DETAILED ACTION
Applicant’s response filed on 05/29/22026 has been fully considered. Claims 1-4 and 8-13 are pending. Claims 1-3, 8, and 12 are amended. Claims 5-7 are canceled.
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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-4 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Miki et al. (US 2013/0122288 A1).
Regarding claims 1 and 8, Miki teaches a pressure-sensitive adhesive composition which contains an acrylic polymer formed from a monomer component through polymerization, or a partial polymer of the monomer component, in which the monomer component includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms, and the monomer component contains substantially no carboxyl-containing monomer [0011], wherein the monomer component preferably further includes a polar-group-containing monomer [0012], wherein the acrylic polymer obtained through polymerization of the monomer component employs a (meth)acrylic C10-C13 alkyl ester as an essential monomer component and thereby has side chain crystallinity, in which side chains of constitutional units derived from the (meth)acrylic C10-C13 alkyl ester are crystallized [0071], wherein crystals formed from the side chains have crystal melting temperatures of about -60°C to about 20°C [0071], wherein the acrylic polymer is non-crystalline at room temperature, about 23°C, but undergoes crystallization of side chains of constitutional units derived from the (meth)acrylic C10-C13 alkyl ester at a low temperature, about -60°C to about 20°C [0071], which reads on a pressure-sensitive adhesive composition, comprising a crystalline acrylic copolymer having a melting point of about -60°C to about 20°C, wherein the acrylic copolymer comprises an alkyl (meth)acrylate unit and a polar functional group-containing unit.
Miki does not teach with sufficient specificity that the crystalline acrylic copolymer has a melting point of -20°C or less. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the crystal melting temperature of Miki’s crystals formed from Miki’s side chains of Miki’s acrylic polymer to be about -60°C to -20°C. The proposed modification would read on the crystalline acrylic copolymer having a melting point of -20°C or less as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing a desired temperature at which Miki’s side chains of Miki’s acrylic polymer melt, for optimizing a desired temperature at which Miki’s acrylic polymer has satisfactory tackiness, for optimizing a desired temperature at which Miki’s acrylic polymer has a higher modulus of elasticity, exhibits a low adhesive strength, becomes more easily removable, and exhibits superior reworkability because Miki teaches that the acrylic polymer has side chain crystallinity, in which side chains of constitutional units derived from the (meth)acrylic C10-C13 alkyl ester are crystallized [0071], that crystals formed from the side chains have crystal melting temperatures of about -60°C to about 20°C [0071], that the acrylic polymer is non-crystalline at room temperature, about 23°C, but undergoes crystallization of side chains of constitutional units derived from the (meth)acrylic C10-C13 alkyl ester at a low temperature, about -60°C to about 20°C [0071], and that the acrylic polymer derived from a (meth)acrylic C10-C13 alkyl ester as an essential monomer component therefore has satisfactory tackiness at room temperature, but, at a low temperature, has a higher modulus of elasticity, exhibits a low adhesive strength, becomes more easily removable, and exhibits superior reworkability [0071], which means that the crystal melting temperature of Miki’s crystals formed from Miki’s side chains of Miki’s acrylic polymer in °C would have affected a temperature at which Miki’s side chains of Miki’s acrylic polymer melt, a temperature at which Miki’s acrylic polymer has satisfactory tackiness, and a temperature at which Miki’s acrylic polymer has a higher modulus of elasticity, exhibits a low adhesive strength, becomes more easily removable, and exhibits superior reworkability.
The Office recognizes that all of the claimed physical properties are not positively taught by Miki, namely that the pressure-sensitive adhesive composition has a storage elastic modulus of 250,000 Pa or less at -20°C in the cross-linked state, wherein the pressure-sensitive adhesive composition has a creep strain rate of at least 30% at -20°C in the cross-linked state, wherein the pressure-sensitive adhesive composition has a recovery rate of at least 70% in the cross-linked state, and wherein the pressure-sensitive adhesive composition has an average transmittance of 90% or less with respect to light having a wavelength of 360 nm to 740 nm. However, Miki renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the pressure-sensitive adhesive composition of claim 1 as explained above. Also, Miki teaches that the pressure-sensitive adhesive composition may further include a crosslinking agent [0029], and that a pressure-sensitive adhesive sheet [0161] formed from the pressure-sensitive adhesive composition [0010] has high transparency [0161]. Furthermore, the specification of the instant application recites that the pressure-sensitive adhesive of the present application may comprise an acrylic copolymer [45]. Therefore, the claimed physical properties would naturally arise from the pressure-sensitive adhesive composition that is rendered obvious by Miki. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 2, the Office recognizes that all of the claimed physical properties are not positively taught by Miki, namely that the storage elastic modulus at -20°C is 140,000 Pa or less, and that the recovery rate is 70% or more. However, Miki renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the pressure-sensitive adhesive composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that the pressure-sensitive adhesive of the present application may comprise an acrylic copolymer [45]. Therefore, the claimed physical properties would naturally arise from the pressure-sensitive adhesive composition that is rendered obvious by Miki. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 3, the Office recognizes that all of the claimed physical properties are not positively taught by Miki, namely that the creep strain rate at -20°C is at least 32%. However, Maki renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the pressure-sensitive adhesive composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that the pressure-sensitive adhesive of the present application may comprise an acrylic copolymer [45]. Therefore, the claimed physical properties would naturally arise from the pressure-sensitive adhesive composition that is rendered obvious by Miki. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 4, the Office recognizes that all of the claimed physical properties are not positively taught by Miki, namely that the pressure-sensitive adhesive composition has a room-temperature peel force of at least 500 gf/inch with respect to glass. However, Miki renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the pressure-sensitive adhesive composition of claim 1 as explained above. Furthermore, the specification of the instant application recites that the pressure-sensitive adhesive of the present application may comprise an acrylic copolymer [45]. Therefore, the claimed physical properties would naturally arise from the pressure-sensitive adhesive composition that is rendered obvious by Miki. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 9, Miki teaches that the acrylic polymer is formed from a monomer component through polymerization, or a partial polymer of the monomer component, in which the monomer component includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms [0011], wherein the monomer component preferably further includes a polar-group-containing monomer [0012], wherein the monomer component preferably further includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 1 to 9 carbon atoms [0014], which reads on wherein the alkyl (meth)acrylate unit has a linear or branched alkyl group with 1 to 10 carbon atoms as claimed.
Regarding claim 10, Miki teaches that the acrylic polymer is formed from a monomer component through polymerization, or a partial polymer of the monomer component, in which the monomer component includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms [0011], wherein the monomer component preferably further includes a polar-group-containing monomer [0012], wherein the monomer component preferably further includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 1 to 9 carbon atoms [0014], wherein the (meth)acrylic ester whose alkyl moiety having 10 to 13 carbon atoms [0037] is undecyl(meth)acrylate, dodecyl(meth)acrylate, or tridecyl(meth)acrylate [0038], which optionally reads on wherein the acrylic copolymer further comprises a unit of Formula 1 wherein R1 represents hydrogen or an alkyl group, and R2 represents an alkyl group with 11 to 13 carbon atoms as claimed.
Miki does not teach a specific embodiment wherein the acrylic copolymer further comprises a unit of Formula 1 as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Miki’s (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms in Miki’s monomer component from which Miki’s acrylic polymer is formed to be undecyl(meth)acrylate, dodecyl(meth)acrylate, or tridecyl(meth)acrylate. The proposed modification would read on wherein the acrylic copolymer further comprises a unit of Formula 1 wherein R1 represents hydrogen or an alkyl group, and R2 represents an alkyl group with 11 to 13 carbon atoms as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of Miki’s (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms that is suitable for Miki’s monomer component from which Miki’s acrylic polymer is formed and/or because it would have been obvious to try with a reasonable expectation of success because Miki teaches that the acrylic polymer is formed from a monomer component through polymerization, or a partial polymer of the monomer component, in which the monomer component includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms [0011], wherein the (meth)acrylic ester whose alkyl moiety having 10 to 13 carbon atoms [0037] is undecyl(meth)acrylate, dodecyl(meth)acrylate, or tridecyl(meth)acrylate [0038]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 11, Miki teaches that the acrylic polymer is formed from a monomer component through polymerization, or a partial polymer of the monomer component, in which the monomer component includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms [0011], wherein the monomer component preferably further includes a polar-group-containing monomer [0012], wherein the monomer component preferably further includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 1 to 9 carbon atoms [0014], wherein the (meth)acrylic ester whose alkyl moiety having 10 to 13 carbon atoms [0037] is undecyl(meth)acrylate, dodecyl(meth)acrylate, or tridecyl(meth)acrylate [0038], wherein the monomer component may have a content of a (meth)acrylic C1-C9 alkyl ester or esters, when included, of not critical, but preferably more than 0 percent weight and less than or equal to 50 percent by weight, based on the total amount, 100 percent by weight, of the monomer component [0061], wherein the monomer component may have a content of a polar-group-containing monomer or monomers, when included, of not critical, but preferably more than 0 percent by weight and less than or equal to 20 percent by weight, based on the total amount, 100 percent by weight, of the monomer component [0064], which means that the monomer component has a content of the (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms greater than or equal to 30 percent by weight and less than 100 percent by weight, based on the total amount, 100 percent by weight, of the monomer component, which optionally reads on wherein the acrylic copolymer comprises at least 60 parts by weight of the unit of Formula 1 relative to 100 parts by weight of the alkyl (meth)acrylate unit. This is based on the calculation 30 / 50 * 100 = 60.
Miki does not teach a specific embodiment wherein the acrylic copolymer comprises 50 to 300 parts by weight of the unit of Formula 1 relative to 100 parts by weight of the alkyl (meth)acrylate unit. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Miki’s (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms in Miki’s monomer component from which Miki’s acrylic polymer is formed to be undecyl(meth)acrylate, dodecyl(meth)acrylate, or tridecyl(meth)acrylate, and to optimize the content of Miki’s (meth)acrylic C1-C9 alkyl ester or esters in Miki’s monomer component from which Miki’s acrylic polymer is formed to be greater than or equal to 25 percent by weight and less than or equal to 50 percent by weight, based on the total amount, 100 percent by weight, of Miki’s monomer component. The proposed modification would read on wherein the acrylic copolymer comprises 60 to 300 parts by weight of the unit of Formula 1 relative to 100 parts by weight of the alkyl (meth)acrylate unit as claimed. This is based on the calculations 30 / 50 * 100 = 60 and 75 / 25 * 100 = 300. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of Miki’s (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms that is suitable for Miki’s monomer component from which Miki’s acrylic polymer is formed and/or because it would have been obvious to try with a reasonable expectation of success because Miki teaches that the acrylic polymer is formed from a monomer component through polymerization, or a partial polymer of the monomer component, in which the monomer component includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms [0011], wherein the (meth)acrylic ester whose alkyl moiety having 10 to 13 carbon atoms [0037] is undecyl(meth)acrylate, dodecyl(meth)acrylate, or tridecyl(meth)acrylate [0038]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). Also, one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing appropriateness of modulus of elasticity of Miki’s acrylic polymer and for optimizing adhesive strength at room temperature, about 23°C, of Miki’s acrylic polymer because Miki teaches that the monomer component may have a content of a (meth)acrylic C1-C9 alkyl ester or esters, when included, of not critical, but preferably more than 0 percent weight and less than or equal to 50 percent by weight, based on the total amount, 100 percent by weight, of the monomer component [0061], that the monomer component, when having a content of (meth)acrylic C1-C9 alkyl ester(s) of 50 percent by weight or less, may give an acrylic polymer having a more appropriate modulus of elasticity and exhibiting a higher adhesive strength at room temperature, about 23°C [0061].
Regarding claim 12, Miki teaches that the acrylic polymer is formed from a monomer component through polymerization, or a partial polymer of the monomer component, in which the monomer component includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms [0011], wherein the monomer component preferably further includes a polar-group-containing monomer [0012], wherein the polar-group-containing monomer is preferably at least one selected from hydroxyl-containing monomers [0013], wherein the monomer component preferably further includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 1 to 9 carbon atoms [0014], wherein the (meth)acrylic ester whose alkyl moiety having 10 to 13 carbon atoms [0037] is undecyl(meth)acrylate, dodecyl(meth)acrylate, or tridecyl(meth)acrylate [0038], wherein the monomer component may have a content of a (meth)acrylic C1-C9 alkyl ester or esters, when included, of not critical, but preferably more than 0 percent weight and less than or equal to 50 percent by weight, based on the total amount, 100 percent by weight, of the monomer component [0061], wherein the monomer component may have a content of a polar-group-containing monomer or monomers, when included, of not critical, but preferably more than 0 percent by weight and less than or equal to 20 percent by weight, based on the total amount, 100 percent by weight, of the monomer component [0064], which means that the monomer component has a content of the (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms greater than or equal to 30 percent by weight and less than 100 percent by weight, based on the total amount, 100 percent by weight, of the monomer component, which optionally reads on wherein the acrylic copolymer comprises the unit of Formula 1 in an amount of at least 60 parts by weight relative to 100 parts by weight of the alkyl (meth)acrylate unit, and wherein a ratio of weight (A) of the unit of Formula 1 relative to a weight (B) of the polar functional group-containing unit is at least 1.5, and wherein the polar functional group-containing unit is a unit derived from a hydroxyl group-containing monomer. This is based on the calculations 30 / 50 * 100 = 60 and 30 / 20 = 1.5.
Miki does not teach a specific embodiment wherein the acrylic copolymer comprises the unit of Formula 1 in an amount of 60 to 300 parts by weight relative to 100 parts by weight of the alkyl (meth)acrylate unit. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Miki’s (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms in Miki’s monomer component from which Miki’s acrylic polymer is formed to be undecyl(meth)acrylate, dodecyl(meth)acrylate, or tridecyl(meth)acrylate, and to optimize the content of Miki’s (meth)acrylic C1-C9 alkyl ester or esters in Miki’s monomer component from which Miki’s acrylic polymer is formed to be greater than or equal to 25 percent by weight and less than or equal to 50 percent by weight, based on the total amount, 100 percent by weight, of Miki’s monomer component. The proposed modification would read on wherein the acrylic copolymer comprises 64 to 300 parts by weight of the unit of Formula 1 relative to 100 parts by weight of the alkyl (meth)acrylate unit as claimed. This is based on the calculations 32 / 50 * 100 = 64 and 75 / 25 * 100 = 300. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of Miki’s (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms that is suitable for Miki’s monomer component from which Miki’s acrylic polymer is formed and/or because it would have been obvious to try with a reasonable expectation of success because Miki teaches that the acrylic polymer is formed from a monomer component through polymerization, or a partial polymer of the monomer component, in which the monomer component includes a (meth)acrylic alkyl ester whose alkyl moiety being a linear or branched-chain alkyl group having 10 to 13 carbon atoms [0011], wherein the (meth)acrylic ester whose alkyl moiety having 10 to 13 carbon atoms [0037] is undecyl(meth)acrylate, dodecyl(meth)acrylate, or tridecyl(meth)acrylate [0038]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). Also, one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing appropriateness of modulus of elasticity of Miki’s acrylic polymer and for optimizing adhesive strength at room temperature, about 23°C, of Miki’s acrylic polymer because Miki teaches that the monomer component may have a content of a (meth)acrylic C1-C9 alkyl ester or esters, when included, of not critical, but preferably more than 0 percent weight and less than or equal to 50 percent by weight, based on the total amount, 100 percent by weight, of the monomer component [0061], that the monomer component, when having a content of (meth)acrylic C1-C9 alkyl ester(s) of 50 percent by weight or less, may give an acrylic polymer having a more appropriate modulus of elasticity and exhibiting a higher adhesive strength at room temperature, about 23°C [0061].
Miki does not teach a specific embodiment wherein a ratio of weight (A) of the unit of Formula 1 relative to a weight (B) of the polar functional group-containing unit is at least 1.7, and wherein the polar functional group-containing unit is a unit derived from a hydroxyl group-containing monomer. Before the effective filing date of the claimed invention one of ordinary skill in the art would have found it obvious to select Miki’s polar-group-containing monomer in Miki’s monomer component from which Miki’s acrylic polymer is formed to be a hydroxyl-containing monomer, and to optimize a content of Miki’s polar-group-containing monomer in Miki’s monomer component from which Miki’s acrylic polymer is formed to be more than 0 percent by weight and less than or equal to 18 percent by weight, based on the total amount, 100 percent by weight, of Miki’s monomer component. The proposed modification would read on wherein a ratio of weight (A) of the unit of Formula 1 relative to a weight (B) of the polar functional group-containing unit is at least 1.8, and wherein the polar functional group-containing unit is a unit derived from a hydroxyl group-containing monomer as claimed. This is based on the calculation 32 / 18 = 1.8. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a species of Miki’s polar-group-containing monomer that is suitable for Miki’s acrylic polymer and/or because it would have been obvious to try with a reasonable expectation of success because Miki teaches that the monomer component preferably further includes a polar-group-containing monomer [0012], and that the polar-group-containing monomer is preferably at least one selected from hydroxyl-containing monomers [0013]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)). Also, one of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing protection of Miki’s acrylic polymer from having an excessively increased adhesive strength with time because Miki teaches that the monomer component may have a content of a polar-group-containing monomer or monomers, when included, of not critical, but preferably more than 0 percent by weight and less than or equal to 20 percent by weight, based on the total amount, 100 percent by weight, of the monomer component [0064], and that the monomer component, when having a content of polar-group-containing monomer(s) of 20 percent by weight or less, may give an acrylic polymer protected from having an excessively increased adhesive strength with time [0064].
Regarding claim 13, Miki teaches that the pressure-sensitive adhesive composition may contain any of known additives according to necessity [0097], and that such other additives include dyestuffs [0097], which optionally reads on the pressure-sensitive adhesive composition according to claim 1, comprising a dye as claimed.
Miki does not teach a specific embodiment of the pressure-sensitive adhesive composition according to claim 1, comprising a dye. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Miki’s dyestuffs to modify Miki’s pressure-sensitive adhesive composition. The proposed modification would read on the pressure-sensitive adhesive composition according to claim 1, comprising a dye as claimed. One of ordinary skill in the art would have been motivated to do so because Miki teaches that the pressure-sensitive adhesive composition may contain any of known additives according to necessity [0097], and that such other additives include dyestuffs [0097], which would have been beneficial for modifying the color of Miki’s pressure-sensitive adhesive composition.
Response to Arguments
Applicant’s arguments, see p. 5, filed 05/29/2026, with respect to the objection to claims 1-4 and 8-13 have been fully considered and are persuasive. The objection to claims 1-4 and 8-13 has been withdrawn.
Applicant’s arguments, see p. 5-6, filed 05/29/2026, with respect to the rejection of claims 1-4 and 8-13 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, have been fully considered and are persuasive. The rejection of claims 1-4 and 8-13 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, has been withdrawn.
Applicant’s arguments, see p. 5-6, filed 05/29/2026, with respect to the rejection of claim 12 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, have been fully considered and are persuasive. The rejection of claim 12 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, has been withdrawn.
Applicant’s arguments, see p. 6-7, filed 05/29/2026, with respect to the rejection of claims 1-4 and 8-12 under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (JP 2020-140008 A, cited in IDS, machine translation in English or untranslated patent used for citation as indicated, made of record 08/09/2024) have been considered and are responded to by the new grounds of rejection in this Office action.
Applicant’s arguments, see p. 6-7, filed 05/29/2026, with respect to the rejection of claims 6 and 7 under 35 U.S.C. 103 as being unpatentable over Lee et al. (JP 2020-140008 A, cited in IDS, machine translation in English or untranslated patent used for citation as indicated, made of record 08/09/2024) as applied to claim 1, and further in view of Miki et al. (US 2013/0122288 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Miki et al. (US 2013/0122288 A1).
Applicant’s arguments, see p. 6-7, filed 05/29/2026, with respect to the rejection of claim 13 under 35 U.S.C. 103 as being unpatentable over Lee et al. (JP 2020-140008 A, cited in IDS, machine translation in English or untranslated patent used for citation as indicated, made of record 08/09/2024) as applied to claim 1 have been considered and are responded to by the new grounds of rejection in this Office action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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