero amount (e.g., as low as 5 wt% or 1 wt% or 0.1 wt%, etc.).
Known radiation-curable adhesive systems can be based on a wide range of chemically distinct compositional families besides (meth)acrylic compounds -- e.g., epoxy-based systems; polyester-based systems; silicone-based systems; urethane-based systems; vinyl-based systems (such as polyvinyl acetate, ethylene vinyl acetate, etc.); synthetic or natural rubbers (such as butyl rubber, ethylene-propylene rubber, natural latex, etc.); styrene copolymer-based systems; etc. -- which, due to significant differences in chemical structure and/or reactive groups, can result in liquid precursor compositions exhibiting material -- and sometimes unpredictable -- differences in adhesion characteristics and/or radiation-curing characteristics and/or solubility parameters (particularly when the dispersion and/or hydrogen bonding solubility parameters are generally known to have a significant impact on a precursor composition’s ability to exhibit adhesive properties to polar and/or non-polar substrates).
Therefore, the Examiner has reason to believe that the types of compounds utilized in a liquid precursor materially affects the ability of said liquid precursor to simultaneously exhibit the recited combination of required properties (a)-(c) (claims 1, 7), and optionally the additional required property (d) (claim 4).
Additionally, the Examiner has reason to believe one or more of the required properties (a)-(c) (claims 1, 7), and optionally the additional property (d) (claim 4) would be materially affected by presence of non-trivial amounts of other components (e.g., other monomers; other polymers; other non-polymeric compounds or additives; etc.), in particular, other components which can materially (and in some cases, unexpectedly) alter the adhesive properties, radiation-curing and/or solubility parameters of a liquid precursor.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce liquid precursor compositions which exhibit recited physical properties (a)-(c) (claims 1, 7), and optionally recited physical property (d) (claim 4); without undue experimentation using liquid precursors which are materially different from those utilized in the working Examples in the Specification -- for example:
•liquid precursors containing non-trivial amounts (e.g., 10 wt% or 20 wt% or 40 wt% or 60 wt% or 80 wt% or 90 wt%, etc.) of (meth)acrylic compounds other than ethoxylated and/or propoxylated polyacrylate monomers (e.g., (meth)acrylic acid; hydroxy-functional (meth)acrylates; long-chain alkyl (meth)acrylates; urethane-functionalized (meth)acrylates; amino-functionalized (meth)acrylates; silicone-functionalized (meth)acrylates; etc.), especially in view of the Comparative Example PE1 (utilizing the ethoxylated polyacrylate compounds trimethylolpropane triacrylate) which fails to satisfy property (c) (claims 1, 7);
•liquid precursors containing non-trivial amounts (e.g., 10 wt% or 20 wt% or 40 wt% or 60 wt% or 80 wt% or 90 wt%, etc.) of non-(meth)acrylic materials (e.g., urethane-type; polyester-type, epoxy-type; vinyl-type; styrene-type; silicone-type; etc.);
particularly when Applicant has not provided adequate objective evidence that the ability of a liquid precursor to simultaneously exhibit recited physical properties (a)-(c) (claims 1, 7), and optionally recited property (d) (claim 4) is wholly independent of the chemical composition of the liquid precursor.
Furthermore, Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce liquid precursor compositions which exhibit recited physical properties (a)-(c) (claims 1, 7), and optionally recited physical property (d) (claim 4); without undue experimentation using liquid precursor compositions which are different from those utilized in the working Examples in the Specification -- for example, containing non-trivial amounts (e.g., 10 wt% or 20 wt% or 30 wt% or 50 wt% or 70 wt% or 90 wt%, etc.) of one or more other component(s), in particular, other components which can materially (and in some cases, unexpectedly) alter the adhesive properties, radiation-curing and/or solubility parameters of a liquid precursor.
----------------------------------------------
In view of the above, it is the Examiner’s position that the disclosure as originally filed does not enable one of ordinary skill in the art to make films which exhibit the recited combination of required properties (a)-(c) (claims 1, 7), and optionally the additional required property (d) (claim 4), over the entire scope of the present claims without undue experimentation, particularly in view of : (i) the working Examples and Comparative Examples in the specification which indicate the ability of a liquid precursor to exhibit required property (c) is materially -- and perhaps unpredictably -- affected by differences in liquid precursor composition; and (ii) Applicant’s arguments filed 01/22/2026 which repeatedly mentions the guidance provided by the disclosure as originally filed, but only in with respect to “the taught families of polar ethoxylated/propoxylated (meth)acrylates”.
Viewed in the light most favorable to Applicant, the disclosure as originally filed at best enables liquid precursors which are substantially composed (e.g., 95 wt% or more) of ethoxylated / propoxylated (meth)acrylate monomers.
Claim Rejections - 35 USC § 103 (AIA )
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.
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.
The rejections of claim(s) 1-9 under 35 U.S.C. 103 based on KONDA ET AL (US 5,902,678) in the previous Office Action mailed 10/28/2025 have been withdrawn upon reconsideration, particularly in view of Applicant’s arguments filed 01/22/2026.
Response to Arguments
Applicant's arguments filed 01/22/2026 have been fully considered but they are not persuasive.
(A) Applicant’s arguments with respect to the rejections under 35 U.S.C 103 in the previous Office Action mailed 10/28/2025 have been fully considered and are persuasive. Therefore, the rejections under 35 U.S.C 103 has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of reconsideration and Applicant’s arguments filed 01/22/2026 (which substantially rely on the disclosure’s teachings with respect to a specific compositional family and “compositional guidance” -- i.e., ethoxylated / propoxylated (meth)acrylate monomers).
(B) The Examiner notes that many of the features relied upon in Applicant’s arguments filed 01/22/2026 with respect to the previous rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph (i.e., a single phase solution; polar solvent content while retaining radiation curability; “peel cleanly from the substrate”; “polar, water-compatible acrylate mixtures”; etc.) are not recited in the majority (and in some cases, all) of the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
February 15, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787