DETAILED ACTION
This Office Action is in response to the Amendment filed on 7/7/2026. Claim 7 was cancelled and claims 11-13 have been added. Claims 1-6 and 8-13 are now pending in the application.
The previous 35 USC 112 rejections of claims 1-10 are withdrawn in light of Applicant’s amendment and remarks.
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 1-6, 8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kuhl et al. (US PG Pub 2022/0064499 A1 as cited on the IDS dated 3/11/2025).
Regarding claims 1, 3-4, Kuhl teaches an adhesive film that is cured [0002], wherein the adhesive compound comprises [0044-0050]:
2-50 percent by weight of film formers
10-70 percent by weight of aromatic epoxy resins
0.5-7 percent by weight of a cationic initiator
0.001-0.2 percent by weight of a dye or pigment
cycloaliphatic epoxy resins, wherein the cycloaliphatic epoxy resins do not exceed 35 percent by weight,
0-50 percent by weight of epoxidized polyether compounds, and
0-20 percent by weight of a polyol;
wherein the adhesive compound is applied to a siliconized polyester film [0084];
wherein the aromatic and the cycloaliphatic epoxy resins and the epoxidized polyether compounds read on the one or more polymerizable epoxide compounds, wherein the silicon and the polyester read on the one or more (co)polymers in the curable adhesive, and wherein in a preferred embodiment Kuhl teaches the dye is copper phthalocyanine (Table 1, [0080]).
Kuhl et al. do not teach the amounts of the one or more (co) polymers (i.e. the siliconized polyester in the film).
However, Kuhl et al. teach the adhesive compound is applied to a siliconized polyester film such that after drying and removing the solvent mixture a pressure-sensitive adhesive that is a tacky film is formed [0084]. Therefore, the amounts of siliconized polyester film can be optimized to reach the desired tackiness of the film via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the siliconized polyester (co) polymers for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding claim 2, Kuhl teaches a pressure sensitive adhesive [0002].
Regarding claim 5, Kuhl teaches the curable adhesive as set forth above and incorporated herein by reference and further teaches the dyes/pigments in an amount of 0.001-0.2 percent by weight.
Kuhl and the claims differ in that Kuhl does not teach the exact same ranges for the dyes recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Kuhl (0.001-0.2%) overlap the instantly claimed range (0.05-1%) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 6, Kuhl teaches the cationic initiators in the amount of 0.5-7 percent by weight thereby anticipating the claimed range of from 0.1 to 7%.
Regarding claim 7, Kuhl teaches the polyol in the amount of 0-20 percent by weight thereby anticipating the claimed range of one or more (co)polymers from 1 to 70%.
Regarding claim 8, Kuhl teaches the aromatic epoxy resins in an amount of 10-70% thereby anticipating the claimed range of from 35 to 95%.
Regarding claim 10, Kuhl teaches tape [0004].
Regarding claims 11-12, Kuhl teaches the use of acrylate monomers as adhesives are known in the art [0016].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kuhl et al. (US PG Pub 2022/0064499 A1 as cited on the IDS dated 3/11/2025) in view of Zaffaroni (US PG Pub 2014/0171552 A1 as cited on the IDS dated 11/19/2025).
Kuhl teaches the curable adhesive as set forth above and incorporated herein by reference.
Kuhl does not particularly teach the dynamic viscosity of the polymerizable epoxide compound.
Zaffaroni teaches an epoxy adhesive, comprising an epoxy-resin-component and a curing agent-component, in which the epoxy-resin-component comprises a reactive diluent which are low-viscosity substances containing epoxide groups (glycidyl ethers or glycidyl esters) with an aliphatic or aromatic structure [0036]. Zaffaroni offers the motivation of choosing these reactive diluents in order to lower the viscosity of the binder system above the softening point. In light of these benefits, it would have been obvious to one or ordinary skill in the art to use a low viscosity epoxy compound as disclosed by Zaffaroni in the composition of Kuhl, thereby arriving at the claimed invention.
Kuhl in view of Zaffroni do not teach the exact ranges of viscosity as required by the instant claim.
However, the viscosity of the epoxide compound will affect the overall viscosity of the adhesive composition. Therefore, the viscosity of the epoxide compound can be optimized to reach the desired binder viscosity via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the compounds for the intended application via a routine optimization, thereby obtaining the present invention.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kuhl et al. (US PG Pub 2022/0064499 A1 as cited on the IDS dated 3/11/2025) in view of Patel (US PG Pub 2006/0145091 A1 as cited on the IDS dated 11/19/2025).
Kuhl teaches the curable adhesive as set forth above and incorporated herein by reference.
Kuhl does not particularly teach the (co)polymer comprising polyvinylbutyral.
Patel, in the same field of endeavor, namely adhesive tapes (Fig. 10, [0128], [0171]), teaches a composition comprising an adhesive layer and a barrier layer, wherein the barrier layer contains a polymeric layer, such as polymers used as binders and additives such as leuco dyes and UV absorbers (Abstract, [0114], [0128]), epoxy [0130], wherein the polymer binders contain polyvinylbutyral as a functional equivalent to the polyester of Kuhl [0129]. Case law has held that substituting known equivalents for the same purpose is prima facie obvious. (MPEP 2144.08.I.). Therefore it would have been obvious to one of ordinary skill in the art to substitute the polyvinylbutyral of Patel in the composition of Kuhl, thereby arriving at the claimed invention.
Response to Arguments
Applicant’s arguments, see p. 1-4, filed 7/7/2026, with respect to the 102 rejection over Kuhl has been fully considered and are persuasive. Therefore, the 102 rejection has been withdrawn. However, upon further consideration, and in light of the amendment, a new ground of 103 rejections are made in view of Kuhl.
Applicant states the green halogenated copper phthalocyanine (Heliogen Green L 8730) does not correspond to the claimed copper phthalocyanine (blue CAS: 147-14-8). In response, attention is drawn to the language of claim 1, wherein there is no specific CAS number required. As such, the claimed term “copper phthalocyanine” is given its broadest reasonable interpretation, which includes any dye containing copper phthalocyanine, which includes the green halogenated copper phthalocyanine taught by Kuhl.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (all cited on the IDS dated 7/8/2026):
JP H11140388 A discloses a curable adhesive composition, comprising: one or more (co)polymers such as acrylic polymer, one or more polymerizable epoxy compounds, one or more cationic initiators, and the use of leuco crystal violet as a dye.
CN 110244511 A discloses a curable adhesive composition, comprising: one or more (co)polymers, such as acrylic copolymer, one or more polymerizable epoxy compounds such as epoxy (meth)acrylate), one or more cationic initiators, and the use of Pigment Blue 15 as a blue- colored pigment.
CN 113573893 A discloses a curable adhesive composition, comprising: one or more (co)polymers, one or more polymerizable epoxy compounds, wherein the base polymer can be present as a mixture of a polymer and an epoxy-based monomer, one or more cationic initiators (i.e. a photoacid generator), and the use of leuco dyes, including benzoyl leuco methylene blue and crystal violet lactone.
EP 2772917 A discloses a curable protective layer, comprising: one or more (co)polymers, one or more polymerizable epoxy compounds, one or more cationic initiators, wherein the protective layer is applied as an aqueous polymer dispersion to a photopolymer layer, dried, and UV-cured. Thus, the polymer dispersion is considered an adhesive, wherein the photoinitiators used are preferably mixtures of substances such as tetrakis(ammonium)-tetrakis(aryl)borate and cationic dyes, wherein the cationic dyes are Crystal Violet, Ethyl Violet, and phenoxazine dyes are mentioned, to which Nile Blue belongs, among others.
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 LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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