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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maeda (JP 2016-124961). As the JP reference is not in English, citations are made to the attached translation.
Maeda teaches pressure sensitive adhesives (¶1) which include a (meth)acrylic oligomer and a (meth)acrylic polymer (¶ 21-22) and an isocyanate compound (¶9, 11). Maeda teaches an example where a (meth)acrylic polymer, (meth)acrylic oligomer, and isocyanate compound are combined together (¶ 111).
Maeda teaches the (meth)acrylic polymer includes an example having 60 wt% lauryl methacrylate (Table 1, production example 8) and the (meth)acrylic oligomer includes an example having 70wt% ethylhexyl acrylate (Table 2, production example B). Lauryl methacrylate has an alkyl group of 12 carbon atoms and ethylhexyl acrylate has an alkyl group of 8 carbon atoms. Maeda teaches an example 22 where production example 8 and production example B are used in a 90/10 ratio (Table 3) with 2.43 pbm of a trimer of hexamethylene diisocyanate (¶111). This meets claim 1 when the production example B of Maeda corresponds to claimed acrylic polymer A, the production example 8 of Maeda corresponds to the acrylic polymer B and the ratio of 90/10 meets the amount in claim 1. Maeda teaches using the adhesive an adhesive layer on a film (¶ 119).
Maeda does not expressly recite the adhesive composition is a hot melt composition. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Maeda teaches the composition is applied to a coating and dried (¶112) at which point the composition would be solventless (¶ 94). As the term ‘hot melt’ does not provide any structural difference, the prior art is capable of being used as a hot melt composition.
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) 1-2, 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masuda (JP 2011-231189). As the JP reference is not in English, citations are made to the attached translation.
Masuda teaches pressure sensitive adhesive compositions (¶1) which include where the composition includes (A) a (meth)acrylic copolymer having a Mw of 650,000-950,000, (b) a (meth)acrylic copolymer having a Mw of 1,050,000-1,350,000, and includes a toluene diisocyanate based compound (C) (¶9). Masuda teaches the ratio of (A)/(B) is 70/30 to 90/10 (¶ 24) which meets the range of claim 1. Masuda teaches the compositions are dried and form a film (¶ 45-47).
Masuda teaches examples where copolymer (A) is formed from butyl acrylate and acrylic acid (¶ 51) and copolymer (B) is formed from butyl acrylate, t-butyl acrylate, acrylic acid, and hydroxyethyl acrylate (¶53). Each copolymer (A) and copolymer (B) contain a (meth)acrylic monomer having an alkyl group with 4 carbon atoms.
Masuda does not explicitly provide an example of a copolymer with a (meth)acrylic monomer having an alkyl group with 9-12 carbon atoms.
However, Masuda teaches suitable monomers include nonyl (meth)acrylate, decyl (meth)acrylate and dodecyl (meth)acrylate (¶ 20).
It would have been obvious to one of ordinary skill in the art to use nonyl (meth)acrylate, decyl (meth)acrylate and dodecyl (meth)acrylate as a monomer because Masuda teaches these are suitable monomer (¶ 20) and because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
The molecular weights taught by Masuda overlap or fall within the ranges of claim 2. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Masuda suggests the molecular weights. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Masuda. See MPEP 2123.
Masuda does not expressly recite the adhesive composition is a hot melt composition. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Masuda teaches the composition is applied to a coating and dried (¶ 45-47) at which point the composition would be solventless. As the term ‘hot melt’ does not provide any structural difference, the prior art is capable of being used as a hot melt composition.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beyers (US 2011/0014404) in view of Masuda (JP 2011-231189). As the JP reference is not in English, citations are made to the attached translation.
Beyers teaches meltable acrylate polymers for adhesives (abstract) which give a shear viscosity at 130˚C of 20-150 Pa∙s. This falls in the range of claim 3.
Beyers does not expressly recite the composition having the claimed polymer A and claimed polymer B.
Masuda teaches pressure sensitive adhesive compositions (¶1) which include where the composition includes (A) a (meth)acrylic copolymer having a Mw of 650,000-950,000, (b) a (meth)acrylic copolymer having a Mw of 1,050,000-1,350,000, and includes a toluene diisocyanate based compound (C) (¶9). Masuda teaches the ratio of (A)/(B) is 70/30 to 90/10 (¶ 24) which meets the range of claim 1. Masuda teaches the compositions are dried and form a film (¶ 45-47).
Masuda teaches examples where copolymer (A) is formed from butyl acrylate and acrylic acid (¶ 51) and copolymer (B) is formed from butyl acrylate, t-butyl acrylate, acrylic acid, and hydroxyethyl acrylate (¶53). Each copolymer (A) and copolymer (B) contain a (meth)acrylic monomer having an alkyl group with 4 carbon atoms.
Masuda does not explicitly provide an example of a copolymer with a (meth)acrylic monomer having an alkyl group with 9-12 carbon atoms.
However, Masuda teaches suitable monomers include nonyl (meth)acrylate, decyl (meth)acrylate and dodecyl (meth)acrylate (¶ 20).
It would have been obvious to one of ordinary skill in the art to use nonyl (meth)acrylate, decyl (meth)acrylate and dodecyl (meth)acrylate as a monomer because Masuda teaches these are suitable monomer (¶ 20) and because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
The molecular weights taught by Masuda overlap or fall within the ranges of claim 2. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Masuda suggests the molecular weights. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Masuda. See MPEP 2123.
It would have been obvious to one of ordinary skill in the art to use the two polymers compositions of Masuda because they exhibit excellent durability under high temperature and high humidity conditions (¶ 14).
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wulff (US 2015/0097136) in view of Masuda (JP 2011-231189). As the JP reference is not in English, citations are made to the attached translation.
Wulff teaches solvent free polyacrylate binders (abstract) which has a shear viscosity at 130˚C of not more than 40 Pa∙s(¶ 20). This falls in the scope of the range of claim 3.
Wulff does not expressly recite the composition having the claimed polymer A and claimed polymer B.
Masuda teaches pressure sensitive adhesive compositions (¶1) which include where the composition includes (A) a (meth)acrylic copolymer having a Mw of 650,000-950,000, (b) a (meth)acrylic copolymer having a Mw of 1,050,000-1,350,000, and includes a toluene diisocyanate based compound (C) (¶9). Masuda teaches the ratio of (A)/(B) is 70/30 to 90/10 (¶ 24) which meets the range of claim 1. Masuda teaches the compositions are dried and form a film (¶ 45-47).
Masuda teaches examples where copolymer (A) is formed from butyl acrylate and acrylic acid (¶ 51) and copolymer (B) is formed from butyl acrylate, t-butyl acrylate, acrylic acid, and hydroxyethyl acrylate (¶53). Each copolymer (A) and copolymer (B) contain a (meth)acrylic monomer having an alkyl group with 4 carbon atoms.
Masuda does not explicitly provide an example of a copolymer with a (meth)acrylic monomer having an alkyl group with 9-12 carbon atoms.
However, Masuda teaches suitable monomers include nonyl (meth)acrylate, decyl (meth)acrylate and dodecyl (meth)acrylate (¶ 20).
It would have been obvious to one of ordinary skill in the art to use nonyl (meth)acrylate, decyl (meth)acrylate and dodecyl (meth)acrylate as a monomer because Masuda teaches these are suitable monomer (¶ 20) and because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
The molecular weights taught by Masuda overlap or fall within the ranges of claim 2. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Masuda suggests the molecular weights. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Masuda. See MPEP 2123.
It would have been obvious to one of ordinary skill in the art to use the two polymers compositions of Masuda because they exhibit excellent durability under high temperature and high humidity conditions (¶ 14).
Claim(s) 1, 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beyers (US 2011/0014404) in view of Maeda (JP 2016-124961). As the JP reference is not in English, citations are made to the attached translation.
Beyers teaches meltable acrylate polymers for adhesives (abstract) which give a shear viscosity at 130˚C of 20-150 Pa∙s. This falls in the range of claim 3.
Beyers does not expressly recite the composition having the claimed polymer A and claimed polymer B.
Maeda teaches pressure sensitive adhesives (¶1) which include a (meth)acrylic oligomer and a (meth)acrylic polymer (¶ 21-22) and an isocyanate compound (¶9, 11). Maeda teaches an example where a (meth)acrylic polymer, (meth)acrylic oligomer, and isocyanate compound are combined together (¶ 111).
Maeda teaches the (meth)acrylic polymer includes an example having 60 wt% lauryl methacrylate (Table 1, production example 8) and the (meth)acrylic oligomer includes an example having 70wt% ethylhexyl acrylate (Table 2, production example B). Lauryl methacrylate has an alkyl group of 12 carbon atoms and ethylhexyl acrylate has an alkyl group of 8 carbon atoms. Maeda teaches an example 22 where production example 8 and production example B are used in a 90/10 ratio (Table 3) with 2.43 pbm of a trimer of hexamethylene diisocyanate (¶111). This meets claim 1 when the production example B of Maeda corresponds to claimed acrylic polymer A, the production example 8 of Maeda corresponds to the acrylic polymer B and the ratio of 90/10 meets the amount in claim 1. Maeda teaches using the adhesive an adhesive layer on a film (¶ 119).
It would have been obvious to one of ordinary skill in the art to use the compositions of Maeda because they have excellent coating properties, excellent releasability and anti-fouling properties after heat treatment (¶15).
Claim(s) 1, 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wulff (US 2015/0097136) in view of Maeda (JP 2016-124961). As the JP reference is not in English, citations are made to the attached translation.
Wulff teaches solvent free polyacrylate binders (abstract) which has a shear viscosity at 130˚C of not more than 40 Pa∙s(¶ 20). This falls in the scope of the range of claim 3.
Wulff does not expressly recite the composition having the claimed polymer A and claimed polymer B.
Maeda teaches pressure sensitive adhesives (¶1) which include a (meth)acrylic oligomer and a (meth)acrylic polymer (¶ 21-22) and an isocyanate compound (¶9, 11). Maeda teaches an example where a (meth)acrylic polymer, (meth)acrylic oligomer, and isocyanate compound are combined together (¶ 111).
Maeda teaches the (meth)acrylic polymer includes an example having 60 wt% lauryl methacrylate (Table 1, production example 8) and the (meth)acrylic oligomer includes an example having 70wt% ethylhexyl acrylate (Table 2, production example B). Lauryl methacrylate has an alkyl group of 12 carbon atoms and ethylhexyl acrylate has an alkyl group of 8 carbon atoms. Maeda teaches an example 22 where production example 8 and production example B are used in a 90/10 ratio (Table 3) with 2.43 pbm of a trimer of hexamethylene diisocyanate (¶111). This meets claim 1 when the production example B of Maeda corresponds to claimed acrylic polymer A, the production example 8 of Maeda corresponds to the acrylic polymer B and the ratio of 90/10 meets the amount in claim 1. Maeda teaches using the adhesive an adhesive layer on a film (¶ 119).
It would have been obvious to one of ordinary skill in the art to use the compositions of Maeda because they have excellent coating properties, excellent releasability and anti-fouling properties after heat treatment (¶15).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764