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.
Claim(s) 1-9 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ha et al. (US 2017/0081567) in view of Cho et al. (US 2014/0184053).
Regarding claim 1, Ha discloses photocurable adhesive film (0105) comprising adhesive layer and at least one release layer (0114) wherein the adhesive layer comprises a first syrup composition, i.e. prepolymer, (abstract), β-carboxyethyl acrylate, i.e. acrylic monomer having the same structure has claimed in present claim, (0042), an initiator (0024) and a crosslinking agent (0023) wherein the amount of acrylic monomer is from 0.1 to 10 parts by weight (0043). However, Ha does not disclose the amount of the acrylic monomer based on the weight of the prepolymer.
Cho discloses adhesive film comprising acrylic copolymer comprising beta carboxyethyl acrylate in amount of 0 to 3 wt% to obtain improved adhesion (0030).
It would have been obvious to one of ordinary skill in the art to use the specific amount of beta carboxyethyl acrylate in the adhesive of Ha to obtain improved adhesion as taught by Cho.
Regarding claims 2 and 3, Ha discloses photocurable adhesive film of claim 1, wherein Ha discloses the acrylic monomer is β-carboxyethyl acrylate (0042) which is the same as claimed in present claim and therefore it is clear that the acrylic monomer of Ha would have the same properties as presently claimed.
Regarding claims 4 and 5, Ha discloses photocurable adhesive film of claim 1, wherein Ha discloses the same adhesive layer as claimed in present claim and therefore it is clear that the adhesive layer of Ha would have the same properties as presently claimed.
Regarding claim 6, Ha discloses photocurable adhesive film of claim 1, wherein the prepolymer is formed from copolymer, i.e. first monomer and second monomer, and has a viscosity of 500 to 20,000 cps (0013).
Regarding claim 7, Ha discloses photocurable adhesive film of claim 6, wherein the first monomer comprises butyl acrylate or methyl acrylate, i.e. aliphatic hydrocarbon based acrylate monomer having 1 to 30 carbon atoms, (0040) and the second monomer comprises 2 hydroxyethyl acrylate, i.e. a functional monomer containing at least one hetero atom, (0045).
Regarding claim 8, Ha discloses photocurable adhesive film of claim 6, wherein the first monomer is present in an amount of 50 to 99 parts (0041) and the second monomer is present in an amount of 0 to 40 parts by weight (0045) and therefore it is clear that the amount of first and second monomer of Ha would meet the claimed ratio.
Regarding claim 9, Ha discloses photocurable adhesive film of claim 1, wherein the content of the initiator is 0.1 parts by weight of 100 parts by weight of prepolymer syrup (table 3) and the content of the crosslinking agent is 0.25 (0.1*100/40) to 12.5 (5*100/40) parts by weight of 100 parts by weight of prepolymer syrup (0023).
Regarding claims 17-18, Ha discloses photocurable adhesive film (0105) comprising adhesive layer and at least one release layer (0114) wherein the adhesive layer comprises a first syrup composition, i.e. prepolymer, (abstract), β-carboxyethyl acrylate, i.e. acrylic monomer having the same structure has claimed in present claim, (0042), an initiator (0024) and a crosslinking agent (0023) wherein the amount of acrylic monomer is from 0.1 to 10 parts by weight (0043) and wherein the prepolymer is formed from copolymer, i.e. first monomer and second monomer, and has a viscosity of 500 to 20,000 cps (0013) and wherein the first monomer comprises butyl acrylate or methyl acrylate, i.e. aliphatic hydrocarbon based acrylate monomer having 1 to 30 carbon atoms, (0040) and the second monomer comprises 2 hydroxyethyl acrylate, i.e. a functional monomer containing at least one hetero atom, (0045).
However, Ha does not disclose the amount of the acrylic monomer based on the weight of the prepolymer.
Cho discloses adhesive film comprising acrylic copolymer comprising beta carboxyethyl acrylate in amount of 0 to 3 wt% to obtain improved adhesion (0030).
It would have been obvious to one of ordinary skill in the art to use the specific amount of beta carboxyethyl acrylate in the adhesive of Ha to obtain improved adhesion as taught by Cho.
Regarding claim 19, Ha discloses photocurable adhesive film of claim 17, wherein the first monomer is present in an amount of 50 to 99 parts (0041) and the second monomer is present in an amount of 0 to 40 parts by weight (0045) and therefore it is clear that the amount of first and second monomer of Ha would meet the claimed ratio.
Regarding claim 20, Ha discloses photocurable adhesive film of claim 17, wherein the content of the initiator is 0.1 parts by weight of 100 parts by weight of prepolymer syrup (table 3) and the content of the crosslinking agent is 0.25 (0.1*100/40) to 12.5 (5*100/40) parts by weight of 100 parts by weight of prepolymer syrup (0023).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ha et al. (US 2017/0081567) in view of in view of Cho et al. (US 2014/0184053) and further in view of Liu et al. (US 2013/0078462).
Regarding claim 10, Ha discloses photocurable adhesive film of claim 1, wherein Ha discloses double coated tape with a release layer (0114) but does not disclose plurality of release layer with the first layer is fluorine based release layer and the second layer is silicone based release layer.
Liu discloses multilayer release films (0002) having silicone based release layer or fluorine based release layer (0040) .
It would have been obvious to one of ordinary skill in the art to use such release films of Liu on the both side of the tape with silicone release layer on one side and fluorine release layer on the other side to protect the adhesive surface.
Response to Arguments
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
Applicant argues that Ha does not disclose the amount of the acrylic monomer based on the weight of the prepolymer, therefore it is unclear how Cho can relied upon for the amount of the acrylic monomer based on the weight of the prepolymer in Ha. Examiner agrees that the Cho does not disclose prepolymer. However, It is noted that given that Cho discloses amount of beta carboxyethyl acrylate in weight % and when the amount of beta carboxyethyl acrylate in present claim is converted in weight %, i.e. 0.499% (0.5/100.05) to 9.09% (10/110), it is clear that Ha in view of Cho meets the presently claimed amount.
Applicant argues that Cho discloses beta carboxyethyl acrylate in an amount of 0 to 3 wt% to obtain improved adhesion, it seems that Cho is teaching that beta carboxyethyl acrylate has nothing to do with improved adhesion, that is, 0 wt% beta carboxyethyl acrylate would improve adhesion. Examiner respectfully disagrees. Given that Cho discloses beta carboxyethyl acrylate in an amount of 0 to 3 wt% to obtain improved adhesion, one of ordinary skill in the art would consider 0 wt% being least improved adhesion or no improvement at all and 3 wt% being most improved adhesion.
Applicant argues that in the rejection of each of the remaining claims, the Office Action points only Ha reference. It is noted that claims 1-9 are depended on claim 1 and therefore if claim 1 is rejection under Ha in view of Cho, all the remaining claims which are depended on claim 1 also rejected under Ha in view of Cho. Further, applicant’s attention is drawn to 103 statement which also states that claims 1-9 and 17-20 are rejected under Ha in view of Cho.
Applicant points to examples in specification and argues that acrylic monomer of formula provides unexpected results. However, the data is not persuasive given that the examples are not commensurate in scope with the scope of the present claims given that the examples disclose specific types and amounts of prepolymer, initiator and crosslinking agent while present claim recites any types of prepolymer, initiator and crosslinking agent. Further, present claim recites any acrylic monomer having claimed structural formula with N is an integer of 1 to 3 while examples disclose specific acrylic monomer. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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