DETAILED ACTION
This is an Office action based on application number 18/426,062 filed 29 January 2024, which claims priority to KR10-2023-0015792 filed 06 February 2023. Claims 1-11 and 13-26 are pending. Claim 12 is canceled.
Amendments to the claims, filed 24 February 2026, have been entered into the above-identified application.
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 .
Withdrawn Rejections
The objection to claim 1, made of record in the previous Office action, is withdrawn due to Applicant’s amendment.
The 35 U.S.C. § 112(b) rejection, made of record in the previous Office action, is withdrawn due to Applicant’s amendments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-11 and 13-26 are rejected under 35 U.S.C. 103 as being unpatentable over JP2017210578A with citations taken from the provided machine translation (JP578) in view of JP2016121293A with citations taken from the provided machine translation (JP293).
Regarding instant claim 1:
JP578 discloses a curable resin composition comprising: (Component A) a (meth)acrylic oligomer and (Component B) (paragraph [0007]).
JP 578 further discloses that said Component A is a (meth)acrylic oligomer having one or more (meth)acryloyl groups in its molecule (paragraph [0012]), which overlaps the claimed two or more (meth)acryloyl groups recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP578 further discloses that Component A is a urethane (meth)acrylate oligomer (paragraphs [0013-0014]).
JP578 further discloses that Component A is present in an amount of less than 30 parts by weight or less (paragraph [0008]), which includes the range recited by the claim (i.e., of at least 1 wt% to less than 10 wt%); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP578 further discloses that the Component B is a monofunctional ((meth)acrylate monomer inclusive of alicyclic (meth)acrylates, hydroxyl group-containing (meth)acrylates, and combinations thereof from the viewpoint of achieving superior adhesion to both inorganic and organic substrates (paragraph [0021 and 0025]).
JP578 further discloses that examples alicyclic (meth)acrylate are inclusive of dicyclopentenyloxyethyl (meth)acrylate, dicyclopentanyl (meth)acrylate, and isobornyl (meth)acrylate (paragraph [0024]).
Similarly, in their original disclosure, Applicant discloses that the alicyclic (meth)acrylate may include, for example, at least one selected from isobornyl (meth)acrylate, discyclopentanyl (meth)acrylate, and dicyclopentenyloxyethyl (meth)acrylate (see Specification at paragraph [0085]).
Therefore, since JP578 discloses the same alicyclic (meth)acrylates as Applicant, they must have the same properties (i.e., glass transition temperature). 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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
JP578 does not explicitly disclose the amount of the hydroxy group-containing (meth)acrylate.
However, since the instant specification is silent to unexpected results, the specific amount of hydroxy group-containing (meth)acrylate is not considered to confer patentability to the claims. As the adhesion to inorganic and organic substrates is a variable that can be modified, among others, by adjusting the amount of hydroxyl group-containing (meth)acrylate, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of amount of hydroxyl group-containing (meth)acrylate to obtain the desired adhesion (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
JP578 does not explicitly disclose the glass transition temperature of the resin once cured.
However, JP293 discloses a photocurable adhesive containing a urethane (meth)acrylate compound in combination with a monofunctional (meth)acrylate compound (paragraph [0010]).
JP293 further discloses that the glass transition of the cured product of the photocurable adhesive composition is 0°C or higher in order to optimize heat resistance (paragraph [0069]). It is noted that the glass transition temperature range of JP 293 overlaps the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the cured product of the curable resin composition of JP578 has the glass transition temperature prescribed by JP293. The motivation for doing so would have been to optimize the heat resistance of the cured product.
Therefore, it would have been obvious to combine JP293 with JP578 to obtain the invention as specified by the instant claim.
Regarding instant claim 2:
JP578 does not explicitly disclose the amount of the alicyclic (meth)acrylate.
However, since the instant specification is silent to unexpected results, the specific amount of alicyclic (meth)acrylate is not considered to confer patentability to the claims. As the adhesion to inorganic and organic substrates is a variable that can be modified, among others, by adjusting the amount of alicyclic (meth)acrylate, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of amount of alicyclic (meth)acrylate to obtain the desired adhesion (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claim 3:
JP578 discloses that examples of the hydroxyl group-containing (meth)acrylate include 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl (meth)acrylate, 2-hydroxybutyl (meth)acrylate, and 4-hydroxybutyl (meth)acrylate (paragraph [0023]).
Similarly, in their original disclosure, Applicant discloses that the hydroxy (meth)acrylate may include, for example, at least one selected from among 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl (meth)acrylate, 2-hydroxybutyl (meth)acrylate, and 4-hydroxybutyl (meth)acrylate (see Specification at paragraph [0082]).
Therefore, since JP578 discloses the same hydroxyl group-containing (meth)acrylates as Applicant, they must have the same properties (i.e., claimed weight average molecular weight). 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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
JP578 further discloses that examples alicyclic (meth)acrylate are inclusive of dicyclopentenyloxyethyl (meth)acrylate, dicyclopentanyl (meth)acrylate, and isobornyl (meth)acrylate (paragraph [0024]).
Similarly, in their original disclosure, Applicant discloses that the alicyclic (meth)acrylate may include, for example, at least one selected from isobornyl (meth)acrylate, discyclopentanyl (meth)acrylate, and dicyclopentenyloxyethyl (meth)acrylate (see Specification at paragraph [0085]).
Therefore, since JP578 discloses the same alicyclic (meth)acrylates as Applicant, they must have the same properties (i.e., claimed weight average molecular weight). 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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 4:
JP578 further discloses that the Component A (i.e., meeting the claimed urethane (meth)acrylate oligomer) has a molecular weight of 5,000 or more (paragraph [0007]), which includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 5:
JP578 further discloses that the composition has a viscosity of 150 mPa s or less (paragraph [0007]).
Regarding instant claim 6:
JP578 further discloses that from the viewpoint of superior adhesion to both inorganic and organic substances, Component B comprises a C6 to C30 alkyl (meth)acrylate (paragraph [0025]).
Regarding instant claim 7:
Similarly, in their original disclosure, Applicant discloses that the alkyl (meth)acrylate may be a (meth)acrylate containing an unsubstituted alkyl group having 1 to 10 carbon atoms (see Specification at paragraph [0087]).
Therefore, since JP578 and Applicant disclose overlapping alkyl (meth)acrylates, those overlapping (meth)arylates must have the same properties (i.e., the claimed molecular weight). 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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claims 8-9:
JP578 further discloses that the curable resin composition comprises a photo- radical polymerization initiator (paragraph [0007]).
Regarding instant claim 10:
JP578 discloses a curable resin composition comprising a photo- radical polymerization initiator (paragraph [0007]) (i.e., a photocurable resin composition).
JP578 is silent with regard to a solvent necessarily added to the composition to successfully carry out its intended use; therefore, the scope of JP578 is construed to encompass a solvent-free embodiment.
Regarding instant claim 11:
JP578 discloses a composition for forming a cured adhesive (paragraph [0046]).
JP578 discloses that the composition is a curable resin composition comprising: (Component A) a (meth)acrylic oligomer and (Component B) (paragraph [0007]).
JP578 further discloses that the composition has a viscosity of 150 mPa s or less (paragraph [0007]).
JP 578 further discloses that said Component A is a (meth)acrylic oligomer having one or more (meth)acryloyl groups in its molecule (paragraph [0012]), which overlaps the claimed two or more (meth)acryloyl groups recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP578 further discloses that Component A is a urethane (meth)acrylate oligomer (paragraphs [0013-0014]).
JP578 further discloses that Component A is present in an amount of less than 30 parts by weight or less (paragraph [0008]), which includes the range recited by the claim (i.e., of at least 1 wt% to less than 10 wt%); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP578 further discloses that the Component B is inclusive of alicyclic (meth)acrylates, hydroxyl group-containing (meth)acrylates, and combinations thereof from the viewpoint of achieving superior adhesion to both inorganic and organic substrates (paragraph [0021 and 0025]).
JP578 does not explicitly disclose the amount of the hydroxy group-containing (meth)acrylate.
However, since the instant specification is silent to unexpected results, the specific amount of hydroxy group-containing (meth)acrylate is not considered to confer patentability to the claims. As the adhesion to inorganic and organic substrates is a variable that can be modified, among others, by adjusting the amount of hydroxyl group-containing (meth)acrylate, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of amount of hydroxyl group-containing (meth)acrylate to obtain the desired adhesion (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
JP578 does not explicitly disclose the glass transition temperature of the resin once cured.
However, JP293 discloses a photocurable adhesive containing a urethane (meth)acrylate compound in combination with a monofunctional (meth)acrylate compound (paragraph [0010]).
JP293 further discloses that the glass transition of the cured product of the photocurable adhesive composition is 0°C or higher in order to optimize heat resistance (paragraph [0069]). It is noted that the glass transition temperature range of JP 293 overlaps the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the cured product of the curable resin composition of JP578 has the glass transition temperature prescribed by JP293. The motivation for doing so would have been to optimize the heat resistance of the cured product.
Therefore, it would have been obvious to combine JP293 with JP578 to obtain the invention as specified by the instant claim.
Regarding instant claim 13:
JP578 further discloses that the Component A (i.e., meeting the claimed urethane (meth)acrylate oligomer) has a molecular weight of 5,000 or more (paragraph [0007]), which includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claims 14-17:
The scope JP578 in view of JP293 encompasses embodiments that are substantially identical to that of Applicant’s invention, and one of ordinary skill in the art would readily conclude that those encompassed, identical embodiments must have the same properties as Applicant’s adhesive (i.e., inclusive of those properties recited by the instant claims. 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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 18:
JP578 further discloses that from the viewpoint of superior adhesion to both inorganic and organic substances, Component B comprises a C6 to C30 alkyl (meth)acrylate (paragraph [0025]).
Regarding instant claim 19:
JP578 further discloses that from the viewpoint of superior adhesion to both inorganic and organic substances, Component B comprises a C6 to C30 alkyl (meth)acrylate (paragraph [0025]).
Similarly, in their original disclosure, Applicant discloses that the alkyl (meth)acrylate may be a (meth)acrylate containing an unsubstituted alkyl group having 1 to 10 carbon atoms (see Specification at paragraph [0087]).
Therefore, since JP578 and Applicant disclose overlapping alkyl (meth)acrylates, those overlapping (meth)arylates must have the same properties (i.e., the claimed molecular weight). 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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 20:
JP578 further discloses that the curable resin composition comprises a photo- radical polymerization initiator (paragraph [0007]).
Regarding instant 21:
JP578 discloses a laminate comprising a substrate 1 and a substrate 2 bonded together via a cured product of a curable resin composition (paragraph [0048]).
JP578 further discloses that the substrate 1 and the substrate 2 may be light-transmitting or light opaque materials (paragraph [0049]).
Said “light-transmitting materials” meets the claimed window.
JP578 further discloses that the “light-opaque” materials are inclusive of display panels (paragraph [0050]).
JP578 discloses a curable resin composition comprising: (Component A) a (meth)acrylic oligomer and (Component B) (paragraph [0007]).
JP 578 further discloses that said Component A is a (meth)acrylic oligomer having one or more (meth)acryloyl groups in its molecule (paragraph [0012]), which overlaps the claimed two or more (meth)acryloyl groups recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP578 further discloses that Component A is a urethane (meth)acrylate oligomer (paragraphs [0013-0014]).
JP578 further discloses that Component A is present in an amount of less than 30 parts by weight or less (paragraph [0008]), which includes the range recited by the claim (i.e., of at least 1 wt% to less than 10 wt%); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP578 further discloses that the Component B is inclusive of alicyclic (meth)acrylates, hydroxyl group-containing (meth)acrylates, and combinations thereof from the viewpoint of achieving superior adhesion to both inorganic and organic substrates (paragraph [0021 and 0025]).
JP578 does not explicitly disclose the amount of the hydroxy group-containing (meth)acrylate.
However, since the instant specification is silent to unexpected results, the specific amount of hydroxy group-containing (meth)acrylate is not considered to confer patentability to the claims. As the adhesion to inorganic and organic substrates is a variable that can be modified, among others, by adjusting the amount of hydroxyl group-containing (meth)acrylate, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of amount of hydroxyl group-containing (meth)acrylate to obtain the desired adhesion (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
JP578 further discloses that examples alicyclic (meth)acrylate are inclusive of dicyclopentenyloxyethyl (meth)acrylate, dicyclopentanyl (meth)acrylate, and isobornyl (meth)acrylate (paragraph [0024]).
Similarly, in their original disclosure, Applicant discloses that the alicyclic (meth)acrylate may include, for example, at least one selected from isobornyl (meth)acrylate, discyclopentanyl (meth)acrylate, and dicyclopentenyloxyethyl (meth)acrylate (see Specification at paragraph [0085]).
Therefore, since JP578 discloses the same alicyclic (meth)acrylates as Applicant, they must have the same properties (i.e., glass transition temperature). 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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
JP578 does not explicitly disclose the glass transition temperature of the resin once cured.
However, JP293 discloses a photocurable adhesive containing a urethane (meth)acrylate compound in combination with a monofunctional (meth)acrylate compound (paragraph [0010]).
JP293 further discloses that the glass transition of the cured product of the photocurable adhesive composition is 0°C or higher in order to optimize heat resistance (paragraph [0069]). It is noted that the glass transition temperature range of JP 293 overlaps the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the cured product of the curable resin composition of JP578 has the glass transition temperature prescribed by JP293. The motivation for doing so would have been to optimize the heat resistance of the cured product.
Therefore, it would have been obvious to combine JP293 with JP578 to obtain the invention as specified by the instant claim.
Regarding instant claim 22:
JP578 further discloses that the thickness of the curable resin composition is 10 to 500 μm, which includes the range recited by the claim; ; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claims 23-25:
The scope JP578 in view of JP293 encompasses embodiments that are substantially identical to that of Applicant’s invention, and one of ordinary skill in the art would readily conclude that those encompassed, identical embodiments must have the same properties as Applicant’s adhesive (i.e., inclusive of those properties recited by the instant claims. 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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 26:
JP578 further discloses that the light-opaque substrates have color filters formed thereon (paragraph [0050]).
Given the structure citied in the rejection of claim 21 above, an optical adhesive layer formed from a polymer derived from the curable resin must be formed between color filter and the light-transmitting material meeting the claimed window.
Furthermore, Applicant establishes that color filters are examples of the claimed light control layer (see Specification at paragraph [00117]); therefore, the color filter of JP578 meets the claimed light control layer.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant traverses the Examiner’s rejection of the claims over the teachings of the prior art of record. Applicant first traverses the Examiner’s rejection of the limitation reciting the amount of hydroxy group-containing (meth)acrylate monomer. Applicant contends that the Office relies on broad and conclusory statements such as “adjusting the amount of hydroxyl group-containing (meth)acrylate… would have been considered a result effective variable,” “the claimed amount cannot be considered critical,” and “would have optimized through routine experimentation,” and that these assertions are not supported by specific evidence or technical reasoning that addresses the actual limitations and compositional distinctions recited in the claims. Applicant’s point to their original disclosure wherein they disclose that the amount of acrylate optimizes peel force and moisture absorption properties. Applicant further points to their Examples and Comparative Examples in support of the criticality of their claimed ranges.
Applicant’s arguments are unpersuasive. As cited in the rejections of record, JP578 teaches that the Component B, inclusive of hydroxyl group-containing (meth)acrylates, are included in the composition from the viewpoint of achieving superior adhesion to both inorganic and organic substrates. Therefore, one of ordinary skill in the art, wishing to balance adhesion of the composition to both inorganic and organic substrates would readily use routine experimentation to optimize an amount of at least the hydroxyl group-containing (meth)acrylate.
As to Applicant’s arguments alleging the criticality of the claimed amount of hydroxy group-containing (meth)acrylate, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
In the instant case, the evidence upon which Applicant relies is much narrower in scope than Applicant’s claim. Specifically, Applicant’s examples are all drawn to specific compositions composed of specific monomers and/or oligomers in specific amounts. Applicant’s broadest claims are drawn to multifunctional urethane (meth)acrylate oligomer, any monofunctional alicyclic (meth)acrylate having a glass transition temperature of about 80 °C or greater, and any hydroxy group-containing (meth)acrylate. It is not immediately apparent that the unexpected results alleged by Applicant are exhibited by every embodiment encompassed by the scope of Applicant’s broadest claimed invention.
Applicant further traverses the Examiner’s rejection of the limitation reciting the amount of urethane (meth)acrylate oligomer. Applicant cites their original disclosure highlighting the importance of the claimed range. Applicant goes on to argue that JP578 expressly teaches amounts of 10 wt%, 20 wt%, and 30 wt% for its component (A). Applicant further contends that JP293 teaches an amount of urethane (meth)acrylate of 20 wt% to 70 wt%. Applicant alleges that the amounts disclosed by the prior art teach away from the claimed amount of 1 wt% to less than 10 wt%.
Applicant’s arguments are unpersuasive. As to the disclosure of JP578, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP §2123(II). In the instant case, JP578 discloses that Component A (i.e., inclusive of urethane (meth)acrylate oligomer) is present in an amount of 30 parts by weight or less, wherein the range is inclusive of the claimed range of 1 wt% to less than 10 wt%. Although the examples of JP578 use amounts of Component A that are greater than those of Applicant’s claim, such examples do not constitute a teaching away from the broader disclosure of 30 parts by weight or less.
As to Applicant’s traversal of JP 293 base on its amount of urethane (meth)acrylate oligomer, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the instant case, JP293 is not relied upon to obviate the claimed amount of urethane (meth)acrylate oligomer. Instead, JP293 is relied upon to teach why one of ordinary skill in the art would control the glass transition temperature of the resin composition of JP578 and arrive at the temperature of Applicant’s claim. Applicant’s argument as to the differing amounts of urethane (meth)acrylate oligomer are unpersuasive unless Applicant clearly shows that the glass transition temperature necessarily always requires the urethane (meth)acrylate oligomer in an amount that lies outside the claimed range.
Applicant further traverses the Examiner’s position with regard to the inherency of the claimed properties. Applicant argues that listing similar monomer names in the cited prior art does not mean that the properties are necessarily the same.
Applicant’s arguments are unpersuasive. Specifically, the Examiner maintains the position that since the prior art discloses the same monomers as Applicant’s inventions, such monomers must have the same properties (i.e., the claimed molecular weights and glass transition temperatures).
Conclusion
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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAM/Examiner, Art Unit 1788 03/18/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788