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 .
Specification
The abstract of the disclosure is objected to because the abstract is not limited to a single paragraph and contains Figure. See MPEP 608.01(b)(C).
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 13 is objected to because of the following informalities: at lines 8-9, replace the recitation “with at least one selected from the group consisting of” with a recitation “with at least one another tackifying resin selected from the group consisting of” in order to better characterize applicant’s invention.
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.
Claim 3 is 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, it is unclear as to what is the scope of the claim in view of the specification. For example, it is unclear what is meant by “alignment bonding” and “the alignment bonding region”. Further, there is a lack of antecedent basis with respect to the recitations “the side of the adhesive layer” and “the alignment bonding region”.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1-3, 8-11, and 13 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Akira Yamagami (JP2016-151006A- machine translation provided).
As to claims 1 and 11, Yamagami teaches a pressure sensitive adhesive (PSA) sheet having a PSA layer B on both sides of a support A (substrate layer) (claim 1).
Further, as to claim 11, the PSA layer of Yamagami is formed of an adhesive composition comprising acrylic polymer (base polymer) (0056), a tackifying resin (0069), and a crosslinking agent (0075).
Further, as to claim 11, Yamagami teaches PSA with three different tackifying resins with the total content of the tackifying resin of 50 parts by weight per 100 parts by weight of the acrylic polymer (see 0135 disclosing 5 parts of D-135 polymerized rosin ester, 20 parts by mass of KE-100 dispropotionated rosin ester, and 25 parts of FTR6100 petroleum resin as tackifiers), which is within the claimed range of 30-50 parts by weight of the tackifier. Further, Yamagami discloses 30-55 parts by mass of tackifying resin per 100 parts by mass of acrylic polymer (0073). Claimed range of 30-50 parts by weight of tackifier overlaps or lies within the range disclosed by Yamagami such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
Further, as to claim 11, Yamagami discloses 3.3 parts by mass of crosslinking agent in a PSA solution containing 100 parts by mass of acrylic polymer (0135-0136), which is within the claimed range of 1-5 parts by weight of the crosslinking agent. Additionally, Yamagami discloses that the crosslinking agent enables control of the gel fraction of the PSA (0075). Yamagami discloses that the adhesive has gel fraction (gel rate) of 46% (0137). Further, Yamagami discloses that the adhesive has gel fraction of e.g. 30% to 50% by mass (0046), which overlaps with gel rate disclosed by present application of 45% to 70% (see claim 8). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a workable range of the crosslinking agent including the claimed, motivated by the desire to control the gel fraction of a PSA layer.
As to claims 1, 2, 9, and 10, Yamagami discloses the claimed invention except for the properties recited in the claims (180° peel adhesive force, alignment bonding region having a separation of 80 mm or less, storage modulus, and loss modulus). However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01(I). The PSA sheet of Yamagami as set forth above is identical or substantially identical to the claimed adhesive sheet. As such, absent any factual evidence on the record, it is reasonable to presume that the aforementioned properties would inherently be present in the PSA sheet of Yamagami. Alternatively, said properties would obviously be present once the PSA sheet of Yamagami is provided.
As to claim 8, Yamagami discloses that the adhesive has gel fraction (gel rate) of 46% (0137). Further, Yamagami discloses that the adhesive has gel fraction of e.g. 30% to 50% by mass (0046). The claimed range of gel rate 45% to 70% overlaps or lies within the gel rate disclosed by Yamagami such that prima facie case of obviousness exists.
As to claim 13, Yamagami discloses e.g. rosin based tackifying resin (0069) (claim 13 recitation “wherein the tackifying resin is at least one selected from the group consisting of…a rosin-based tackifying resin…and a hydrocarbon-based tackifying resin.”).
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.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Akira Yamagami (JP2016-151006A- machine translation provided) as applied to claim 1 above.
As to claim 4, Yamagami discloses that the PSA layer has surface roughness Ra of 0.1 to 2 µm and Rz of 4 to 40 µm (claim 1 and claim 2 of Yamagami). The surface roughness of Yamagami’ s PSA layer prevents air bubbles from remaining at the interface between the PSA layer and adhered surface and provides excellent adhesive strength (0009, 0011-0012). The claimed ranges of Ra and Rz overlap or lie within the ranges Ra and Rz disclosed by Yamagami such that prima facie case obviousness exists. Further, as to Rz/Ra ratio, while Yamagami does not explicitly disclose this ratio, given that Ra and Rz values disclosed by Yamagami render obvious claimed invention, it would have been obvious to arrive at the claimed ratio of Rz/Ra, motivated by the desire to form PSA layer that prevents air bubbles from remaining at the interface between the PSA layer and adhered surface and provides excellent adhesive strength.
As to claim 5, Yamagami discloses that the support has surface roughness Ra of 0.1 µm or more (0035), which overlaps with the claimed range of Ra of 0.2 to 1.5 µm.
As to claim 6, Yamagami discloses a release liner laminated on a surface of the PSA layer, wherein the release liner has surface roughness Ra 0.08 to 1 µm (claim 8 and 0088), which overlaps with the claimed range of 0.2 to 1.5 µm.
As to claims 5 and 6, Yamagami do not disclose Rz and Rz/Ra values for the release film and the substrate layer as claimed. However, Yamagami discloses forming surface roughness in the PSA layer using release liner or support (0087). Further, Yamagami desires surface roughness in the PSA layer in order to prevents air bubbles from remaining at the interface between the PSA layer and adhered surface and provides excellent adhesive strength (0011, 0012, 0013). 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 workable range of Rz and Rz/Ra for the substrate layer and the release film in Yamagami including the claimed, motivated by the desire to form a PSA layer having surface roughness in order to prevents air bubbles from remaining at the interface between the PSA layer and adhered surface and provide excellent adhesive strength.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Akira Yamagami (JP2016-151006A- machine translation provided) as applied to claim 1 above and further in view of Kishioka (US 20100255253 A1).
Yamagami is silent as to claim 7.
Kishioka discloses a double sided PSA sheet including a PSA layer formed of acrylic polymer (abstract). Kishioka further discloses that weight average molecular weight of soluble fraction (sol fraction) of the PSA layer is from 50,0000 to 500,000 in order to provide durability to PSA sheet and control the thickness unevenness (surface roughness) of the whole surface of the PSA layer. Kishioka further discloses that the Mw of the sol fraction can be controlled depending on the Mw of the acrylic polymer, type and amount of the crosslinking agent (0067). The claimed Mw range of the soluble portion of the adhesive layer of 100,000 or less overlaps or lies within the range disclosed by Kishioka such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
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 Mw of the soluble portion as claimed and as rendered obvious by Kishioka, motivated by the desire to form PSA sheet having durability and PSA layer having suitable surface unevenness.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Akira Yamagami (JP2016-151006A- machine translation provided) as applied to claim 1 above and further in view of Koso et al. (US 20130059960 A1).
Yamagami discloses that the acrylic polymer comprises (meth)acrylic acid alkyl ester monomer such as butyl (meth)acrylate (viscous monomer alkyl (meth)acrylate having an alkyl group of 4 carbon atoms) (0057-0059), polar monomers such as styrene and vinyl acetate (0061), and copolymerizable monomers such as carboxyl group containing monomer (0060).
Yamagami is silent as to disclosing amounts of the viscous monomer, polar monomer, and copolymerizable monomer as claimed.
Koso discloses a PSA composition containing an aqueous solvent, an acrylic polymer dispersed in the solvent, and polyisocyanates crosslinking agent (abstract). The acrylic polymer of Koso is formed of 50 wt% or more, preferably 70 wt% or more of alkyl (meth)acrylate monomer (viscous monomer) (0035 and 0037), about 0.1 to 5 wt% of monomers such as vinyl acetate and styrene (polar monomer) (0044), and from 1 wt% or more of carboxyl group containing monomer (copolymerizable monomer) (0041). The claimed ranges of viscous monomer and copolymerizable monomer overlap or lie within the ranges disclosed by Koso such that prima facie case of obviousness exists. MPEP 2144.05 (I). Further, the upper end point (about 5 wt%) of the amount of polar monomer disclosed by Koso (0044) meets upper end point of the polar monomer (5 parts by weight).
Yamagami desires acrylic polymer. It would have been obvious to form the acrylic polymer of Yamagami using the amounts of viscous monomer, polar monomer, and copolymerizable monomer as disclosed by Koso, motivated by the desire to form a PSA layer having suitable adhesion and cohesion. Further, selection of known material based on its suitability for its intended use establishes prima facie case of obviousness. MPEP 2144.07.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18283885 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of the reference application render obvious claims of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Article by Luke Smoothy “Surface Roughness Explained” disclosing surface roughness terminology “Ra”, Rz”.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
October 22, 2025