DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5, drawn to an adhesive composition, classified in C09J133/12.
II. Claims 6-7, drawn to an adhesive sheet, classified in C09J2301/10.
Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed are not capable of use together or have a materially different design. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all these 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 at least the following reason(s) apply:
Each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search; the prior art applicable to one invention would not likely be applicable to another invention.
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.
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.
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(a) of the other invention.
During a telephone conversation with Mark Alleman on 6/12/2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-7 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recite “a water-dispersed pressure sensitive adhesive composition comprising 1) a water-dispersed acrylic polymer,2) the water-dispersed acrylic polymer is a polymer obtained by…”. The preamble is interpreted as the composition is dispersed in water. The limitation 1) is interpreted as the acrylic polymer is dispersed in water, however, the claim does not recite the rest ingredients are dispersed in water which is contradict to the preamble, and the limitation “water-dispersed” only applies to the polymer. The limitation 2) defines the “water-dispersed acrylic polymer” is a specific polymer which indicates the “water-dispersed” is an inherent chemical property of the polymer instead of describing the form of the polymer. Clarification is required. For purposes of expediting prosecution and in view of paragraph 0085 of PGPub of instant application, the claim is interpreted as “an aqueous composition for a pressure sensitive adhesive comprising an acrylic polymer, the acrylic polymer is a polymer obtained by…”
It is noted that the claim 6 filed on 6/12/2026 may have potential 112(a) issue because the specification 0085 indicates the adhesive layer is a dried adhesive composition. A composition with water is different from a composition without water.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al (US 2019/0106608).
Jozuka teaches an aqueous PSA composition comprising an acrylic polymer and monomers, a photopolymerization initiator, a crosslinking agent [0105, 0086, 0109, 0111]. The acrylic polymer made from a mixture of alkyl (meth)acrylate and a copolymerizable secondary monomer, the secondary monomer can be an acidic-group containing monomer such as carboxyethyl (meth)acrylate
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in an amount of 3-20wt% based on the total of monomers [0048, 0056-0058]. The acrylic polymer can be formed by emulsion polymerization which reads on water-dispersed [0082]. The monomers in PSA composition are those used to form the acrylic polymer and are active energy ray curable.
Claims 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al (US 2019/0106608) in view of Naito et al (JP2007176961).
In setting forth this rejection a machine translation of JP2007176961 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Jozuka teaches the limitation of claim 1. Jozuka further teaches a surfactant can be used when forming the polymer [0088].
Jozuka does not teach a reactive surfactant.
However, Naito discloses an aqueous pressure sensitive adhesive composition and teaches the acrylic polymer is prepared by emulsion polymerization and the emulsifier used can be a reactive emulsifier [0028]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize a reactive surfactant during emulsion polymerization to prevent it from leaching out over time and issues like foaming, unpleasant odors, and volatile organic compound emissions are drastically reduced.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENWEN CAI whose telephone number is (571)270-3590. The examiner can normally be reached on M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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