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 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, 2, 6 – 8, and 11 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0145406 to Bieber et al. (hereinafter Bieber), as evidenced by the Technical Data Sheet for Sartomer® SR 252 Data Sheet from Arkema France (hereinafter Arkema).
Regarding Claims 1 and 2. Bieber teaches a pressure sensitive adhesive foam composition comprising:
a crosslinking additive [0061] – [0066]; and
a filler preferably selected from expandable microspheres and glass bubbles [0065]. i.e. hollow particles.
The crosslinking additive may specifically be SARTOMER® SR252 [0049]. Arkema provides evidence that SARTOMER® SR252 has the following structure:
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(Page 1). SARTOMER® SR252 thus corresponds to a compound of instantly claimed Formula (1-4) in which R11 and R12 are each methyl; each R14 and R15 correspond to an alkylene group having two carbon atoms and thus the polyoxyalkylene chains represented by (R14O)k1 and (R14O)k3 are oxyethylene groups; k1 and k3 each correspond to an integer of 2 – 11, with the sum thereof equaling 13; and k2 corresponds to zero.
SARTOMER® SR252 in Bieber differs from the instantly claimed compound of Formula (1-4) in that k2 is zero, rather than an integer of 2 or greater. SARTOMER® SR252 in Bieber and the instantly claimed compound of Formula (1-4) then differ regularly by the successive addition of the same chemical group, i.e. two or more -CH2-groups, to the R15 group which is bonded to the oxygen atom of the (R14O)k1 group. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Specifically, compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). It is consequently the Office’s position that a person of ordinary skill in the art would have been motivated to make the instantly claimed compound, as SARTOMER® SR252 in Bieber and the instantly claimed compound of Formula (1-4) differ regularly by the successive addition of the same chemical group and are therefore of sufficiently close structure similarity that there would be a presumed expectation that such compounds possess similar properties.
Regarding Claims 6 and 8. Bieber teaches the composition of Claim 1. Bieber does not expressly teach an embodiment in which the claimed combination of thermally expandable particles are used in conjunction with SARTOMER® SR252. However, Bieber does teach the concept of using a combination of EMS F100 D and K37 as the filler in inventive Example 16 (Table 6). EMS F100 D corresponds to thermally expandable microspheres, while K37 corresponds to hollow glass bubbles (Table 1). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use a combination of EMS F100 D and K37 as the filler in an embodiment of Bieber in which SARTOMER® SR252 is used as the crosslinking agent. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Bieber shows in Example 16 that a combination of EMS F100 D and K37 are suitably used as the filler in the disclosed compositions (Table 6).
Regarding Claim 7. Bieber teaches a sheet comprising the composition of Claim 1 ([0174] and [0255] – [0256]).
Regarding Claim 11. Bieber teaches the composition of Claim 1 comprising a total content of hollow particles of 2 to 30 weight percent [0061].
Regarding Claim 12. Bieber teaches the composition of Claim 11 comprising a total content of hollow particles of at least 5% by volume [0061]. While this range is not identical to the instantly claimed range of 50 to 95% by volume, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 13. Bieber teaches the composition of Claim 11 comprising a total content of hollow particles of at least 5% by volume [0061]. While this range is not identical to the instantly claimed range of 50 to 95% by volume, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0145406 to Bieber et al. (hereinafter Bieber), as evidenced by the Technical Data Sheet for Sartomer® SR 252 Data Sheet from Arkema France (hereinafter Arkema) – as applied to Claim 1 above – and further in view of US 2012/0034447 to Higuchi et al. (hereinafter Higuchi).
Regarding Claims 9 and 10. Bieber teaches the composition of Claim 1 may comprise expandable microspheres but not specifically thermally expandable microspheres having the instantly claimed features. However, Higuchi teaches the concept of providing MATSUMOTO® F-190D, F-230D, and F-260D microspheres as expandable microspheres in a pressure sensitive adhesive composition [0088]. Each of these microspheres corresponds to commercially available thermally expandable hollow particles in which liquid is enclosed in the hollow portions thereof. Moreover, each of these thermally expandable hollow particles have a maximum volumetric expansion in the instantly claimed range (see [0137], [0139], and [0140] of the PG-PUB of the instant application). Bieber and Higuchi are analogous art as they are from the same field of endeavor, namely polymerizable compositions comprising hollow particles. Before the effective filing date of the instantly claimed invention, it would have been obvious to use MATSUMOTO® F-190D, F-230D, or F-260D microspheres as the expandable microspheres in the composition of Bieber. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Higuchi shows that MATSUMOTO® F-190D, F-230D, and F-260D microspheres are all known, commercially available microspheres suitable for use in pressure sensitive adhesive compositions.
Claims 1, 2, 6 – 8, and 11 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0145406 to Bieber et al. (hereinafter Bieber), as evidenced by the Technical Data Sheet for Sartomer® SR 252 Data Sheet from Arkema France (hereinafter Arkema). Note: this rejection relies upon a different embodiment of Bieber than in the first rejection of the instant claims under 35 U.S.C. 103 above.
Regarding Claims 1 and 3. Bieber teaches a pressure sensitive adhesive foam composition comprising:
a crosslinking additive [0061] – [0066]; and
a filler preferably selected from expandable microspheres and glass bubbles [0065]. i.e. hollow particles.
Suitable crosslinking additives include polypropylene glycol diacrylates [0047], corresponding to a compound of instantly claimed Formula (1-4) in which R11 and R12 are each methyl; each R14 and R15 correspond to an alkylene group having two carbon atoms and thus the polyoxyalkylene chains represented by (R14O)k1 and (R14O)k3 are oxypropylene groups; k1 and k3 each corresponds to an integer of 2 – 11, with the sum thereof equaling 13; and k2 corresponds to zero.
The polypropylene glycol diacrylate in Bieber differs from the instantly claimed compound of Formula (1-4) in that k2 is zero, rather than an integer of 2 or greater. The polypropylene glycol diacrylate in Bieber and the instantly claimed compound of Formula (1-4) then differ regularly by the successive addition of the same chemical group, i.e. two or more -CH2-groups, to the R15 group which is bonded to the oxygen atom of the (R14O)k1 group. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Specifically, compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). It is consequently the Office’s position that a person of ordinary skill in the art would have been motivated to make the instantly claimed compound, as polypropylene glycol diacrylate in Bieber and the instantly claimed compound of Formula (1-4) differ regularly by the successive addition of the same chemical group and are therefore of sufficiently close structure similarity that there would be a presumed expectation that such compounds possess similar properties.
Regarding Claims 6 and 8. Bieber teaches the composition of Claim 1. Bieber does not expressly teach an embodiment in which the claimed combination of thermally expandable particles are used in conjunction with polypropylene glycol diacrylate. However, Bieber does teach the concept of using a combination of EMS F100 D and K37 as the filler in inventive Example 16 (Table 6). EMS F100 D corresponds to thermally expandable microspheres, while K37 corresponds to hollow glass bubbles (Table 1). Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use a combination of EMS F100 D and K37 as the filler in an embodiment of Bieber in which polypropylene glycol diacrylate is used as the crosslinking agent. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Bieber shows in Example 16 that a combination of EMS F100 D and K37 are suitably used as the filler in the disclosed compositions (Table 6).
Regarding Claim 7. Bieber teaches a sheet comprising the composition of Claim 1 ([0174] and [0255] – [0256]).
Regarding Claim 11. Bieber teaches the composition of Claim 1 comprising a total content of hollow particles of 2 to 30 weight percent [0061].
Regarding Claim 12. Bieber teaches the composition of Claim 11 comprising a total content of hollow particles of at least 5% by volume [0061]. While this range is not identical to the instantly claimed range of 50 to 95% by volume, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 13. Bieber teaches the composition of Claim 11 comprising a total content of hollow particles of at least 5% by volume [0061]. While this range is not identical to the instantly claimed range of 50 to 95% by volume, it does overlap. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Claims 1 – 6 and 8 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/106992 to Matsubara et al. (hereinafter Matsubara) in view of KR 20160103522A to Hirayama et al. (hereinafter Hirayama) . For the purposes of examination, citations for Matsubara are taken from an English language equivalent of the document, US 2023/0002661. Citations for Hirayama are taken from a machine translation of the document obtained from the European Patent Office website in July 2026.
Regarding Claims 1, 6, and 8 – 10. Matsubara teaches a composition comprising
a compound represented by the following Formula (1-4):
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in which wherein R11 and R12 each independently represent a hydrogen atom or a methyl group [0042]; R14 and R15 each independently represent an alkylene group having 2 to 5 carbon atoms; and k1, k2, and k3 each independently represent an integer of 2 or more. Each of R14 and R15, which are present in plurality, may be identical with each other or may be different from each other [0043].
Matsubara additionally teaches the composition may further comprise a foaming agent [0093] but does not expressly teach it corresponds to hollow particles. However, Hirayama teaches MATSUMOTO® F-190Dand F-260D microspheres as foaming agents for polymerizable acrylic compositions used to prepare electronic components [0054]. Both of these microspheres correspond to commercially available thermally expandable hollow particles in which liquid is enclosed in the hollow portion thereof. Moreover, both of these thermally expandable hollow particles have a maximum volumetric expansion in the instantly claimed range (see [0137] and [0140] of the PG-PUB of the instant application). Matsubara and Hirayama are analogous art as they are from the same field of endeavor, namely polymerizable compositions comprising hollow particles. Before the effective filing date of the instantly claimed invention, it would have been obvious to use MATSUMOTO® F-190D and/or F-260D microspheres as the foaming agent in the composition of Matsubara. The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Hirayama shows that MATSUMOTO® F-190D and F-260D microspheres are all known, commercially available microspheres suitable for use in polymerizable acrylic compositions for the preparation of electronic components.
Regarding Claims 2 – 5. Matsubara teaches the composition according to Claim 1 wherein the polyoxyalkylene chain represented by (R14O)k1 and a polyoxyalkylene chain represented by (R15O)k3 are each preferably a copolymer chain containing an oxyethylene group and an oxypropylene group [0042], wherein the copolymer chains may be random copolymer chains (Claim 5).
Response to Arguments
Applicant's arguments filed April 14, 2026 have been fully considered but they are not persuasive. Applicant argues that Bieber does not disclose a compound represented by the newly claimed Formula (1-4). While the Office agrees that Bieber no longer anticipates the instant claims, it is the Office’s position that the Bieber does render obvious the claimed composition containing a compound of Formula (1-4) for the reasons detailed in the new grounds of rejection under 35 U.S.C. 103 above. In addition, new grounds of rejection are set forth in under 35 U.S.C. 103 in view of Matsubara and Hirayama, with Matsubara expressly teaching a composition comprising compounds of Formula (1-4).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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