DETAILED ACTION
This Office Action is in response to the Amendment filed on 10/21/2025.
Claim(s) 8 and 9 were cancelled.
Claim(s) 6-7 and 10 are withdrawn due to a previous restriction requirement.
Claim(s) 1-7 and 10, are now pending in the application.
Claim Rejections - 35 USC § 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 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over CN111748313 to Jiang et al. (as found on the IDS dated 1/12/2024) as evidenced by CN9178NS, Expancel DE, CN549, and AE09. For the purposes of examination, citations from a machine translation of Jiang and the citation of the table of example 1 of Jiang are incorporated herein.
Regarding Claims 1-3, Jiang teaches, in Example 1, a UV-curable adhesive precursor composition [0059] consisting essentially of a polyurethane acrylate oligomer [0063] which is CN9178NS (polyfunctional acrylate oligomer), an acrylic monomer [0063] which is isobornyl acrylate EM70 (a reactive diluent including an acrylate monomer), a photoinitiator [0064] which is 1-hydrooxycyclohexylphenyl ketone, and heat-expandable microspheres 551 DE 40 d 42. EXPANCEL provides evidence that heat-expandable microspheres 551 DE 40 d 42 have an expansion initiation temperature of 75-200°C [Expancel DE, page 12 expansion curve graph].
Jiang does not explicitly teach example 1 is a liquid at temperature Ta.
However, the commercially available ingredient CN9178NS is difunctional and has a low viscosity [CN9178NS] and is the same polyurethane acrylate oligomer in instant specification [0033]; Isobornyl acrylate is the same reactive diluent in instant specification [0033] and has an approximate viscosity of 10 cPs. Example 1 further comprises pure acrylic resin CN549 that has a viscosity of 350 and a cured Tg of 24°C [CN549] and AE09 surfactant that has a low viscosity [AE09 surfactant, page 3, third paragraph]. Therefore, since all of these components have a viscosity, wherein most component’s viscosity is considered “low”, the curable adhesive of Jiang is reasonably considered a liquid.
Jiang does not teach Ttan max is less than Ti, Ttan max is at least 10°C less than Ti, or Ta is at least 10°C greater than a melting point of the adhesive precursor composition. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Jiang teaches a product prepared from the same polyurethane acrylate oligomer CN9178NS in instant specification [0033], the same reactive diluent, isobornyl acrylate in instant specification [0045] and same photoinitiator 1-hydroxycyclohexylphenyl ketone in instant specification [0058] by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. Ttan max is less than Ti, Ttan max is at least 10°C less than Ti, or Ta is at least 10°C greater than a melting point of the adhesive precursor composition - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Furthermore, the recitation of “and wherein upon curing the adhesive precursor composition to form a temporary bonding adhesive and heating the temporary bonding adhesive and heating the temporary bonding adhesive to a temperature, T, greater than Ti thereby expanding the heat-expandable microspheres, causing the heat-expandable temporary adhesive to expand, forming an expanded adhesive which facilitates debonding, wherein temperature, T, is between 130°C to 250°C” are process steps for using the adhesive precursor composition and therefore do not limit the claimed subject matter, which is directed to the adhesive precursor composition itself.
Regarding Claim 4, Jiang teaches the adhesive precursor composition of claim 1, wherein the polyurethane acrylate oligomer [0063] which is CN9178NS [Example 1] is a difunctional aliphatic urethane acrylate oligomer [CN9178 MS]
Regarding Claim 5, Jiang teaches the adhesive precursor composition of claim 1, to provide a UV-curable adhesive that can be automatically peeled off after being heated [0009] using the expansion of the thermally debonding filler [0012] i.e., heat expandable temporary adhesive.
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered but they are not persuasive.
Applicant states Jiang has different components (acrylic resin and surfactant) and this is related to Jiangs composition not being liquid, as Jiang’s composition is different from the compositions of the current disclosure.
In response, attention is directed to the rejection of claim 1 wherein all of the components found in Jiang have a viscosity and are therefore liquid, including acrylic resin CN549 and AE09 surfactant. As such, since all of these components have a viscosity, wherein most component’s viscosity is considered “low”, the curable adhesive of Jiang is reasonably considered a liquid.
Applicant states Jiang does not teach the amended claim 1 limitation of “consisting essentially of” the four listed components.
Instant specification is silent on the phrase “consisting essentially of” or how it is defined.
See MPEP 2111.03(III): The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising."
Instant specification is absent a clear indication of what the basic and novel characteristics actually are, therefore “consisting essentially of” will be construed as “comprising”.
For these reasons, Applicant's arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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