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 1-3, 6-11, 15, 17-22, and 25-26 are pending. Claims 4-5, 12-14, 16, and 23-24 are canceled.
Amendments to the claims, filed 19 May 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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19 May 2026 has been entered.
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 1-3, 6-11, 15, 17-22, and 25-26 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 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.
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 further discloses that the composition has a viscosity of 150 mPa·s or less (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.
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.
As to the claimed haze value and moisture absorption rate, 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., the claimed haze value and moisture absorption rate). 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).
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 claims 6-7:
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 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 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.
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.
As to the claimed haze value and moisture absorption rate, 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., the claimed haze value and moisture absorption rate). 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).
Therefore, it would have been obvious to combine JP293 with JP578 to obtain the invention as specified by the instant claim.
Regarding instant claims 15 and 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]).
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 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.
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.
As to the claimed haze value and moisture absorption rate, 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., the claimed haze value and moisture absorption rate). 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).
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 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 the claimed peel strength). 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 alleges that the cited prior art neither recognizes the coordinated limitations recited in the claims nor provides any teaching that would lead the ordinary skilled artisan to achieve their coordination. Applicant argues that the claimed hydroxy group-containing (meth)acrylate enables the suppression of moisture absorption and haze, whereas the prior art rejection of record contends that its content is merely a matter of routine experimentation for optimizing adhesion. Applicant further points to their original disclosure which shows specific examples showing that a hydroxy group content exceeding the claimed range shows an increased moisture absorption rate. Applicant further argues that the prior art merely discloses initial peel strength and viscosity at room temperature, but neither discloses or suggests the suppression of moisture absorption or optical transparency under harsh environments.
Applicant’s arguments are unpersuasive. In response to Applicant's argument that prior art does not disclose or suggest the suppression of moisture absorption or optical transparency under harsh conditions, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, as mapped above, the scope of the prior art necessarily encompasses an embodiment that is identical to the claims or is capable of obtaining such an embodiment through routine experimentation. Therefore, the prior art encompasses an embodiment that must have the same properties as the claimed composition (e.g., having the same moisture absorption and optical transparency under harsh environments).
Applicant further argues that the added amendments specifying the molecular weight of the urethane (meth)acrylate oligomer rebuts the Examiner’s position that the scope of the provided examples is too narrow compared to the scope of the claims so as to provide evidence that the effects of the invention occur across the entire claimed range.
Applicant’s argument is unpersuasive. The Examiner maintains the position that the provided evidence is still narrower in scope to the claimed ranges so as to provide adequate support for the alleged unexpected results as the examples are all drawn to specific compositions composed of specific monomers and/or oligomers in specific amounts.
Applicant further traverses the reliance on the Aono reference with regard to the claimed viscosity. Applicant argues that the examples in Aono teach viscosities ranging from 27 to 141 mPa.
Applicant’s arguments are unpersuasive. 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, as cited above, Aono discloses that the composition has a viscosity of 150 mPa·s or less, which includes the range recited by the claim. Those examples that have viscosity values outside of the claimed range do not constitute a teaching away from the broader disclosure of the reference.
Applicant further argues that Hayakawa expressly teaches an amount of 20 wt% to 70 wt% of the urethane (meth)acrylate compound, which is greater than the claimed range. Applicant argues that this disclosure presents a fundamental lack of motivation to apply Hayakawa to modify Aono.
Applicant’s argument is unpersuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, the Hayakawa reference is not relied upon to disclose the amount of urethane (meth)acrylate compound because such a limitation is met by the Aono reference, as cited above. Applicant has not persuasively argued that the limitation met by the Hayakawa (i.e., the claimed glass transition temperature) necessarily requires the amount of urethane (meth)acrylate that lies outside the claimed range.
Conclusion
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/TAM/Examiner, Art Unit 1788 07/08/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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