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 without traverse of Group I, claims 1-7 in the reply filed on December 3, 2025 is acknowledged.
Claims 9-13 and 15-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 3, 2025.
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 3 -5 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.
As to claim 3, this claim depends from claim 1. Claim 3 recites that the acrylic polymer (A) (of claim 1) is A1, A2, and/or A3. However, it is unclear from the specification and claim whether the acrylic polymers A1, A2, and A3 are additional polymers or further refer to the polymer A recited in claim 1. Because, e.g. claim 3 recites that (A2) is further having functional group R2 that can react with the functional group R1 in a side chain. The examiner submits that the functional group R1 is in the polymer A1 whereas the functional group R2 is in the polymer A2. Therefore, it is unclear what the scope of claim 3 is. For purpose of examination, if a prior art discloses a polymer containing active hydrogen containing functional group, it will meet the claim.
As to claim 5, this claim recites “excluding b1 and b2”. It is unclear what is meant by this recitation. For purpose of examination, the aforementioned recitation is interpreted as excluding the monofunctional acrylic monomer and the polyfunctional acrylic monomer recited in claim 4.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 4, and 7 are rejected under 35 U.S.C. 102(a)(a) as being anticipated by Unverhau et al. (EP 3388457 A1; US 20210102099 A1 is relied upon as equivalent document in the rejection) and as evidence by (a) PubChem compound data sheet of 2-ethylhexyl acrylate, and (b) PubChem compound data sheet of Acrylic acid.
As to claim 1, Unverhau teaches a pressure sensitive adhesive (PSA) composition (coating composition) (abstract) comprising 8 pph of Polymer 1 (acrylic polymer (A)) (Table 1, Table 2, example FL4), 90 pph of 2-ethylhexyl acrylate (2EHA) (polymerizable compound (B)), 10 pph of acrylic acid (AA) (polymerizable compound (B)), 0.1 pph of HDDA, 0.2 pph of Ominirad, 2 pph of Aerosil, and 12 pph of GBsK15.
Further, as to claim 1 limitation of the polymerizable compound (B), the examiner submits that a person having ordinary skill in the art would recognize that 2EHA and AA monomers disclosed by Unverhau in example FL4 meet the claimed polymerizable compound B.
Further, as to claim 1 limitations of 0.5 to 30 wt% of acrylic polymer (A) and 70 to 99.5 wt% of polymerizable compound B, from example FL4 of Unverhau disclosed above, calculated wt% of the Polymer 1 (acrylic polymer) is 6.5 wt% and calculated wt% of the polymerizable compound B is 81.8 w%. Thus, Unverhau teaches 6.5 wt% of the acrylic polymer, which is within the claimed range of 0.5-30% by mass. Additionally, Unverhau teaches 81.8 wt% of the polymerizable compound B, which is within the claimed range of 70-99.5% by mass. The wt% of Polymer 1 (acrylic polymer) in example FL4 is calculated as (8/(90+10+8+0.1+0.2+2+12)) * 100 = 6.5%, and the weight% of the polymerizable compound calculated as ((90+10)/(90+10+8+0.1+0.2+2+12)) * 100 = 81.8%.
As to claim 1 limitation “the acrylic polymer (A) has 50% by mol or more of structural units derived from one or more (meth)acrylate monomer having a branched alkyl group having 3 to 20 carbon atoms and/or…”, the examiner submits that Polymer 1 disclosed by Unverhau is formed of 80 wt% of 2EHA and 20 wt% of AA (Table 1). A person having ordinary skill in the art would recognize that 2EHA monomer inherently contains a branched alkyl group (2-ethylhexyl) having 8 carbon atoms. Further, applicant and Unverhau discloses identical branched alkyl group (2-ethylhexyl) (see paragraph 0043 of the published application).
Further, as to claim 1 limitation of 50% by mol or more of (meth)acrylate monomer having a branched alkyl group having 3 to 20 carbon atoms, the examiner submits that calculated mol% of 2EHA monomer in Polymer 1 (acrylic polymer) disclosed in Table 1 of Unverhau is 61 mol%, which is within the claimed range of 50% by more. The mol% is calculated by first converting wt% of 2EHA (80 wt%) and AA (20 wt%) (Table 1 of Unverhau) into moles by dividing by the molar mass of 2EHA and AA, adding all the moles to get the total moles, and then dividing each monomer’s moles by the total moles and multiply by 100. The molar mass of 2EHA (184.27 g/mol) and AA (72.06 g/mol) was obtained from the attached PubChem compound data sheets.
Further, as to claim 1 limitation of the polymerizable compound B comprising a monofunctional acrylic monomer whose homopolymer has Tg exceeding 60°C, the examiner submits that Unverhau as set forth previously discloses acrylic acid monomer (Table 2, FL 4). A person having ordinary skill in the art would recognize that the acrylic acid is a monofunctional acrylic monomer whose homopolymer Tg is 106 °C. See 0057 of US Patent Application Publication 20160137884 A1.
As to claim 4, Unverhau further discloses 90 pph of 2EHA monomer (Table 2, example FL 4), which would be recognized by one of ordinary skill in the art as a monofunctioal acrylic monomer b1. Further, wt% of the 2EHA monomer in example FL4 of Unverhau is (90/(90+10+8+0.1+0.2+2+12)) * 100 = 73.6 wt%, which is within the claimed range of 10 to 96% by mass. Further, the examiner submits that the polyfunctional monomer b2 amount in the claimed inventio is 0% by mass.
As to claim 7, Unverhau teaches formation of PSA layer by UV curing the coating compositions FL 1-4 (0283).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Unverhau et al. (EP 3388457 A1; US 20210102099A1 is relied upon as equivalent document in the rejection) and as evidence by (a) PubChem compound data sheet of 2-Ethylhexyl acrylate, and (b) PubChem compound data sheet of Acrylic acid, as applied to claim 1 above, and further in view of Yamamoto et al. (US 20160137884 A1).
Unverhau is silent as to explicitly disclosing Tg and Mw of the acrylic polymer A.
However, as to the claimed Tg, Unverhau discloses acrylic polymer (Table 1). The Tg of the acrylic polymer disclosed in Table 1 is calculated from the Fox equation disclosed in 0055-00557 of Yamamoto, which is a known equation in the art. Specifically, the acrylic polymer disclosed in Unverhau is formed of 80 wt% 2EHA monomer and 20 wt% AA monomer (Table 1). Further, Tg of 2EHA monomer and AA monomer disclosed in 0057 of Yamamoto are converted in K unit and are respectively 203.15 K and 379.15 K. From Fox equation disclosed in 0055 of Yamamoto, the calculated Tg of the acrylic polymer of Unverhau is -47°C, which is within the claimed range of -85°C to 40°C.
Alternatively, with respect to the claimed Tg and Mw of the acrylic polymer, Yamamoto discloses a PSA containing acrylic polymer (0026, 0030). Yamamoto further discloses that from the standpoint of combining adhesive strength and removability, the acrylic polymer has Tg in a range of from -80°C to -30°C (0054). Further, Yamamoto discloses that the acrylic polymer has Mw of 30 *104 or more and 150*104 or smaller in order to balance cohesion and adhesion (0061).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the acrylic polymer having the claimed Mw and Tg, motivated by the desire to form an adhesive composition having suitable adhesion and cohesion (removability).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Unverhau et al. (EP 3388457 A1; US 20210102099A1 is relied upon as equivalent document in the rejection) and as evidence by (a) PubChem compound data sheet of 2-ethylhexyl acrylate, and (b) PubChem compound data sheet of Acrylic acid, as applied to claim 1 above, and further as evidence by Habu et al. (US 20100028669 A1) and Iseki et al. (US 20130158199 A1).
Unverhau is silent as to disclosing e.g. acrylic polymer further having an active hydrogen containing functional group R1 in a side chain. However, Unverhau discloses formation of the acrylic polymer by polymerizing unsaturated carboxylic acid containing monomer (acrylic acid) with another acrylic monomer (2EHA) (Table 1). A person having ordinary skill in the art would recognize that such polymerization would inherently form a polymer having an active hydrogen containing functional group (carboxyl group) in a side chain (see 0070 of Habu). Further, a person having ordinary skill in the art would recognize that acrylic polymer having active hydrogen containing functional group such as carboxyl group reacts with a crosslinking agent such as isocyanate (see 0018 of Iseki). Unverhau discloses crosslinking agent in the adhesive composition to increase the cohesive strength and specific examples of such crosslinking agents include isocyanates (0075).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the acrylic polymer A that is further having an acrylic hydrogen containing functional group (carboxyl group), motivated by the desire to crosslink the acrylic polymer and increase the cohesive strength of the adhesive.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Unverhau et al. (EP 3388457 A1; US 20210102099A1 is relied upon as equivalent document in the rejection) and as evidence by (a) PubChem compound data sheet of 2-ethylhexyl acrylate, and (b) PubChem compound data sheet of Acrylic acid, as applied to claim 1 above, and further in view of Takenouchi et al. (US 20170009001 A1).
Unverhau is silent as to disclosing claims 5 and 6.
Takenouchi discloses a (meth)acrylamide based urethane oligomer (urethane (meth)acrylamide oligomer) and active energy ray curable composition containing the urethane (meth)acrylamide oligomer (0001). Further, Takenouchi discloses that the active energy ray curable composition contains 1% by weight or more of the urethane (meth)acrylamide oligomer (0034). The claimed range of 2 to 50 wt% of urethane oligomer overlaps or lies within the range disclosed by Takenouchi such that prima facie case of obviousness exists. See MPEP 2144.05 (I). Further, the active energy ray curable composition of Takenouchi functions as a pressure sensitive adhesive (0094). Moreover, Takenouchi discloses that the (meth)acrylamide based urethane oligomer has excellent compatibility with organic solvents, general purpose acrylic monomer and oligomers, and a high curing speed when irradiated with active energy rays (0019). Further, Takenouchi discloses that the composition containing the (meth)acrylamide based urethane oligomer has excellent adhesion, moisture resistance, chemical resistance, surface curability, and has low curing shrinkage, high transparency, and high elongation, and a formed product thereof (0019).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to further provide a urethane (meth)acrylamide oligomer in the adhesive composition in the amount as claimed and as disclosed by Takenouchi, motivated by the desire to form the adhesive composition that has excellent adhesion, moisture resistance, chemical resistance, surface curability, and has low curing shrinkage, high transparency, and high elongation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Moon et al. (US 20170166786 A1) discloses an adhesive composition comprising a (meth)acrylic copolymer, a monofunctional (meth)acrylic monomer, a polyfunctional (meth)acrylic monomer, and an initiator (0042). Moon further discloses that the monofunctional (meth)acrylic monomer may be present in the amount of from about 1 parts by weight to 60 parts by weight per 100 parts by weight of the (meth)acrylic copolymer (0075). A person having ordinary skill in the art would recognize that the aforementioned amount of the monofunctional (meth)acrylic monomer disclosed by Moon is outside of the claimed amount of the polymerizable compound of 70-99.5% by mass.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 January 9, 2026