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
The previous requirement for restriction under 35 U.SW.C. 121 was incorrect in that it did not reflect that this application was intended to be filed as a national stage application under 35 U.S.C. 371 but instead, the examiner incorrectly restricted the claims as if it was a regular domestic national application under 35 U.S. C. 111(a) See MPEP § 1893.
This is now corrected by the following action:
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-9, drawn to a pressure sensitive adhesive sheet.
Group II, claim(s) 10, drawn to a method of a manufacturing a pressure sensitive adhesive sheet.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a pressure sensitive adhesive sheet comprising at least a pressure sensitive adhesive layer, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Koso (US 2014/0066557 A1) IDS 05/02/2024.
Koso discloses the preparation of a pressure-sensitive composition whereby a pressure-sensitive adhesive sheet includes a pressure-sensitive adhesive layer that is formed from this pressure-sensitive adhesive composition (abs, paragraph [0010]).
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Applicant’s election with traverse of Group I, claims 1-9 in the reply filed on October 20, 2025 is acknowledged and maintained with the above correction.
Claim 10 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 .Restriction is maintained due to the lack of unity of 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 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.
Claim 3 contains the trademark/trade name "Tetoron". Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a type of polyester often blended with cotton and, accordingly, the identification/description is indefinite. See evidence: “What is Tetoron Fabric? Everything You Need To Know” from Outfit EN – Fabric Insights https://www.outfiten.com/what-is-tetoron-fabric/ (p. 7 Tetoron Fabric In Industrial Applications – Tetoron is utilized in various industrial applications. Its high tensile strength makes it suitable for products like…filters.).
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) 1-4 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arai (JP2018127561A) with machine translation.
Regarding Claim 1, Arai discloses a pressure sensitive adhesive sheet comprising at least a pressure sensitive adhesive layer (abs), wherein
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).
However, 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. 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 becomes even better (paragraph [0033]).
Regarding Claim 2, Arai discloses all the limitations of claim 1 and 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 does 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 (paragraph [0094]).
Regarding Claim 3, Arai discloses all the limitations of claim 1 and 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 (paragraphs [0024] [0026]).
Regarding Claim 4, Arai discloses a pressure sensitive adhesive sheet comprising at least a pressure sensitive adhesive layer (abs) and 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 discloses 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 © 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 discloses all the limitations of claim 4 and further discloses 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 discloses 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.).
Regarding Claim 9, Arai discloses all the limitations of claim 1 and 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).
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 discloses 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.)
Conclusion
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