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 .
Response to Arguments
Applicant has amended independent claim 1 and 4 to add the limitation of the pressure sensitive adhesive layer formed from a pressure sensitive adhesive composition to now contain “an acrylic-based monomer and a cyclodextrin derivative having a polymerizable group.”
Applicant argues
that the current prior art, Arai (JP 2018/127561 A) with machine translation, discloses a pressure-sensitive adhesive composition containing an adhesive formed by crosslinking a (meth)acrylic acid ester polymer (A), a polyrotaxane compound (B), and a crosslinking agent (C) (See paragraph [0017]). This is in contrast to the current feature from the new amended limitation of “an acrylic-based monomer and a cyclodextrin derivative having a polymerizable group.”
Arai teaches and suggests that the adhesives of the pressure-sensitive adhesive layer has a gel fraction of 20% or more and 95% or less (paragraph [0014]). In contrast, claim 1 specifies a gel fraction of the pressure-sensitive adhesive as “less than 10%.” Since Arai discloses that this creates excellent step-following properties (paragraph [0015]), in would be unlikely that one of ordinary skill in the art would have considered lowering the gel fraction to a substantially lower value of less than 10%.
Applicant has added new claims 11 and 12 which specify that the pressure-sensitive adhesive composition does not contain a solvent. (Applicant arguments/remarks 04/15/2026 pp. 9-12).
Examiner counter argues regarding point 1), that it appears upon additional scrutiny that under broadest reasonable interpretation that Arai does disclose/teach that the pressure-sensitive adhesive layer contains an acrylic-based monomer and a cyclodextrin derivative having a polymerizable group. See Arai where an acrylic-based monomer is present paragraph [0040] monomers of the (meth)acrylic acid ester polymer (A); and a cyclodextrin derivative is a cyclic oligosaccharide (paragraph [0069]), which is contained by the polyrotaxane compound (B) or adhesive composition (A) and in their unmodified state cyclic oligosaccharides have hydroxyl groups as reactive groups which are intrinsically polymerizable (paragraph [0068]).
Examiner counter argues regarding point 2) that while there is no overlap between the range of less than 10% gel fraction compared to Arai with a gel faction to 20% or more and 95% or less, it would still be considered under broadest reasonable interpretation to have used the range of less than 10% gel fraction since It would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as a step-following performance including lack of moire through routine experimentation in the absence of a showing of criticality in the claimed size. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). However, the examiner will provide further grounds of reference to meet these criteria.
In regard to point 3) where the new limitations of claims 11 and 12 are a solventless pressure-sensitive adhesive composition, the examiner provides new grounds of rejection.
Additionally, applicant has amended dependent claim 3 to remove the trademark “Tetoron mesh #200” and replace it with “a size 200 polyester mesh”. As a result, the previous rejection of claim 3 under 35 U.S.C. § 112(b) is withdrawn.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 4 and 6-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arai (JP2018127561A) with machine translation, of record, .
Regarding Claim 4, Arai anticipates a pressure sensitive adhesive sheet comprising at least a pressure sensitive adhesive layer (abs) and
wherein the pressure sensitive adhesive layer is formed from a pressure sensitive adhesive composition that contains an acrylic-based monomer (paragraph [0040] carboxyl group-containing monomer of the (meth)acrylic acid ester polymer (A) to from a crosslinked structure) and a cyclodextrin derivative having a polymerizable group (paragraphs [0068] [0069] the polyrotaxane compound (B) in the adhesive composition has a cyclic oligosaccharide as the cyclic molecule where in their unmodified state, cyclic oligosaccharides have hydroxyl groups as reactive groups and preferred examples include cyclodextrins),
further discloses wherein a pressure sensitive adhesive that constitutes the pressure sensitive adhesive layer (abs) contains a polymer having a main chain obtained by copolymerizing an acrylic-based monomer (paragraphs [0038] [0052] adhesive composition containing a (meth)acrylic acid ester polymer (A) and a polyrotaxane compound (B) where the (meth)acrylic acid ester polymer (A) is a alkyl group which may be linear) and a cyclodextrin derivative having a polymerizable group (paragraph [0076] polyrotaxane compound (B).is preferably a cyclodextrin group or a main chain) where the polyrotaxane compound (B) in at least in one embodiment, preferably has a cyclic oligosaccharide where preferred examples include cyclodextrins which have reactive groups (paragraphs [0069] [0070]).
Regarding Claim 6, Arai anticipates all the limitations of claim 4 but does not explicitly disclose that the pressure sensitive adhesive is free from a guest molecule that can be included in the cyclodextrin derivative.
However, Arai does disclose that the reactive group of the crosslinking agent (C) reacts with the reactive group of the cyclic molecule of the polyrotaxane compound (B) and react with the hydroxyl groups derived from the carboxyl groups of the (meth)acrylic acid ester Polymer (A) which inherently precludes the involvement of a guest molecule from the cyclodextrin derivative (paragraph [0040]).
Note: This is borne out by the specification reading on claim 6 where the guest molecule refers to a molecule that can be included in the cyclodextrin derivative, and such molecules include those that have not yet been included in the cyclodextrin derivative (Specification, paragraph [[0031]).
Regarding Claim 7, Arai anticipates all the limitations of claim 4 and further anticipates that a weight-average molecular weight of a sol content of the pressure sensitive adhesive measured by a gel permeation chromatography method is 100,000 or more and 3,000,000 or less (paragraph [0062] where this recited lower limit, and upper limit overlaps the range of 300,000 to 1,500,000 which is the furthest boundaries of the range). Note: MPEP 2131.03: Prior Art which teaches a range within, overlapping or touching the claimed range anticipated if the prior art range discloses the claimed range with “sufficient specificity”.
Regarding Claim 8, Arai anticipates all the limitations of claim 4 and further discloses that a glass-transition temperature (Tg) of the polymer is higher than -55°C and 20°C or lower. (paragraph [0055] where the combination of two homopolymers where one Tg is more than 0° C and the other Tg is less than 0° C.).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arai (JP2018127561A) with machine translation in view of Bowen (Bowen et al., "Adhesive Bonding to Dentin Improved by Polymerizable Cyclodextrin Derivatives", Journal of Research of the National Institute of Standards and Technology, vol. 114, no. 1, pp. 11-20) IDS 05/02/2024.
Regarding Claim 5, Arai anticipates all the limitations of claim 4 but does not disclose that the cyclodextrin derivative is a group that contains a polymerizable unsaturated double bond.
Bowen teaches in a treatise regarding the determination of bonding characteristics of a hydrophilic monomer formulation containing polymerizable cyclodextrin derivatives (abs). and discloses a polymer with a main chain obtained by copolymerizing an acrylic-based monomer and cyclodextrin derivative having a polymerizable group (P. 15 2.2 Experimental Bonding Formulation 1 a portion of polymerizable cyclodextrin derivative reaction products mixed with sorbitol dimethyacrylate and methacrylic acid as reactive diluents and polymerizations induced) and further discloses that the polymerizable group possessed by the cyclodextrin derivative is a group that contains a polymerizable unsaturated double bond. (p. 19 1st paragraph - the vinyl double bonds of styrene readily homopolymerizes and copolymerizes with the double bonds of methacrylate esters.)
Claim(s) 1-3, 9 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arai (JP2018127561A) with machine translation in view of Koso (US 2014/0066557 A1) IDS 05/02/2024.
Regarding Claim 1, Arai discloses a pressure sensitive adhesive sheet comprising at least a pressure sensitive adhesive layer (abs), wherein
the pressure sensitive adhesive layer is formed from a pressure sensitive adhesive composition that contains an acrylic-based monomer (paragraph [0040] carboxyl group-containing monomer of the (meth)acrylic acid ester polymer (A) to from a crosslinked structure) and a cyclodextrin derivative having a polymerizable group (paragraphs [0068] [0069] the polyrotaxane compound (B) in the adhesive composition has a cyclic oligosaccharide as the cyclic molecule where in their unmodified state, cyclic oligosaccharides have hydroxyl groups as reactive groups and preferred examples include cyclodextrins),
a gel fraction of a pressure sensitive adhesive that constitutes the pressure sensitive adhesive layer is at least 80% or less (paragraph [0032]) while Arai further discloses
a 500% modulus when performing a tensile test at 23°C (paragraphs [0014] [0030] breaking elongation of 500% or more in a tensile test; tensile test performed at 23 °C) for the pressure sensitive adhesive layer is 0.02 N/mm2 or more and 5 N/mm2 or less (paragraph [0031] preferably 0.1 N/mm2 or more and 5 N/mm2 or less).
Additionally, Arai also discloses that its gel fraction has a lower limit of at least one embodiment to be 20% or more and not less than 10% as recited by the claim.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a gel fraction for the pressure sensitive adhesive to be less than 10%, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. While there is no overlap between the range of less than 10% gel fraction compared to Arai with a gel faction to 20% or more and 95% or less, it would still be considered under broadest reasonable interpretation to have used the range of less than 10% gel fraction since It would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as a step-following performance including lack of moire through routine experimentation in the absence of a showing of criticality in the claimed size. One would have been motivated to use this range for the purpose of optimizing the cohesive strength of the pressure sensitive adhesive and the step-following agility under high-temperature and high-humidity conditions (paragraph [0033]).
However, there are further prior art references that disclose, teach or suggest a gel fraction range of a pressure sensitive adhesive layer that is less than 10% including Koso. Koso teaches in a pressure-sensitive adhesive composition that an acrylic polymer that has a longer pot-life has a quick progression of a reaction when heated (abs, paragraph [0010]). A critical component to achieve this favorable combination is a gel fraction preferably that is 30 mass% or less (paragraph [0012]). Moreover, Koso further teaches that in at least one embodiment (paragraphs [0013] [0141] [0142] lower ranges are also particularly preferable including 10 mass % or less and even into a range of 5 mass % or less and 0 mass % or more (paragraph [0140]) [Note: gel fraction is considered a percentage of a dry mass of an ethyl acetate-insoluble portion with respect to a mass of the pressure-sensitive adhesive layer before a test immersion for aging (paragraph [0142]).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Arai with the teachings of Koso whereby a pressure sensitive adhesive sheet comprising a pressure sensitive adhesive layer that has a composition contributing to a long pot life and short reaction times when heated, as disclosed by Arai, would also include that the gel fraction in at least one embodiment is in the range of less than 10%, as taught by Koso.
One with ordinary skill would use this range because at this amount the pressure-sensitive adhesive layer is retained in shape (paragraph [0141]).
Regarding Claim 2, the combination of Arai and Koso disclose all limitations of claim 1 and Arai further discloses that when an adhesive strength of the pressure sensitive adhesive layer to soda lime glass is P1 (N/25 mm) (paragraph [0035] adhesive strength preferably 10 N/25 mm), and an adhesive strength of a re-formed pressure sensitive adhesive layer to soda lime glass is P2 (N/25 mm), the re-formed pressure sensitive adhesive layer being formed from a pressure sensitive adhesive solution obtained by dissolving the pressure sensitive adhesive layer (paragraph [0105] where in manufacturing the adhesive sheet , a coating solution of the adhesive composition P is applied and the coating layer becomes the pressure-sensitive adhesive layer – 11 to obtain the pressure-sensitive adhesive sheet -1),
However, Arai nor Koso do not disclose an adhesive strength ratio of P2 (dissolved P1 to form coating) to P1 (original pressure sensitive adhesive layer (P2/P1) is 0.5 or more and less than 1.47.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to produce an adhesive strength ratio of P2 to P1 (P2/P_1) that is 0.5 or more and less than 1.47 since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. One would have been motivated to obtain this ratio for the purpose of obtaining a concentration and viscosity of the coating solution that are within a range that allows coating and is appropriately selected depending on the situation (Arai, paragraph [0094]).
Regarding Claim 3, the combination of Arai and Koso disclose all limitations of claim 1 and Arai further discloses the mass of the pressure sensitive adhesive layer M1 (mg), (paragraph [0136] pressure-sensitive adhesive layer wrapped in a polyester mesh (mesh size 200) where mass of mesh alone subtracted (tare) mass is defined as M1)
and a mass of a pressure sensitive adhesive after filtrating through Tetoron mesh #200 and drying a pressure sensitive adhesive solution obtained by dissolving the pressure sensitive adhesive layer of the unit volume is M2 (mg) (paragraph [0137] pressure-sensitive adhesive wrapped in the polyester meshi is dissolved removed and air-dried. After drying mass is measures subtracting the mesh tare where mass is defined as M2.), whereby a gel fraction (%) is expressed as M2 to M1 (M2/M1). However, this gel fraction which corresponds to the mass ratio of the claim is not disclosed to be 0.7 or more
It would have been obvious to one having ordinary skill in the art at the time the invention was made to produce a mass ratio of 0.7 or more since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Here one would be motivated to determine this value because it has an effect on the haze value of the pressure-sensitive adhesive which can suppress the occurrence of moire in the resulting display (Arai paragraphs [0024] [0026]).
Regarding Claim 9, the combination of Arai and Koso disclose all the limitations of claim 1 and Arai further discloses that the pressure sensitive adhesive sheet includes two release sheets, and
the pressure sensitive adhesive layer is interposed between the two release sheets so as to be in contact with release surfaces of the two release sheets (Fig. 1 paragraph [0023] adhesive sheet – 1 adhesive layer sandwiched between the two release sheets – 12a and 12b so as to contact the release surface of the two release sheets – 12a and 12b).
Regarding Claim 11, the combination of Arai and Koso disclose all the limitations of claim 1 and Koso further discloses that the pressure sensitive adhesive composition does not contain a solvent (paragraphs [0089]-[0091] [0118] [0119] where in at least embodiment an acrylic polymer is a solventless polymer without an organic solvent where the pressure-sensitive adhesion is obtained through the glass transition temperature and is non-aqueous, photopolymerized and maintains its shape in a solid form ).
Regarding Claim 12, Arai anticipates all the limitations of claim 4 but does not disclose that the pressure sensitive adhesive does not contain a solvent.
Koso discloses a pressure-sensitive adhesive composition that has an acrylic polymer that has a longer pot-life has a quick progression of a reaction when heated (abs, paragraph [0010]). Koso further discloses that the pressure sensitive adhesive composition does not contain a solvent (paragraphs [0089]- [0091] where in at least embodiment an acrylic polymer is a solventless polymer without an organic solvent where the pressure-sensitive adhesion is obtained through the glass transition temperature).
It would have been obvious to one with ordinary skill to have modified the disclosure of Arai with the teaching of Koso whereby the pressure-sensitive adhesive of Koso can be made solventless, non-aqueous and advantageously maintains a solid state that is retained in shape on the substrate (paragraphs [0089]- [0091] [0118] [0119]).
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 WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE K. SWIER/ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748
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