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, 3-12, 15, 19, 25, and 26; Species I-ib and I-iia, in the reply filed on 29 June 2026 is acknowledged. The traversal is on the ground(s) that JP-101 is not directed to curable pressure sensitive adhesives, nor does it suggest the claimed functional (meth)acrylate monomer, which comprises a combination of sterically hindered mono(meth)acrylate monomer and an acrylic mono(meth)acrylate monomer.
This is not found persuasive because the technical feature of the claim groups is directed to a curable composition, not to the intended use thereof. The Examiner makes note that a curable “pressure sensitive adhesive” composition is an intended use limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Regarding arguments directed to the claimed functional (meth)acrylate monomer, which comprises a combination of sterically hindered mono(meth)acrylate monomer and an acrylic mono(meth)acrylate monomer. JP ‘101 teaches monofunctional (meth)acrylates can be employed in combination (i.e. two or more) in the present composition, monomers such as isobornyl acrylate and n-octyl acrylate) [0097-0098]. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see MPEP §2123. As such, JP ‘101 is still relied upon for teaching the special technical feature of the instant claims, thus a lack of unity is present.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6, 27, and 28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species and invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 29 June 2026.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim contains multiple periods. Each claim must be a single sentence beginning with a capital letter and ending with a single period. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995). Appropriate correction is required.
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.
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.
Claim(s) 1, 3-5, 7-12, 15, and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (JP 2020-041101).
Regarding claims 1, 3-5, 7-8, 15, 25, and 26; Yamashita teaches a curable composition comprising a urethane (meth)acrylate which is the reaction product of a polyol (A) containing a farneses-derived structural unit, a polyisocyanate (B), and a (meth)acrylate (C) having a hydroxyl group, for example hydroxyethyl (meth)acrylate (instant n=2), hydroxy propyl (meth)acrylate (instant n=3) [0045], and an alcohol (D) having one hydroxyl group [0021-0022]; a photopolymerization initiator [0014, 0091-0092]; and may further comprise a combination of monofunctional (meth)acrylates (Y), such as isobornyl acrylate (sterically hindered acrylate) and n-octyl acrylate (acyclic acrylate monomer) [0094-0097].
Yamashita teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Yamashita does not specifically disclose an embodiment containing a urethane (meth)acrylate prepolymer, isobornyl acrylate, and n-octyl acrylate. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing a urethane (meth)acrylate prepolymer, isobornyl acrylate, and n-octyl acrylate based on the invention of Yamashita, and would have been motivated to do so since Yamashita suggests that the composition can contain a urethane (meth)acrylate prepolymer, isobornyl acrylate, and n-octyl acrylate. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 9; Yamashita does not explicitly teach R1 is methyl group. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the functionality of the prepolymer compound (i.e. monofunctional (meth)acrylate) by varying the ratios of said reactants, and would have been motivated to do so in order to achieve a desired crosslinking and/or viscosity of the composition of Yamashita, based on the intended use of the composition.
Regarding claims 10-11; Yamashita teaches both hydroxy functional methacrylates and hydroxy functional acrylates are suitable for achieving the urethane prepolymer of the present invention [0045].
Regarding claim 12; Yamashita teaches a blending amount of a (meth)acylate compound (Y) is preferably 4 to 95% by weight based on the total amount of the urethane (meth)acylate prepolymer (X) and (meth)acylate (Y), thus in the instance the (meth)acrylate (Y) compound is employed in an amount of 50% by weight, a photoinitiator in an amount 3% by weight (see examples), the amount of the urethane (meth)acrylate prepolymer (X) would be 48.5% be weight (as calculated by Examiner). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (JP 2020-041101), as applied to claim 1 above, and further in view of Zhang et al. (US Serial No. 2014/014221).
Yamashita teaches the basic claimed curable composition, as set forth above, with respect to claim 1.
Regarding claim 19; Yamashita teaches it suitable to employ n-octyl acrylate, or other monomers such as such as ethyl (meth)acrylate and lauryl (meth)acrylate [0097], however fails to teach the monomer is ethoxyethoxy ethyl (meth)acrylate. Zhang et al. teaches an adhesive composition, suitable for use on displays, the composition comprising (meth)acrylate monomers, such as ethyl (meth)acrylate, lauryl acrylate, and ethoxyethoxy ethyl acrylate [0031]. Therefore, Zhang et al. teaches that as ethyl (meth)acrylate, lauryl acrylate, and ethoxyethoxy ethyl acrylate are functional equivalents for the purpose of functioning as acrylate monomers suitable for use in adhesive compositions to be used in display panels. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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