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
Applicant’s election without traverse of Group I, claims 1-18 in the reply filed on January 27, 2026 is acknowledged.
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 27, 2026.
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.
Claims 1-18 are 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 claims 1, 2, 3, 17, and 18, these claims recite “chain type alkyl acrylate compound”. It is unclear what is meant by “chain type”. The addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955). The examiner respectfully submits that applicant delete “chain type”.
Further, as to claim 1, this claim recites “a weight ratio of the chain type alkyl acrylate compound relative to the cyclic alkyl acrylate compound” and “a weight ratio of the hydroxy group containing acrylate compound relative to the cyclic alkyl acrylate compound”. There is lack of antecedent basis for the recitations “the chain type alkyl acrylate compound”, “the cyclic alkyl acrylate compound”, and “the hydroxy group containing acrylate compound”, because the claim at first instance recites “at least” to refer to “chain type alkyl acrylate compound”, “cyclic alkyl acrylate compound” and “hydroxy group containing acrylate compound” (see claim 1, lines 2-3).
The examiner respectfully submits that applicant should delete the recitation “at least one” given that the applicant recites transition phrase “comprising” in the preamble “A pressure-sensitive adhesive composition comprising”. The examiner submits that “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03 (I). Therefore, even if the recitation “at least one” where to be removed from the claim, the claimed PSA composition can include more than one chain type alkyl acrylate compound, cyclic alkyl acrylate compound, and hydroxy group containing acrylate compound.
As to claim 2, this claim recites “the chain type alkyl acrylate compound”. There is a lack of antecedent basis for this limitation in the claim. Claim 2 depends from claim 1, wherein claim 1 recites “at least one chain type alkyl acrylate compound”.
As to claim 3, this claim recites “the chain type alkyl acrylate compound”. There is a lack of antecedent basis for this limitation in the claim. Further, as to claim 3, this claim recites glass transition temperature (Tg) of the chain type alkyl acrylate compound of -10°C or lower and room temperature surface tension of 30 mN/m or less. This claim further recites that the chain type alkyl acrylate comprises a liner and branched alkyl acrylate compounds. Therefore, it is unclear whether Tg and surface tension refer to a chain type alkyl acrylate or multiple alkyl acrylates.
As to claim 5, this claim recites “the cyclic alkyl acrylate compound”. There is a lack of antecedent basis for this limitation in the claim.
As to claims 6 and 7, these claims recite “the hydroxyl group containing acrylate compound”. There is a lack of antecedent basis for this limitation in the claim. Further, claims 6 and 7 recite “hydroxyl group” whereas claim 1 recites “hydroxy group”.
As to claim 9, this claim recites “single bonding structure”. It is unclear what is meant by this recitation.
As to claim 18, this claim recites “the hydroxyl group containing acrylate compound”. There is a lack of antecedent basis for this limitation in the claim.
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, 2, and 5-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20200115594 A1) and as evidenced by “Thermal Transitions of Homopolymers: Glass Transition & Melting Point”.
As to claim 1, Kim discloses an adhesive film formed of an adhesive composition (PSA composition) comprising a (meth)acrylic copolymer of a monomer mixture of an alkyl group containing (meth)acrylate (chain type alkyl acrylate compound) (0009) a cyclic (meth)acrylate (cyclic alkyl acrylate compound) (0009,0011), and a hydroxyl group containing (meth)acrylate (hydroxy group containing acrylate compound) (0009). The adhesive film of Kim is useful in optical display (0002).
Further, as to claim 1, Kim discloses that the alkyl group containing (meth)acrylate is present in an amount from about 10 wt% to 75 wt% in order to provide adhesive film with good flexural reliability at low temperature and under high temperature/humidity conditions (0055). Further, Kim discloses that the cyclic (meth)acrylate is present in the amount of from about 5 wt% to about 40 wt% in order to provide the adhesive film with good foldability upon repeated folding at low temperature (0064). Moreover, Kim discloses that the hydroxyl group containing (meth)acrylate is present in the amount of from about 10 wt% to about 40 wt% in order to improve adhesive strength and durability of the adhesive film (0053).
Based on the above, the weight ratio of chain type alkyl acrylate compound relative to cyclic alkyl acrylate compound in Kim is e.g. 10/40 or 0.25 to 75/5 or 15. The claimed range of weight ratio of 1 to 30 overlaps or within the range disclosed by Kim 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 ratio of chain type alkyl acrylate compound relative to cyclic alkyl acrylate compound as claimed and as rendered obvious by Kim, motivated by the desire to form an adhesive film having good flexural reliability at low temperature and under high temperature/humidity conditions, and good foldability upon repeated folding at low temperature.
Further, as to claim 1, the weight ratio of hydroxy group containing acrylate compound relative to cyclic alkyl acrylate compound in Kim is 10/40 or 0.25 to 40/5 or 8. The claimed range of weight ratio of 1.35 to 15 overlaps or within the range disclosed by Kim 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 ratio of hydroxy group containing acrylate compound relative to cyclic alkyl acrylate compound as claimed and as rendered obvious by Kim, motivated by the desire to form an adhesive film having improved adhesive strength, durability, and good foldability upon repeated folding at low temperature.
As to claim 2, Kim discloses 2-ethylhexyl (meth)acrylate, which includes 2-ethylhexyl acrylate and 2-ethylhexyl methacrylate (0054 and 0035). This monomer of Kim is identical to the monomer disclosed by the present application (see 0106 of the published application). Accordingly, it is clear that Kim meets claimed Formula 1.
As to claim 5, Kim and applicant disclose identical compounds (cyclohexyl (meth)acrylate) as cyclic alkyl acrylate (0063 of Kim and 0012 of the published application). Accordingly, it is clear that Kim meets claim 5. Furthermore, cyclohexyl acrylate and cyclohexyl methacrylate disclosed by Kim has Tg of 19°C and 92°C, respectively as shown in the attached evidence reference (see page 52, bottom left hand column in Table 1).
As to claim 6, Kim and applicant disclose identical hydroxy (hydroxyl) group containing acrylate compound such as 2-hydroxyethyl (meth)acrylate (0052 of Kim and 0118 of the published application). As such, it is clear that Kim meets claimed Formula 2.
As to claim 7, Kim discloses that the hydroxyl group containing (meth)acrylate has Tg of about 0°C to about -70°C (0053). Further, Kim and applicant disclose identical hydroxyl group containing acrylate compounds (0052 of Kim and 0118 of the published application). As such, it is clear that the hydroxyl group containing acrylate compound disclosed by Kim has claimed room temperature surface tension.
As to claim 8, Kim discloses that the cyclic (meth)acrylate is at least one selected from the group of tetrahydrofurfuryl (meth)acrylate, cyclohexyl (meth)acrylate, and tri methylcyclohexyl (meth)acrylate (0063). Therefore, a person having ordinary skill in the art would recognize that Kim suggests more than one cyclic (meth)acrylate including an acrylate compound containing cyclic ether such as tetrahydrofurfuryl (meth)acrylate.
As to claim 9, Kim and applicant disclose identical acrylate compound containing cyclic ether group such as tetrahydrofurfuryl (meth)acrylate (0063 of Kim and 0127 of the published application). Therefore, it is clear that Kim meets claimed Formula 3.
As to claim 10, Kim and applicant disclose identical acrylate compound containing cyclic ether (e.g. tetrahydrofurfuryl acrylate) (0063 of Kim and 0127 of the published application). Therefore, it is clear that Kim meets claimed Tg and surface tension.
As to claims 11 and 17 , the disclosure of Kim with respect to the (meth)acrylic copolymer as set forth with respect to claim 1 above is incorporated by reference. Further, Kim discloses that the adhesive composition includes crosslinking agent (0080). As such, the adhesive of Kim is configured to form a cured product.
As to claims 11-16, Kim is silent as to discloses properties (e.g. absolute value of a change rate for a first contact angle, adhesive strength, gel fraction, first gel fraction change rate, absolute value of a change range of a second contacting angle, second gel fraction change rate, and room temperature contacting angle). 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 examiner submits that the PSA composition disclosed in the presently claimed invention (claim 11) is rendered obvious by the PSA composition of Kim as set forth previously. As such, absent any factual evidence on the record, it is reasonable to presume that the aforementioned properties are inherently present in the PSA of Kim.
As to claim 18, Kim as set forth previously discloses that the alkyl group containing (meth)acrylate is present in an amount from about 10 wt% to 75 wt% in order to provide adhesive film with good flexural reliability at low temperature and under high temperature/humidity conditions (0055). Moreover, Kim discloses that the hydroxyl group containing (meth)acrylate is present in the amount of from about 10 wt% to about 40 wt% in order to improve adhesive strength and durability of the adhesive film (0053). As such, the weight ratio of the chain type alkyl acrylate relative to hydroxyl group containing acrylate in Kim is 10/40 or 0.25 to 75/40 1.88. The claimed range of weight ratio of 0.1 to 3 overlaps or within the range disclosed by Kim such that prima facie case of obviousness exists.
Claim 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20200115594 A1) and as evidenced by “Thermal Transitions of Homopolymers: Glass Transition & Melting Point” as applied to claim 1 above, and further in view of Higashi et al. (US 20130251990 A1).
As to claim 3, Kim discloses identical chain alkyl acrylate as present application (e.g. n-butyl acrylate) (see 0054 of Kim and 0106 of the published application). As such, absent any factual evidence on the record, it is clear that Kim meets claimed Tg and room temperature surface tension. Further, attached evidence reference discloses that butyl acrylate has Tg of -54°C (page 52, Table 1).
Moreover, as to claim 3, Kim discloses that the alkyl group containing (meth)acrylate includes “at least one selected from the group consisting of 2-ethylhexyl (meth)acrylate, n-butyl (meth)acrylate, iso-octyl (meth)acrylate…octyl (meth)acrylate…decyl (meth)acrylate.” (0054). Thus, as to claim 3, a person having ordinary skill in the art would recognize that Kim suggests a combination of liner (e.g. octyl (meth)acrylate) and branched alkyl acrylate compounds (e.g. 2-ethylhexyl (meth)acrylate).
As to claims 3 and 4, Kim does not explicitly disclose a liner alkyl acrylate and branched alkyl acrylate, and the weight ratio.
Higashi discloses a PSA suitable in optical applications such as image display devices (0003). The PSA of Higashi contains a (meth)acrylate based polymer obtained by (a1) an alkyl (meth)acrylate having a branched alkyl group of 8 to 24 carbon atoms (branched alkyl acrylate compound) and (a2) an alkyl (meth)acrylate having a liner alkyl group of 8 to 24 carbon atoms (linear alkyl acrylate compound) (0041). Further, Higashi discloses that the ratio of a1:a2 is 90:10 to 10:90 so that a reduction in dielectric constant and satisfactory adhesive strength can be obtained (0051). Thus, Higashi suggests weight ratio of linear alkyl acrylate (a2) to branched alkyl acrylate (a1) of 10/90 of 0.11 to 90/10 or 9. The claimed weight ratio of 0.3 to 2 overlaps or within the range disclosed by Higashi 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 claimed weight ratio, motivated by the desire to form an adhesive film having reduction in dielectric constant and satisfactory adhesive strength
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Seung-Suk Baek et al. “Preparation of Acrylic Pressure Sensitive Adhesives for Optical Applications and Their Adhesion Performance”, and Technical Data Sheet of Tetrahydrofurfuryl acrylate from Sartomer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 May 7, 2026
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