Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Election/Restriction
2. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5, drawn to “a water-dispersed pressure-sensitive adhesive composition”, classified in C09J 7/30.
II. Claims 6-8, drawn to “a pressure-sensitive adhesive sheet”, classified in H01P 72/7402.
3. The inventions are independent or distinct, each from the other because:
4. Inventions II and I are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the pressure sensitive adhesive sheet of Group I loses its identity when formed into sheet comprising a pressure sensitive adhesive layer for re-peeling. The subcombination of Group I has separate utility such as non-re-peeling purposes or bonding agent/coatings.
5. The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
6. Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention; and/or
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a).
7. Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
8. The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
9. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
10. During a telephone conversation with Mr. Shu Muramoto on June 23, 2026, a provisional election was made WITHOUT traverse to prosecute the invention of Group I, claims 1-5 (“a water-dispersed pressure-sensitive adhesive composition”). Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-8 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double Patenting I
11. Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-5 of co-pending U.S. Application No. 18/430,970 (hereinafter referred to as “US Appl. ‘970”; corresponding to US PG PUB 2024/0271013) in view of Ueki et al. (US 2016/0264825).
The claims of the US Appl. ’970 and the present application are directed to water-dispersed pressure-sensitive adhesive composition comprising a water-dispersed acrylic polymer, an active energy ray-curable resin, and a photopolymerization initiator, wherein the water-dispersed acrylic polymer is a polymer obtained by emulsion polymerization using a reactive surfactant. Both the claims of US Appl. ‘970 and the present application also recite that its composition further comprises a cross-linking agent.
However, the claims of US Appl. ‘970 do not specify the acrylic polymer as a polymer obtained by subjecting a monomer composition containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymer as required by the claims of the present application. They also do not specifically mention the amount of such monomer used as required by present claim 2 or its glass transition temperature as required by present claim 3.
Nevertheless, Ueki et al. disclose the use of a water-dispersed acrylic polymer obtained by subjecting a monomer mixture (composition) containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymerization using a reactive surfactant in a water-dispersed pressure sensitive adhesive composition having excellent weatherability (Paragraph [0009]), comprising (Paragraphs [0034], [0047], [0065], [0069], [0107]), and [0125]). Ueki et al. also disclose that acrylic monomer including the claimed methacrylic acid ester accounts for 50% by weight or more of the monomers (all monomers) corresponding to the composition of the acrylic polymer (Paragraph [0034]), which overlaps with the presently claimed 10-60 wt.% of the methacrylic acid ester with respect to all monomer components in the monomer composition. Ueki et al. further disclose the acrylic polymer has a glass transition temperature of -40°C or higher (Paragraph [0088]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the presently claimed amount of acrylic polymer having the presently claimed glass transition temperature obtained by subjecting a monomer composition containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymer taught by Ueki et al. in the water-dispersed pressure sensitive adhesive of US Appl. ‘970, with a reasonable expectation of successfully obtaining excellent weatherability.
This is a provisional nonstatutory double patenting rejection.
Double Patenting II
12. Claims 1-2 and 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-5 of co-pending U.S. Application No. 18/430,964 (hereinafter referred to as “US Appl. ‘964”; corresponding to US PG PUB 2024/0271020).
The claims of the US Appl. ’964 and the present application are directed to a water-dispersed pressure-sensitive adhesive composition comprising a water-dispersed acrylic polymer, an active energy ray-curable resin, and a photopolymerization initiator, wherein the water-dispersed acrylic polymer is a polymer obtained by emulsion polymerization using a reactive surfactant. Both the claims of US Appl. ‘964 and the present application also recite that its composition further comprises a cross-linking agent.
However, the claims of US Appl. ‘964 do not specify the acrylic polymer as a polymer obtained by subjecting a monomer composition containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymerization as required by the claims of the present application. They also do not recite the amount of such monomer as required by present claim 2.
Nevertheless, claim 1 of US Appl. ‘964 do recite employing a water-dispersed acrylic polymer that is a polymer obtained by subjecting a monomer composition containing a carboxyl group-containing monomer represented by formula (1) to emulsion polymerization, wherein R1 represents a methyl group, which is inclusive of the presently claimed methacrylic acid ester having 2 or less carbon atoms, for the purposes of preparing a water-dispersed pressure-sensitive adhesive composition. Claim 2 of US Appl. ‘964 also recite that the content ratio of the monomer is from 3-30 parts by weight with respect to 100 parts by weight of the total of all monomer components which overlap with the presently claimed 10-60% by weight of the methacrylic acid ester having 2 or less carbon atoms to emulsion polymerization.
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the presently claimed amount of water-dispersed acrylic polymer that is a polymer obtained by subjecting a monomer composition containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymerization recited in the clams of US Appl. 964, with reasonable expectation of successfully preparing a water-dispersed pressure-sensitive adhesive composition.
Double Patenting III
13. Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,570,876 (hereinafter referred to as “the patent”) in view of Ueki et al. (US 2016/0264825).
The claims of the patent and the present application are directed to a water-dispersed pressure-sensitive adhesive composition comprising a water-dispersed acrylic polymer, an active energy ray-curable resin, and a photopolymerization initiator. The claims of the patent also recite that the water-dispersed acrylic polymer has a glass transition temperature of less than 0°C which overlaps with the presently claimed glass transition temperature of -40°C to 0°C. Both the claims of the patent and the present application further recite that its composition further comprises a cross-linking agent.
However, the claims of the patent do not specify the acrylic polymer as a polymer obtained by subjecting a monomer composition containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymerization as required by the claims of the present application. They also do not specifically mention the amount of such monomer used as required by present claim 2 or its glass transition temperature as required by present claim 3.
Nevertheless, Ueki et al. disclose the use of a water-dispersed acrylic polymer obtained by subjecting a monomer mixture (composition) containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymerization using a reactive surfactant in a water-dispersed pressure sensitive adhesive composition having excellent weatherability (Paragraph [0009]), comprising (Paragraphs [0034], [0047], [0065], [0069], [0107]), and [0125]). Ueki et al. also disclose that acrylic monomer including the claimed methacrylic acid ester accounts for 50% by weight or more of the monomers (all monomers) corresponding to the composition of the acrylic polymer (Paragraph [0034]), which overlaps with the presently claimed 10-60 wt.% of the methacrylic acid ester with respect to all monomer components in the monomer composition. Ueki et al. further disclose the acrylic polymer has a glass transition temperature of -40°C or higher (Paragraph [0088]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the presently claimed amount of acrylic polymer having the presently claimed glass transition temperature obtained by subjecting a monomer composition containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymer taught by Ueki et al. in the water-dispersed pressure sensitive adhesive composition of the patent for purposes of obtaining advantageous weatherability.
Claim Rejections - 35 USC § 103
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.
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.
14. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ukei et al. (US 2016/0264825) in view of HIRANO (WO 2022/092090; utilized US 2023/0416571 as its English equivalent).
It is noted that HIRANO (WO 2022/092090) is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely US 2023/0416571 because HIRANO is in Japanese.
As to Claims 1-5: Ueki et al. disclose a water-dispersed pressure sensitive adhesive composition (Paragraph [0009]), comprising a water-dispersed acrylic polymer obtained by subjecting a monomer mixture (composition) containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymerization using a reactive surfactant (Paragraphs [0034], [0047], [0065], [0069], [0107]), and [0125]). Ueki et al. also disclose that acrylic monomer including the claimed methacrylic acid ester accounts for 50% by weight or more of the monomers (all monomers) corresponding to the composition of the acrylic polymer (Paragraph [0034]), which overlaps with the claimed 10-60 wt.% of the methacrylic acid ester with respect to all monomer components in the monomer composition. Ueki et al. further disclose the acrylic polymer has a glass transition temperature of -40°C or higher (Paragraph [0088]). Moreover, Ueki et al. disclose that the composition comprises a crosslinking agent (Paragraph [0023]).
However, Ueki et al. do not specifically mention the addition of an active energy ray-curable resin and a photopolymerization initiator as required by the claims of the present application.
Nevertheless, HIRANO discloses the addition of an active energy ray-curable resin and a photopolymerization initiator to prepare a pressure-sensitive adhesive composition having adhesive reliability (Paragraphs [0010], [0069]-[0075] and [0162]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the active energy ray-curable resin and photopolymerization initiator taught by HIRANO in the pressure-sensitive adhesive composition discussed in Ukei et al., with a reasonable expectation of successfully obtaining adhesive reliability.
15. Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over HIRANO (WO 2022/092090; utilized US 2023/0416571 as its English equivalent).
It is noted that HIRANO (WO 2022/092090) is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely US 2023/0416571 because HIRANO is in Japanese.
As to Claims 1-5: HIRANO discloses a water-dispersed pressure sensitive adhesive composition (Paragraphs [0074] and [0080] and see also abstract), comprising a water-dispersed acrylic polymer (Paragraph [0048]) obtained by emulsion polymerization using a reactive surfactant (Paragraphs [0076] and [0091]), an active energy ray-curable resin and a photopolymerization initiator (Paragraphs [0069]-[0075] and [0162]). HIRANO also discloses that the ratio of the monomers used to prepare the acrylic polymer is 10% by weight or higher (Paragraph [0053]), which overlaps with the claimed 10-60% by weight of the monomer. HIRANO further discloses the addition of a crosslinking agent to the composition (Paragraph [0088]).
However, HIRANO does not mention the claimed monomer composition containing a methacrylic acid ester having 2 or less carbon atoms to emulsion polymerization to form the water-dispersed acrylic polymer with sufficient specificity to constitute anticipation within the meaning of 35 USC 102.
Nevertheless, HIRANO does disclose using an acrylic polymer formed from monomers selected from, among other things, alkyl methacrylate having a linear or branched alkyl group with 1 up to 20 carbon atoms at the ester terminus (which is inclusive of the claimed methacrylic acid ester having 2 or less carbon atoms) to prepare a pressure sensitive adhesive composition having desired adhesive reliability (Paragraphs [0010] and [0048])
Thus, it would have been obvious to one of ordinary skill in the art to select the claimed methacrylic acid ester having 2 or less carbon atoms as one of the alkyl methacrylate monomers to prepare the acrylic polymer, with a reasonable expectation of successfully preparing a pressure sensitive adhesive composition having desired adhesive reliability as suggested by HIRANO.
Correspondence
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
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