DETAILED ACTION
The Examiner acknowledges the cancelation of claim 6 in the amendments filed 3/24/2026.
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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 3/24/2026, with respect to the objection to claim 3 as set forth in paragraph 4 of the action mailed 1/28/2026 have been fully considered and are persuasive. The objection to claim 3 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 3/24/2026, with respect to the rejection of claims 1-9 and 14-16 under 35 U.S.C. 112(b) as set forth in paragraph 6 of the action mailed 1/28/2026, have been fully considered and are persuasive. The ejection of claims 1-9 and 14-16 has been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1-2, 4-5, 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 was included with the previous 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 (hydroxypivalic acid group) 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 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.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 3/24/2026, with respect to the rejections of claims 1-2, 4-7, 9 and 14-16 over Okamoto et al. under 35 U.S.C. 103 and claims 3 and 8 over Okamoto et al. in view of Konno et al. under 35 U.S.C. 103 as set forth in paragraphs 9-10 of the action mailed 1/28/2026, have been fully considered but they are not persuasive.
The Examiner notes that inventive Examples 1-6 comprise the acrylate having two functional groups (M210 or DPGD of Table 1) in a range of approximately 71 to 79 parts by weight per 100 parts by weight of the combination of the acrylate having two functional groups and the acrylate having three or more functional groups, the latter of which is disclosed in said Table 1 as M370 and which comprises three functional groups.
The Comparative Examples (CE) of said Table 1 provide the acrylate having two functional groups in a range of approximately 58 to 80 parts by weight per 100 parts by weight of the combination of the acrylate having two functional groups and the acrylate having three or more functional groups, with CE-2 comprising no polyfunctional acrylates and CE-1, CE-3 and CE-4 comprising the acrylate having two functional groups in the presently claimed proportions.
CE-9 comprises all of the presently claimed components, and comprises the acrylate having two functional groups at 70 parts by weight (rounded up from 69.70 parts by weight) and the silane coupling agent (KBM-403) at 15 parts weights. CE-10 comprises none of the acrylate having two functional groups. Thus, CE-9 teaches all the limitations of the presently claimed invention of at least current claim 1, but does not demonstrate the results of peel strength and thermal shock resistance of the inventive Examples. Indeed, it is unclear if the presently claimed invention provides the unexpected currently argued.
Also, the Applicant is respectfully reminded that, 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).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of 70 parts by weight or more of the acrylate having two functional groups (i.e., the hydroxypivalic acid group-containing acrylate having two functional groups) based on 100 parts by weight of the acrylate having two functional groups and the acrylate having three or more functional groups. It is also significant to note that the data presently disclosed provides the silane coupling at 15 to 30 parts by weight based on 100 parts by weight of the combined amount of the monofunctional acrylate, the polyfunctional acrylate and the silane coupling agent, but the scope of the proportion of the silane coupling agent is unbounded in its upper limit.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 5/9/2026
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