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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/05/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 10-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an adhesive film formed of an adhesive composition comprising a monomer mixture of butyl acrylate in an amount of 65 to 79 parts by weight, 2-ethylhyexyl acrylate in an amount of 9 to 12 parts by weight, and 2-hydroxyethyl acrylate in an amount of 12 to 23 parts by weight, does not reasonably provide enablement for any adhesive film formed of an adhesive composition comprising monomer mixture comprising any type of a comonomer in any amount and any type of hydroxyl group-containing (meth)acrylate in any amount. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 12-22 can be used as claimed and whether claims 12-22 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-8 and 10-17, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1-8 and 10-17 read on any adhesive film formed of an adhesive composition comprising monomer mixture comprising any type of a comonomer in any amount and any type of hydroxyl group-containing (meth)acrylate in any amount while the specification discloses an adhesive film formed of an adhesive composition comprising a monomer mixture of butyl acrylate in an amount of 65 to 79 parts by weight, 2-ethylhyexyl acrylate in an amount of 9 to 12 parts by weight, and 2-hydroxyethyl acrylate in an amount of 12 to 23 parts by weight.
(b) There is no direction or guidance presented for any adhesive film formed of an adhesive composition comprising monomer mixture comprising any type of a comonomer in any amount and any type of hydroxyl group-containing (meth)acrylate in any amount.
(c) There is an absence of working examples concerning any adhesive film formed of an adhesive composition comprising monomer mixture comprising any type of a comonomer in any amount and any type of hydroxyl group-containing (meth)acrylate in any amount.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-8 and 10-17.
Response to Arguments
Applicant’s arguments filed 12/05/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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