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 of Group I, claims 1-9 and 14-16, in the reply filed on 12/19/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/19/2025.
Claim Objections
Claim 3 is objected to because of the following informalities: please amend the claim to recite “…100 parts by [[weigh ]]weight of the UV curing…”. 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 1-9 and 14-16 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.
Regarding claim 1, it is unclear from the claim limitations what is being claimed given that the “monomer” limitations recites only a singular monomer, while the monomer “comprising” the listed monofunctional acrylate, polyfunctional acrylate and silane coupling require three monomers, or plural monomers.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 4-7, 9 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (JP 2017197711 A), and in light of the evidence provided by Lee et al. (US 2014/0162044 A1). The Examiner notes that citations from the ‘711 reference were taken from a machine translation, which is included with the current action.
Regarding claim 1, Okamoto teaches an (active energy-polymerizable) UV curing adhesive composition comprising a:
hydroxyl group-containing mono(meth)acrylate monomer (A) in an amount of 10 to 80 mass%;
di(meth)acrylate monomer (B) such as, inter alia, hydroxypivalic acid neopentyl glycol di(meth)acrylate, in an amount of 10 to 50 mass%;
tri- or tetra(meth)acrylate monomer (C) in an amount of 10 to 50 mass%, wherein the proportions of (A), (B) and (C) are relative to 100 mass% of the total of (A), (B) and (C) (claims 1-3).
The Examiner notes that the combination of the di(meth)acrylate monomer (B) and the tri- or tetra(meth)acrylate monomer (C) teaches a polyfunctional acrylate, wherein the di(meth)acrylate monomer (B) teaches an acrylate having two functional groups, and the tri- or tetra(meth)acrylate monomer (C) teaches an acrylate having three or more functional groups. The Examiner also notes that the disclosed proportions of the di(meth)acrylate monomer (B) teaches and the tri- or tetra(meth)acrylate monomer (C) provides an overlap with the presently acrylate having two functional groups per 100 parts by weight of the polyfunctional acrylate (70 parts by weight or more).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
It is well settled that where the 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 In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 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).
Okamoto continues to teach that the monomers (B) and (C) provide improved adhesive strength at low temperatures (para 0026, 0038, 0050), with monomer (A) additionally providing hydrogen bonding to substrates comprising a hydroxyl group (para 0027). The Examiner further notes that it is established in the art that the crosslinking density provided by polyfunctional (meth)acrylates increases proportionally with the number of acrylate functionalities (see para 0073 of Lee).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ monomers (B) and (C) of Okamoto in the relative proportions presently claimed based on the crosslinking density required of the prior art’s intended application as in the present invention.
Okamoto also teaches that the adhesive composition comprises:
an active energy ray cationic polymerization initiator (g2) in an amount of 0.1 to 10 mass% of the adhesive (para 0090-0093);
a photosensitizer (para 0097); and,
an epoxy group-containing silane coupling agent (D) such as, inter alia, 3-glycidoxypropyltrimethoxysilane (non-alicyclic epoxy group) towards suppressing the curing shrinkage of the adhesive resin layer and improving the room and low temperature adhesive strength, and is present in an amount of 0.1 to 30 mass% of the adhesive (para 0055-0067), which overlaps that presently claimed (15 parts by mass or more).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the epoxy group-containing silane coupling agent (D) of Okamoto in the relative proportions presently claimed based on the suppression of curing shrinkage and room and low temperature adhesion required of the prior art’s intended application as in the present invention.
Regarding claim 2, as noted above, the relative proportions of the components (A), (B), (C) and (D) as disclosed in Okamoto teaches or renders obvious the presently claimed parts by weight limitations.
Regarding claim 4, as noted above, Okamoto teaches that monomer (B) comprises two acrylate functional groups, and that tri- or tetra(meth)acrylate monomer (C) comprises three or four acrylate functional groups.
Regarding claim 5, as noted above, Okamoto teaches or renders obvious the presently claimed relative proportions of monomers (B) and (C) (70 to 80 parts by weight).
Regarding claim 6, as noted above, Okamoto teaches that the di(meth)acrylate monomer (B) is hydroxypivalic acid neopentyl glycol di(meth)acrylate.
Regarding claim 7, Okamoto teaches a cured product of the active energy-polymerizable polymerizable adhesive.
Regarding claim 9, Okamoto teaches that the cured adhesive resin layer has a thickness of 0.1 to 6 mm (claim 7; para 0108).
Regarding claims 14-15, as noted above, Okamoto teaches hydroxyl group-containing mono(meth)acrylate monomer (A) such as, inter alia, 4-hydroxybutyl (meth)acrylate (para 0028).
Regarding claim 16, as noted above, Okamoto teaches that the epoxy group-containing silane coupling agent (D) is 3-glycidoxypropyltrimethoxysilane (non-alicyclic epoxy group).
Claim(s) 3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (JP 2017197711 A) in view of Kanno et al. (US 2019/0055432 A1).
Regarding claim 3, as noted above, Okamoto teaches that the adhesive comprises the photosensitizer, and the active energy ray cationic polymerization initiator (g2) in an amount of 0.1 to 10 mass% of the adhesive, which overlaps that presently claimed (0.1 to 5 parts by weight).
Okamoto is silent to the presently claimed proportions of the photosensitizer.
However, Kanno teaches a curing type adhesive composition (title) comprising cation photopolymerization initiators and photosensitizers, the latter of which are provided to promote of cationic or acidic species from the cation photopolymerization initiators, and are provided in an amount of 0.1 to 5 % by weight (para 0086).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the photosensitizer and the active energy ray cationic polymerization initiator (g2) of Okamoto in the relative proportions presently claimed based on the rate of the curing polymerization reaction required of the prior art’s intended application as in the present invention.
Regarding claim 8, Okamoto teaches the active energy-polymerizable adhesive composition, and the cured product therefrom, as in the rejections of at least current claims 1 and 7.
Okamoto does not specify that a release film is provided on a surface of the cured adhesive film.
However, Kanno teaches that the disclosed PSA layer is provided with a separator comprising a release coating (release film) towards the prevention of pollution of the PSA layer surface (para 0159).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ a release coated-separator to cover and protect the surface(s) of the cured adhesive film of Okamoto as in the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 1/21/2026