DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 12-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/27/2026.
Applicant’s election without traverse of Group I (claims 1-11 and 24-27) in the reply filed on 5/27/2026 is acknowledged.
Claim Objections
Claims 6 and 24 are objected to because the term “the oligomer” has antecedent basis as “at least one oligomer” (in the first line of each claim) and should therefore be referred to as “the at least one oligomer.”
Appropriate correction is required.
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.
Claims 1-11 and 24-27 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 1, the term “monofunctional” is undefined and it is unclear what reads on “functional.” In the interest of compact prosecution, a “monofunctional acrylate monomer” is one having only one acrylate group.
With respect to claim 11, it is unclear to what “is provided” refers, i.e., is it how the resin composition is obtained or how the composition is used?
With respect to claims 2-10 and 24-27, they are rejected for failing to cure the deficiency of the claim from which they depend.
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 of this title, 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.
Claims 1-5, 9-11, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi (CN 106536653, machine translation).
With respect to claims 1, 4, and 5, Taniguchi discloses an active energy ray-curable pressure sensitive adhesive composition comprising a urethane (meth)acrylate compound (i.e., oligomer) and ethylenically unsaturated monomers includes (b1) heterocycle-containing acrylate monomer (reads on claimed third monomer), (b2) a hydroxy group-containing acrylate monomer (reads on claimed first monomer), and (b3) other acrylate monomers such as isodecyl methacrylate (reads on claimed second monomer) (abstract; paragraphs 0067-0079). Taniguchi also teaches that composition includes are a photoinitiator (paragraph 0087).
Taniguchi discloses that the amount of claimed second monomer is 30 wt % or less and the ratio of the claimed third to first monomers 25:75 to 80:20. As an example, when 25 wt % of second monomer is added, the remaining 75 wt % is calculated to be 15-56 wt % first monomer and 19-60 wt % third monomer. Each of these ranges overlaps with the claimed amount.
While these amounts are not disclosed with sufficient specificity so as to anticipate the claims, it is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Therefore, it would have been obvious to one of ordinary skill in the art to obtain the claimed resin composition comprising an oligomer, plurality of monomers within claimed amounts, and a photoinitiator—absent a showing of unexpected or surprising results commensurate in scope with the scope of the claims.
With respect to claims 2 and 11, Taniguchi teaches that the adhesive composition is applied with a variety of coating methods, including precise inkjet printing (paragraph 0099). Because the composition is able to printed by precise printing methods, it is expected to be able to match patterns printed 1 hour apart.
With respect to claim 3, Taniguchi that the adhesive composition is resistant to damp heat (paragraph 0015) and would be expected to have weight stability at 30°C for 1 hour.
With respect to claim 9, Taniguchi teaches the importance of viscosity, i.e., when the molecular weight and viscosity of the urethane (meth)acrylate compound are too high, the adhesive composition becomes difficult to process (paragraph 0062 and 0064). Also, when the viscosity of the adhesive composition is too low, it becomes more difficult to control film thickness during coating (paragraph 0064). Taniguchi also teaches that the amount of unsaturated monomer and solvent controls viscosity (paragraphs 0085 and 0095).
While Taniguchi does not explicitly disclose the viscosity of the resin composition, it clearly suggests how and why to adjust viscosity to be suitable for coating processes. Therefore, it would have been obvious to one of ordinary skill in the art to obtain a viscosity at 25°C within the range of 5-30 mPa.s.
With respect to claim 10, Taniguchi teaches its adhesive composition exhibits 180-degree peel test strength at 25°C of at least 10N/25mm (paragraphs 0163 and 0165), i.e., 1000 gf/25 mm.
With respect to claim 24, Taniguchi teaches that the urethane (meth)acrylate oligomer is formed from polypropylene glycol or polytetramethylene glycol (i.e., polytetrahydrofuran) (paragraph 0033).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi (CN 106536653, machine translation) in view of Lee (US 8,883,315).
The discussion with respect to Taniguchi in paragraph 5 above is incorporated here by reference.
Taniguchi discloses additives (paragraph 0091) but fails to disclose adding 3-glycidoxypropyltrimethoxysilane.
Lee discloses an adhesive composition comprising urethane-acryl copolymer and a (meth)acrylate monomer mixture (abstract) and teaches that silane coupling agents such as 3-glycidoxypropyl trimethoxysilane are added to improve bonding force (col. 7, lines 27-33).
Given that both Taniguchi and Lee are both drawn to adhesive compositions comprising a urethane-acryl compound and (meth)acrylate monomers and further given that Lee teaches that a suitable additive is 3-glycidoxypropyl trimethoxysilane to improve bonding force, it would have been obvious to one of ordinary skill in the art to utilize 3-glycidoxypropyl trimethoxysilane in Taniguchi’s adhesive composition.
Claims 1-11 and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 8,883,315) in view of Watanabe (CN 104320270, machine translation).
With respect to claims 1 and 4, Lee discloses an adhesive composition for glass bonding comprising 100 parts by weight of a urethane-acryl copolymer, 500-1,000 parts by weight of a monomer mixture of acrylic monomer having no hydroxyl group and a monomer having a hydroxyl group, an isocyanate crosslinking agent, and a photopolymerization initiator (abstract; col. 6, lines 13-22). Lee teaches that the mixture of acrylic monomer includes 75-95 wt % of at least one of an acrylate monomer having no hydroxyl group such as isodecyl(meth)acrylate (reads on claimed second monomer) and isobornyl(meth)acrylate (reads on claimed third monomer) and 5-25 wt % of an acrylic monomer having a hydroxyl group (reads on claimed first monomer) (col. 5, line 66 to col. 6, line 12).
Lee fails to (i) disclose with sufficient specificity so as to anticipate the selection of both isodecyl (meth)acrylate (claimed second monomer) and isobornyl(meth)acrylate (claimed third monomer) or (ii) that the urethane-acryl copolymer is an oligomer.
With respect to (i), it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Therefore, it would have been obvious to one of ordinary skill in the art to select these two monomers that do not contain a hydroxy group.
Regarding the amounts of each, Lee already teaches that the monomer mixture includes 5-25 wt % hydroxyl monomer which leaves 75-95 wt % the remaining for the monomer without hydroxyl group. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that “[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Based on this rationale, Lee suggests utilizing 37.5-45.5 wt % of claimed second and third monomers. Lee teaches that 500-1000 parts by weight of monomer mixture is added per 100 parts by weight urethane-acrylate copolymer, the amount of each second and third monomer is calculated to be about 31-41 wt % for the oligomer and monomer ingredients alone. These amounts overlap the range of claimed second monomer but do not overlap for claimed third monomer. Regarding the third monomer, these amounts are only based on oligomer and acrylate monomers alone and would be further reduced to be within the claimed range of 20-30 wt % by adding other ingredients such as initiator and crosslinking agent.
Therefore, it would have been obvious to one of ordinary skill in the art to obtain a resin composition comprising the claimed mixture of monofunctional acrylate monomers—absent a showing of unexpected or surprising results that are commensurate in scope with the scope of the claims.
With respect to (ii), Watanabe discloses a UV light curing adhesive composition comprising a polyfunctional urethane (meth)acrylate oligomer having a weight average molecular weight of 10,000-100,000 (abstract). Watanabe discloses that an oligomer having molecular weight of 10,000 or more provides improved adhesive strength and 100,000 or less provides improved workability (paragraph 0041).
Given that both Lee and Watanabe are drawn to adhesive compositions comprising a urethane acrylate compound and further given that Watanabe teaches advantageous oligomeric molecular weight range of the urethane acrylate compound when in a curable adhesive composition, it would have been obvious to one of ordinary skill in the art to utilize an oligomeric urethane acrylate compound in Lee’s adhesive composition.
With respect to claim 2, because this measurement is based on any discharge device that discharges the same composition, it would have been obvious to one of ordinary skill in the art to expect that the same composition when applied an hour apart still provides the same shape.
With respect to claim 3, the minimal change in weight is expected because the claimed measurement is made before light is applied.
With respect to claim 5, the 1:1 mixture of claimed second and third monomers is close enough to a slightly more amount of third monomer over second monomer because these values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Therefore, it would have been obvious to one of ordinary skill in the art to utilize slightly more third monomer over the amount of second monomer.
With respect to claims 6-8, Lee discloses mixing 100 parts by weight of a urethane-acryl copolymer and, 500-1,000 parts by weight of a monomer mixture of acrylic monomer having no hydroxyl group and a monomer having a hydroxyl group, which provides for an amount of urethane acrylate oligomer of about 9-17 wt %.
Because Watanabe discloses that a suitable weight average molecular weight of the urethane acrylate oligomer is 10,000-100,000, it would have been obvious to one of ordinary skill in the art to utilize a urethane acrylate oligomer having any molecular weight. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Therefore, it would have been obvious to one of ordinary skill in the art to utilize at least two urethane acrylates having weight average molecular weights within 10,000-100,000, with the higher molecular weight one in a greater amount.
With respect to claim 9, Lee teaches that viscosity can be controlled by adding diluted monomer (col. 4, lines 35-40). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the viscosity for desired application processes.
With respect to claim 10, Lee teaches that the adhesive composition is adhered to a glass assembly (substrate) (abstract). Because the composition is to bond glass, it would have been obvious to one of ordinary skill in the art to have a high peel strength like claimed.
With respect to claim 11, while Lee does not disclose providing the composition by inkjet printing, this is a product-by-process claim. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With respect to claims 24-26, Lee teaches that the urethane acrylate compound is prepared with polyol such as polypropylene glycol and polytetrahydrofuranglycol (col. 4, lines 8-10). Lee also discloses mixing 100 parts by weight of a urethane-acryl copolymer and, 500-1,000 parts by weight of a monomer mixture of acrylic monomer having no hydroxyl group and a monomer having a hydroxyl group, which provides for an amount of urethane acrylate oligomer of about 9-17 wt %.
Given that the polyol is only a portion of the urethane acrylate oligomer, it would have been obvious to one of ordinary skill in the art to utilize less than 9-17 wt % of polypropylene glycol or polytetrahydrofuran in the adhesive composition.
With respect to claim 27, Lee discloses an adhesive composition comprising urethane-acryl copolymer and a (meth)acrylate monomer mixture (abstract) and teaches that silane coupling agents such as 3-glycidoxypropyl trimethoxysilane are added to improve bonding force (col. 7, lines 27-33).
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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