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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-3 in the reply filed on October 13, 2025 is acknowledged. The traversal is on the ground(s) that claims of Groups I, II, and III are interrelated so that search of one group of claims will relevel art to other. Further, applicant points to Examples in the specification and asserts that Example 3 (Table 4) of the specification, which has iso-C32 (branched alkyl group having 33 C atoms), requires a lower peeling force than the other Examples and Comparative Examples having a lower branched alkyl groups. Pages 4-5 of applicant’s reply.
This is not found persuasive because as set forth in the Restriction requirement mailed on August 14, 2025, Groups I-III do not relate to a single general inventive concept under PCT Rule 13.1, because, under PCT Rule 13.2, they lack the same or corresponding special technical feature for the reasons set forth in the Restriction requirement. Furthermore, the examiner respectfully submits that applicant’s arguments based on Example 3 in the specification are not found persuasive, because applicant’s showing is not commensurate in scope with the claimed invention. Specifically, the claimed invention is broader in scope than applicant’s showing. Example 3 discloses specific composition (Precursor Polymer 6) whereas claim 1 encompasses acrylate monomer having branched alkyl group of 32 or more carbon atoms and includes a genetic acrylic monomer having benzophenone structure. As such, applicant’s showing is not commensurate in scope with the claimed invention. See MPEP 716.02(d).
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on October 13, 2025.
Claim Objections
Claim 2 is objected to because of the following informalities: at line 2, insert “the” before “acrylate monomer”.
Appropriate correction is required.
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 1-3 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 “acrylate monomer having a branched alkyl group having 32 or more carbon atoms”. The examiner submits that “or more carbon atoms” recitation renders scope of the claim indefinite, because it is unclear what is the upper rend point value of carbon atoms. As such, the meets and bounds of this recitation are unclear.
As to claims 2 and 3, these claims recite “polymerizable component”. It is unclear what is meant by this recitation. Specification recites “In the present disclosure, “polymerizable component” refers to a component capable of radical polymerization with an acrylate monomer having a branched alkyl group having 24 or more carbon atoms.” See 0026 of US Patent Application Publication No. 20250101272 A1 of the present application (“published application”). However, it is unclear what component in the claim is “Component capable of radical polymerization with an acrylate monomer having a branched alkyl group having 24 or more carbon atoms”, because claims do not set forth this component.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Clapper et al. (US 8137807 B2) in view of Suwa (US 20050118352 A1).
As to claim 1, Clapper discloses pressure sensitive adhesive (acrylic polymer release agent) comprising copolymers containing up to 100, preferably 51 to 99 parts by weight of an (meth)acrylic acid ester monomers of 2-alkyl alkanols, wherein the molar carbon number average of said 2-alkyl alkanol is 12 to 32 (abstract, column 6, lines 55-60, claim 1, abstract). Further, Clapper discloses 2-tetradecyl-1-octadecyl acrylate (GM8 in Table 1), which is applicant’s preferred acrylate monomer having branched alkyl group having 32 carbon atoms. See 0030 of the published application.
Further, as to claim 1 limitation “acrylic polymer release agent”, the examiner submits that Clapper discloses “According to the Pressure-Sensitive Tape Council, pressure-sensitive adhesives (PSAs) are known to possess properties including the following: (1) aggressive and permanent tack, (2) adherence with no more than finger pressure, (3) sufficient ability to hold onto an adherend, and (4) sufficient cohesive strength to be removed cleanly from the adherend (column 1, lines 20-35). Given that the PSA can be removed from an adherend, the PSA of Clapper including the acrylic copolymer is interpreted to meet claimed “acrylic polymer release agent”.
As to claim 1, Clapper is silent as to specifically disclosing acrylic monomer having a benzophenone structure.
Suwa discloses a release agent precursor containing a poly(meth)acrylate ester (0001). The poly(meth)acrylate of Suwa is a copolymer formed of an acrylic monomer component containing a (meth)acrylate having C1-30 alkyl group as a first alkyl (meth)acrylate and a (meth)acrylate having C1-12 alkyl group as a second alkyl (meth)acrylate, and a (meth)acrylate ester having UV active group (0017). Further, Suwa discloses that UV active group generates free radical to promote crosslinking of the release agent precursor and adhesion to the substrate, resulting in improvement in adhesion between the substrate and the release agent. Suwa further discloses acrylic monomer having benzophenone structure (0024).
Clapper discloses that the adhesive of the invention is crosslinked using UV crosslinkers such as copolymerizable benzophenone (column 6, lines 29-30).
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 acrylic monomer having benzophenone structure of Suwa and use it in the invention of Clapper as the copolymerizable benzophenone UV crosslinker, motivated by the desire to promote crosslinking of the adhesive of Clapper and improve adhesion of the adhesive to a substrate.
As to claim 2, Clapper discloses up to 100 parts by weight of an (meth)acrylic acid ester monomers of 2-alkyl alkanols, wherein the molar carbon number average of said 2-alkyl alkanol is 12 to 32 (column 6, lines 55-60). Claimed range of 99 mass% or more overlaps or lies within the range disclosed by Clapper such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 3, Clapper is silent as to disclosing this claim. Suwa as set forth previously discloses acrylic monomer having benzophenone structure (0024). Further, Suwa discloses that a preferred amount of (meth)acrylate ester having UV active group is within a range of from 0.01 to 1.0% by weight per poly(meth)acrylate ester unit (0024). Claimed range of 1 mass% or less overlaps or lies within the range disclosed by Suwa such that prima facie case of obviousness exists. See MPEP 2144.05(I).
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 acrylic monomer having benzophenone structure and its amount as disclosed by Suwa and use it as the copolymerizable benzophenone UV crosslinker in Clapper, motivated by the desire to promote crosslinking of the adhesive of Clapper and improve adhesion of the adhesive to a substrate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Suwa et al. (US 20240092071A1) discloses release liner for silicone adhesive layer.
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.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
October 24, 2025