DETAILED ACTION
This Office Action is in response to the Amendment filed on 5/22/2026.
Claim(s) 11 were cancelled.
Claim(s) 1-10 and 12-24, 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.
Claim(s) 1-10 and 12-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2015224316 to Kotani et al. in view of US2021/0363276 to Zhang et al. (as found on the IDS dated 6/16/2023). For the purposes of examination, citations for Kotani are taken from a machine translation equivalent of the document obtained from the European Patent Office website in February 2026.
Regarding Claim(s) 1, 6-7, and 12, Kotani teaches an adhesive composition comprising 100 parts of (meth)acrylate (A) [0013] that comprises a polyfunctional (meth)acrylate (a1) [0015] (i.e., the first acrylate resin), a polyfunctional (meth)acrylate (a2) [0015] that is preferably trimethylolpropane tri(meth)acrylate [0018] (i.e., the first compound comprising at least two acrylate or methacrylate functional groups) and 0.01-1 parts of carbon black that is particularly excellent in absorbing near-infrared rays [0026] (i.e., the near infrared sensitizer (B)). Moreover, as the inclusion of a first acrylate resin and first compound read on the combination of a first acrylate resin and first compound, therefore the limitations of second acrylate resin having an acrylate group or methacrylate group are not required.
Katani does not explicitly teach the first acrylate resin has a glass transition temperature of -10°C to -65°C of instant claim 6, and a molecular weight of 100,000-2,000,000 g/mol of instant claim 7.
However Zhang teaches a UV curable composition comprising an acrylic polymer [Zhang, abstract] wherein the (meth)acrylic copolymer is formed from at least 1 (meth)acryloyl monomer unit [Zhang, 0036] such as butyl acrylate [Zhang, 0037] reading on a monomer for preparing the first acrylate resin is selected from formula I wherein R1 is hydrogen and R2 is a C4 alkyl group. Zhang further teaches this copolymer has a Tg of -50 to 47°C [Zhang, 0044] reading on claim 6, and a molecular weight of 20,000 to 3,000,000 g/mol [Zhang, 0045] reading on claim 7. Katani and Zhang are analogous art as they are from the same field of endeavor, namely acrylate based UV-curable adhesives.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute Zhang’s acrylic copolymer with Katani’s acrylic copolymer, thereby arriving at the claimed invention.
The motivation to modify Katani with Zhang is that an acrylic copolymer with the specified molecular weight and aforementioned monomers yields a copolymer with a Tg of -40 to 30°C that improves OLS (overlap shear strength) of the film obtained from the composition [Zhang, 0044] which would have been valuable, as Katani is concerned with shear adhesive strength [Zhang, 0041], [Zhang, 0050]. Furthermore there is motivation as it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Zhang shows that acrylic copolymer is known in the art to be suitable for UV curable adhesives.
Katani in view of Zhang is silent regarding the first acrylate resin has an iodine value from 0 to 3.
However, Katani in view of Zhang, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. Iodine value - 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.
Regarding Claim(s) 2, Kotani in view of Zhang teaches the adhesive of claim 1, comprising 100 parts of (A) [0013] and from 0.01-1 parts of near infrared sensitizer [0026] that is reasonably calculated as a ratio of 100 : 1, thereby reading on a range of 100 : 0.05 to 100 : 10
Regarding Claim(s) 3, Kotani in view of Zhang teaches the adhesive of claim 1, comprising 40-80 parts (a1) [0017] and 5-15 parts (a2), thereby reading on the claimed range of 50:50 to 95:5.
Regarding Claim(s) 4 and 5, Kotani in view of Zhang teaches the adhesive of claim 1, wherein the (a2) is preferably trimethylolpropane triacrylate [0018] thereby reading on claim 4, that has a molecular weight of 296 g/mol, thereby reading on 200-50,000 g/mol of claim 5
Regarding Claim(s) 8-10 and 13-19, the second acrylate resin of claims 8-10 and 13-19 are considered an optional embodiment because claims 8-10 and 13-19 depends from claim 1 , and claim 1 recites a Markush group for the adhesive including a first acrylate resin and a first compound, a second acrylate resin, or a combination of the first acrylate resin and second acrylate resin, among others. Kotani teaches the adhesive of claim 1, wherein the adhesive comprises a first acrylate resin and a first compound, [0013-0018]. As such, the limitations of claims 8-10 and 13-19 are considered to be met because claims 8-10 and 13-19 are further narrowing an optional embodiment (second acrylate resin) and claim 1 is rejected by different components (a first acrylate resin and a first compound).
Regarding Claim(s) 20, Kotani in view of Zhang teaches the adhesive of claim 1, 0.01-1 parts of carbon black that is particularly excellent in absorbing near-infrared rays [0026] wherein near-infrared [0011] has a wavelength in the range of 800-2500 nm [0012] thereby reading on a range of 750 nm – 1100 nm.
Kotani in view of Zhang’s preferred embodiment does not particularly teach the near infrared sensitizer in the is selected from the compounds of instant claim 20.
However, Zhang teaches photosensitizers that are naphthalene derivatives [Zhang, 0065].
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add Zhang’s naphthalene photosensitizer into Kotani’s composition, thereby arriving at the claimed invention.
The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Zhang shows that naphthalene compounds are known in the art to be suitable for UV curable adhesives.
Regarding Claim(s) 21 and 22, Kotani in view of Zhang teaches the adhesive of claim 1, as set forth above and incorporated herein by reference.
Kotani in view of Zhang’s preferred embodiment does not teach a cross-linking agent is selected from the compounds of instant claim 21.
However, Zhang teaches polyfunctional epoxy resin having 2 or more epoxy groups of glycidyl ethers [Zhang, 0051] in an amount of 0.01 to 1 mol of epoxy group for every 100 grams of (meth)acrylic polymer.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add Zhang’s polyfunctional epoxy resin to Kotani in view of Zhang’s preferred embodiment, thereby arriving at the claimed invention.
The motivation to modify Kotani with Zhang is to have high cohesion strength and favorable initial adhesion, with a higher overlap shear [Zhang, 0058].
Regarding Claim(s) 23, Kotani in view of Zhang teaches a method wherein the adhesive of claim 1, is a temporary fixing adhesive composition with high adhesive properties, that is further irradiated with a near-infrared laser, causing the adhesive to thermally decompose and making it possible to easily peel the adhesive off [0011] thereby reading on the limitations of claim 23.
Regarding Claim(s) 24, Kotani in view of Zhang teaches the method of claim 23, wherein the near-infrared laser [0011] has a wavelength in the range of 800-2500 nm [0012] thereby reading on a range of 750 nm – 1100 nm.
Response to Arguments
Applicant's arguments filed 5/22/2026 have been fully considered but they are not persuasive.
Applicant states Kotani teaches a polyfunctional (meth)acrylate monomer, not a polymer or resin, and a monomer cannot reasonably be equated with a polymerized resin.
It is noted that (a1) is a polyfunctional (meth)acrylate containing a polybutadiene skeleton or polyisoprene skeleton in the molecule [0014]. The existence of polybutadiene or polyisoprene in the molecule defines the molecule as being a polymer and therefore by applicants’ definition in remarks dated 5/22/2026, is a resin.
Moreover, it is noted that the word “resin” is not defined in instant specification and therefore will be given the broadest reasonable interpretation of the word wherein a resin may be a species of monomer, oligomer, polymer, copolymer, or mixture of the aforementioned.
Applicant states Kotani does not disclose, teach or suggest resin (polymer) prepared from monofunctional (meth)acrylate monomers.
Applicants newly amended instant claim 1 does not set forth any limitations regarding monofunctionally. The formulas I and II may comprise multiple functional groups such as the (meth)acrylate double bond and hydroxyl groups.
Kotani in view of Zhang teaches (a1) is a polyfunctional (meth)acrylate containing a polybutadiene skeleton or polyisoprene skeleton in the molecule [0014]. As such, the molecule is prepared from a (meth)acrylate (i.e., monofunctional (meth)acrylate monomer such as butyl acrylate, ethyl hexyl acrylate, and methyl methacrylate [Zhang, 0037]) and (a1) is a polymer (as the molecule has polyisoprene or polybutadiene) thereby reading on a resin (polymer) prepared from monofunctional acrylate monomers.
Applicant states that even if polymerization occurs during use, the resulting material would necessarily be a copolymer formed from multiple monomer species (A1, A2, A3), not a polymer derived solely from at least one monofunctional (meth)acrylate monomer as now required.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a polymer derived solely from at least one monofunctional (meth)acrylate monomer) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
It is noted that the only limitation regarding the structure of the first acrylate resin is that it must comprise a monomer selected from formula I or formula II. This could include an extremely wide number of resins, varying from methyl methacrylate monomer to any polymer comprising one or more segments of formula I or formula II.
Applicant states there is no teaching or suggestion in Kotani to pre-form a resin (polymer) of at least one monofunctional (meth)acrylate monomer and then combine it with a separate compound having at least two reactive functional groups, as claimed.
Attention is drawn to Kotani wherein (a1) has a (meth)acrylate [0015] (i.e., at least one (meth)acrylate monomer) and wherein (a2) has three or more (meth)acryloyl groups [0015] (i.e., at least two reactive functional groups).
Applicant states the modification of Kotani with Zhang would require impermissible hindsight reconstruction.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the motivation to modify Katani with Zhang is that an acrylic copolymer with the specified molecular weight and aforementioned monomers yields a copolymer with a Tg of -40 to 30°C that improves OLS (overlap shear strength) of the film obtained from the composition [Zhang, 0044] which would have been valuable, as Katani is concerned with shear adhesive strength [Zhang, 0041], [Zhang, 0050]. Furthermore there is motivation as it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Zhang shows that acrylic copolymer is known in the art to be suitable for UV curable adhesives.
Applicant states that the reliance on inherency with respect to “the first acrylate resin has an iodine value from 0 to 3” is misplaced because Kotani does not disclose “the first acrylate resin: as now claimed as the presently claimed invention requires “a polymer of a monofunctional (meth)acrylate monomer”.
In response, it is noted that the newly amended claims are silent regarding “a polymer of a monofunctional (meth)acrylate monomer”. Moreover, Kotani in view of Zhang teach the first acrylate resin as set forth in the rejection of claim 1 and the response to arguments above.
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.
/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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