DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 5 in the amendments filed 7/27/2026.
In the event that the elected claims become allowable and the Applicant’s request a rejoinder of the non-elected claims 10-13, the Examiner notes possible issues with the presently recited non-elected claims.
Claim 10 should be amended to more clearly recite that the two instances of the moisture permeability are referring to the two instances of the transparent protective film.
The “adhesive films” of current claim 10 are plural, where the adhesive film of current claim 7 is singular.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/27/2026 has been entered.
Claim Objections
Claim 7 is objected to because of the following informalities: it appears the claim should be amended to recite “…claim 1 or a cured. Appropriate correction is required.
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, 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 (70.5 to 80 parts by weight).
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 to 30 parts by mass).
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 monomers (A), (B) and (C) comprise acrylate functional groups.
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 the generation 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 7/27/2026, with respect to the rejections of claims 1-2, 4-5, 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 6-7 of the action mailed 5/12/2026, have been fully considered but they are not persuasive.
The Examiner respectfully apologizes, but a numerical error was made in the previous analysis of the presently disclosed data, which is amended herein. The Applicant is respectfully welcomed to check the Examiner’s numbers provided below. The Examiner notes that the presently claimed proportion of the acrylate having two functional groups at 70.5 to less than 80 parts by weight is based on 100 parts by weight of the polyfunctional acrylate comprising the acrylate having two functional groups and the acrylate having three or more functional groups. The data in Table 1 for the acrylate having two functional groups (M201 or DPGDA) and the acrylate having three or more functional groups (M370) does not provide the polyfunctional acrylates at a combined proportion of 100 parts by weight.
For inventive Example 1, to calculate the amount of the M210 or DPGDA based on 100 parts by weight (pbw) of the combined amounts of the M210 (or DPGDA) and the M370 is
50 pbw (M201 or DPGDA) + 16 pbw (M370) = 66 pbw,
and then dividing 100 pbw by 66 pbw yields a multiplication factor to determine the pbw of the M210 and is given by 100/66 is approximately 1.515. Thus, the pbw of the M210 based on 100 pbw of the polyfunctional acrylates (M210 and M370) yields 1.515 × 66 = 75.8 pbw. Repeating this calculation for inventive Examples 2-7 provides:
Example 2 = 75.8 pbw;
Example 3 = 76.5 pbw;
Example 4 = 73.3 pbw;
Example 5 = 71.4 pbw;
Example 6 = 75.8 pbw;
Example 7 = 78.8 pbw.
Thus, the parts by weight presently recited (70.5 to less than 80 parts by weight) for the claimed acrylate having two functional groups is commensurate in scope with the presently disclosed data.
However, repeating the same calculation for the silane coupling agent still demonstrates that the claimed proportion for said silane coupling agent (i.e., 15 to 30 parts by weight) is not commensurate in scope. For inventive Example 1, to calculate the amount of the silane coupling agent based on 100 parts by weight (pbw) of the combined amounts of the monofunctional acrylate (4-HBA), M210 (or DPGDA), M370 and the silane coupling agent (KBM-403, KBM-503 or KBM-5103), the multiplication factor is determined via,
16 pbw (4-HBA) + 50 pbw (M201) + 16 pbw (M370) + 15 pbw (KBM-403) = 97 pbw and,
100 pbw/97 pbw = 1.03 multiplication factor.
Thus, the pbw of the silane coupling agent for Example 1 per 100 pbw of the combined amounts of the monofunctional monomer (4-HBA), the polyfunctional monomers (M210 and M37) and the silane coupling agent (KBM-403) yields 1.03 × 15 = 15.5 pbw. Repeating this calculation for inventive Examples 2-7 provides:
Example 2 = 15.5 pbw;
Example 3 = 23.1 pbw;
Example 4 = 21.7 pbw;
Example 5 = 15.0 pbw;
Example 6 = 15.5 pbw;
Example 7 = 15.5 pbw.
Thus, the parts by weight presently recited (15 to 30 parts by weight) for the claimed silane coupling agent is not commensurate in scope with the presently disclosed data as there is no data representative at or near the claimed upper limit of 30 parts by weight.
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).
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 8/21/2026
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