DETAILED ACTION
This is an Office action based on application number 18/485,059 filed 11 October 2023, which claims foreign priority to KR10-2023-0059939 filed 9 May 2023 and KR10-2022. Claims 1-7 and 9-23 are pending. Claim 8 is canceled.
Amendments to the claims, filed 13 August 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Withdrawn Rejections
The 35 U.S.C. §112(b) rejections made of record in the previous Office action are withdrawn due to Applicant’s amendments.
The prior art rejections made of record in the previous Office action are withdrawn due to Applicant’s amendments.
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 1-23 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation of “a second moiety derived from a substituted or unsubstituted C3 to C20 cycloalkyl (meth)acrylate-based compound” in lines 9-10, and the claim also recites the limitation “wherein the substituted or unsubstituted C3 to C20 cycloalkyl (meth)acrylate-based compound is selected among isobornyl (meth)acrylate, bornyl (meth)acrylate, and any combination thereof” in lines 15-17 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-23 do not remedy the deficiency of the parent claim and are rejected under the same rationale.
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, 6-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hanai et al. (US Patent Application Publication No. US 2012/0270042 A1) (Hanai) in view of Ansai et al. (US Patent Application Publication No. US 2018/0155582 A1) (Ansai).
Regarding instant claim 1:
Hanai discloses a pressure-sensitive adhesive tape for an electrochemical device that is suitably used for the production of a secondary batter including a non-aqueous electrolytic solution, such as a lithium-ion battery (paragraph [0075]).
The disclosure of a secondary lithium-ion battery meets the claimed rechargable lithium battery.
Hanai further discloses that the adhesive tape includes a pressure-sensitive adhesive layer composed of a pressure-sensitive adhesive on at least one side of a plastic base (paragraph [0012]). Said pressure-sensitive adhesive layer is construed to have adhesiveness on both of its surfaces because it is a homogenous composition with the same properties present throughout said composition.
Hanai further discloses that the pressure-sensitive adhesive is composed of an acrylic copolymer (paragraph [0011; 0012] and a crosslinking agent (paragraph [0014]).
Hanai further discloses that the acrylic copolymer is mainly includes an alkyl(meth)acrylate as a base polymer wherein examples of the alkyl(meth)acrylate include those containing a straight or branched chain alkyl groups having 30 or less carbon atoms inclusive of cyclohexyl groups (paragraph [0025]), which meet the claimed first moiety.
It is noted that the carbon atom amount 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.
Hanai further discloses that the acrylic copolymer includes a hydroxy group-containing monomer (paragraph [0028]), which meets the claimed third moiety.
Hanai further discloses that the acrylic copolymer further includes copolymerizable monomers inclusive of vinyl morpholine (paragraph [0031]), which reads on the claimed unsaturated morpholine-containing fourth moiety.
It is noted that Hanai does not disclose one embodiment that comprises all the above cited moieties; however, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claims, to combine the copolymer deemed usable with one another as set forth by the prior art reference. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Hanai does not explicitly disclose a second moiety is selected among isobornyl (meth)acrylate, bornyl (meth)acrylate, and any combination thereof.
However, Ansai discloses a pressure-sensitive adhesive sheet for batteries and a lithium-ion battery manufactured using the pressure-sensitive adhesive sheet (paragraph [0001]).
Ansai further discloses that the pressure-sensitive adhesive layer comprises 50 mass % or more and 99 mass % or less of a (meth)acrylic alkyl ester having a carbon number of 1-20 (paragraph [0020]).
Ansai further discloses that in the (meth)acrylic ester polymer, a combination of a hard monomer soft monomer is used to improve the resistance to dissolution into an electrolyte solution (paragraph [0053]).
Ansai further discloses that examples of hard monomers include isobornyl acrylate, isobornyl methacrylate, and mixtures thereof (paragraph [0054]).
Before the effective filing date of the claims, 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 include the isobornyl acrylate, isobornyl methacrylate, or a mixture thereof touted by Ansai into the acrylic copolymer of Hanai. The motivation for doing so would have been to improve the resistance to dissolution into an electrolyte solution.
Therefore, it would have been obvious to combine Ansai with Hanai to obtain the invention as specified by the instant claims.
Regarding instant claims 2-3:
The scope of Hanai obviates an embodiment that would be substantially identical to that of Applicant’s claimed composition. Therefore, one of ordinary skill in the art would readily conclude that such an embodiment must have the same properties as the claimed (e.g., crosslinked or capable of being crosslinked to form the recited structure.
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 6:
Hanai further discloses that the amount of the cross-linking agent is about 1 to 15 parts by weight based on 100 parts by weight of the acrylic polymer (paragraph [0054]).
Regarding instant claims 7-8:
Hanai further discloses that examples of the alkyl(meth)acrylates include those having a 2-ethylhexyl group, a methyl group, an ethyl group, a propyl group, an n-butyl group, a hexyl group, a heptyl group, an octyl group, a nonyl group, a decyl group, a lauryl group, and combinations of two or more of them (paragraph [0025]).
Regarding instant claim 9:
Hanai further discloses that examples of the hydroxy group-containing monomer include 2-hydroxyethyl(meth)acrylate, 4-hydroxybutyl(meth)acrylate, 2-hydroxypropyl(meth)acrylate, 6-hydroxyhexyl(meth)acrylate, allyl alcohol, and combinations thereof (paragraph [0028]).
Regarding instant claim 10:
Hanai further discloses that examples of the copolymerizable monomer include vinyl morpholine (paragraph [0031]).
Regarding instant claim 11:
Hanai further discloses that examples of the alkyl(meth)acrylates include those having a 2-ethylhexyl group, a methyl group, an ethyl group, a propyl group, an n-butyl group, a hexyl group, a heptyl group, an octyl group, a nonyl group, a decyl group, a lauryl group, and combinations of two or more of them (paragraph [0025]). Said alkyl(meth)acrylates are construed to meet the claimed first moiety.
Hanai further discloses that the amount of the alkyl(meth)acrylate is 80% by weight or more based on 100% by weight of the monomer components of the acrylic polymer (paragraph [0026]); 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.
Hanai further discloses that the amount of the hydroxy group-containing monomer is about 1 to 10% by weight based on 100% by weight of the monomer components of the acrylic polymer (paragraphs [0028-0029]). Said hydroxy group-containing monomer meets the claimed third moiety.
Hanai further discloses that the amount of copolymerizable monomer inclusive of vinyl morpholine is 50 parts by weight or less based on 100 parts by weight based on the alkyl(meth)acrylate (paragraph [0032]). Said amount is construed to overlap or include 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. Said vinyl morpholine meets the claimed fourth moiety.
Ansai further discloses that the hard monomer inclusive of isobornyl acrylate, isobornyl methacrylate, and mixtures thereof are included such that the ratio of hard monomer to soft monomer is 5:95 to 40:60 (paragraph [0053]). Said hard monomer inclusive of isobornyl acrylate, isobornyl methacrylate, and mixtures thereof meets the claimed second moiety.
Given the amount of first moiety disclosed by Hanai and the ratio disclosed by Ansai, the prior art discloses an amount of second moiety that includes the range recited by the claims; 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. Said vinyl morpholine meets the claimed fourth moiety.
Regarding instant claim 12:
Hanai further discloses examples of the copolymerizable monomer include vinyl morpholine, epoxy group-containing acrylic monomers, and combinations of two or more of them (paragraph [0031]). Said epoxy group-containing acrylic monomers meet the claimed fifth moiety derived from a compound having an ethylene oxide group.
Regarding instant claim 13:
Hanai further discloses that examples of the alkyl(meth)acrylates include those having a 2-ethylhexyl group, a methyl group, an ethyl group, a propyl group, an n-butyl group, a hexyl group, a heptyl group, an octyl group, a nonyl group, a decyl group, a lauryl group, and combinations of two or more of them (paragraph [0025]). Said alkyl(meth)acrylates are construed to meet the claimed first moiety.
Hanai further discloses that the amount of the alkyl(meth)acrylate is 80% by weight or more based on 100% by weight of the monomer components of the acrylic polymer (paragraph [0026]); 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.
Hanai further discloses that the amount of the hydroxy group-containing monomer is about 1 to 10% by weight based on 100% by weight of the monomer components of the acrylic polymer (paragraphs [0028-0029]). Said hydroxy group-containing monomer meets the claimed third moiety.
Hanai further discloses that the amount of copolymerizable monomer inclusive of vinyl morpholine and epoxy group-containing acrylic monomers is 50 parts by weight or less based on 100 parts by weight based on the alkyl(meth)acrylate (paragraph [0032]). Said amount is construed to overlap or include the ranges for the fourth and fifth moieties 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.
Ansai further discloses that the hard monomer inclusive of isobornyl acrylate, isobornyl methacrylate, and mixtures thereof are included such that the ratio of hard monomer to soft monomer is 5:95 to 40:60 (paragraph [0053]). Said hard monomer inclusive of isobornyl acrylate, isobornyl methacrylate, and mixtures thereof meets the claimed second moiety.
Given the amount of first moiety disclosed by Hanai and the ratio disclosed by Ansai, the prior art discloses an amount of second moiety that includes the range recited by the claims; 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. Said vinyl morpholine meets the claimed fourth moiety.
Regarding instant claim 14:
Hanai teaches that an adhesive composition having an increased viscosity may have problems inclusive of poor coating properties; furthermore, Hanai teaches that the viscosity is controlled through the adjustment of the weight average molecular weight of the adhesive composition (paragraph [0040]).
Since the instant specification is silent to unexpected results, the specific viscosity of the copolymer is not considered to confer patentability to the claims. As the coatability of the adhesive composition is a variable that can be modified, among others, by adjusting the viscosity of the adhesive composition, 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 viscosity of the adhesive composition in Hanai to obtain the desired coatability (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 15:
Hanai further discloses that the acrylic polymer has an acid value of preferably 0 to 0.5 (paragraph [0038]).
Regarding instant claim 16:
Hanai further discloses that the pressure-sensitive adhesive layer has a thickness of 1 to 15 μm (paragraph [0058]); 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 18:
Hanai further discloses that the adhesive tape includes a pressure-sensitive adhesive layer composed of a pressure-sensitive adhesive on at least one side of a plastic base (paragraph [0012]) (i.e., inclusive of an embodiment wherein the pressure-sensitive adhesive is formed on both surfaces of the plastic base).
Regarding instant claim 19:
Hanai further discloses that the base is formed from a resin material inclusive of polyethylene terephthalate (paragraph [0060]).
Regarding instant claim 20:
Reference is made to FIG. 3-2 of Hanai, reproduced below:
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FIG. 3-2 illustrates a lithium-ion battery (paragraph [0018]) comprising the pressure-sensitive adhesive tapes <3>, electrode terminals <4>, positive electrodes <5>, and negative electrodes <6> (paragraphs [0106-0114]).
The collection of electrode terminals, positive electrodes, and negative electrodes meet the claimed electrode assembly.
Said adhesives tapes <3> are construed attached to at least a portion of an inside of the electrode assembly as illustrated in FIG. 3-2.
Hanai further teaches that in the practice of its intended use, the adhesive tape is immersed in an electrolytic solution (paragraph [0015]), which meets the claimed electrolyte impregnated into the electrode assembly.
Hanai further discloses that the electrode is packed into a battery case (paragraph [0078]).
The disclosure of a secondary lithium-ion battery meets the claimed rechargable lithium battery.
Claims 4 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hanai in view of Ansai as applied to claim 1, and further in view of Terajima et al. (JP2005126452A with citations taken from the provided machine translation) (Terajima).
Regarding instant claim 4:
Hanai in view of Ansai discloses the pressure-sensitive adhesive tape as cited in the rejection of claims 1 and 2, above.
Hanai further teaches that copolymers of alkyl(meth)acrylates and a functional group-containing monomer can achieve excellent adhesiveness by cross-linkages, wherein such adhesiveness can elution of the pressure-sensitive adhesive composition into an electrolytic solution and reaction with the electrolyte that would consequently reduce battery characteristics (paragraph [0005]).
Hanai does not teach the claimed crosslinking degree.
However, Terajima discloses an adhesive tape used as a constituent material for a lithium-ion battery (paragraph [0001]).
Terajima further discloses that the adhesive is inclusive of acrylic-based adhesives (paragraph [0014]).
Terajima teaches that the solubility of the adhesive in the electrolyte solvent is adjusted by controlling the degree of crosslinking of the polymer constituting the adhesive. Terajima teaches that the solubility of the adhesive in the electrolyte optimizes electrolyte injection time and adhesive strength (paragraph [0023]).
Since the instant specification is silent to unexpected results, the specific degree of crosslinking of the acrylic is not considered to confer patentability to the claims. As the solubility of the adhesive in the electrolyte is a variable that can be modified, among others, by adjusting the degree of crosslinking of the acrylic polymer, 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 degree of crosslinking in the prior art combination to obtain the desired solubility (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 17:
The prior art combination does not explicitly disclose the claimed expansion rate of the adhesive layer.
However, as cited in the rejections above, the prior art combination obviates an embodied adhesive layer that is substantially identical to that of Applicant’s claim (i.e., the same components, obviated amounts, and obviated crosslinking degree). Therefore, one of ordinary skill in the art would readily conclude that the obviated embodiment must have the same properties as Applicant’s claimed invention (i.e., the same expansion 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 Terajima with Hanai in view of Ansai to obtain the invention as specified by the instant claims.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hanai in view of Ansai as applied to claim 1, and further in view of Sherman et al. (US Patent Application Publication No. US 2017/0362469 A1) (Sherman).
Regarding instant claim 5:
Hanai in view of Ansai discloses the tape comprising the acrylic copolymer-based pressure-sensitive adhesive as cited in the rejection of claim 1, above.
Hanai further discloses that examples of the cross-linking agent are inclusive of polyfunctional isocyanate compounds (paragraphs [0051-0052]).
Hanai does not explicitly disclose that the crosslinking agent is a multi-functional (meth)acrylate.
However, Sherman discloses crosslinked (meth)acrylate-based pressure sensitive adhesives (paragraph [0046]).
Sherman further teaches that a crosslinking agent is used to build the molecular weight and the strength of the (meth)acrylate copolymer (paragraph [0051]).
Sherman teaches that one class of useful crosslinking agent include multifunctional (meth)acrylate species (paragraph [0053]).
Sherman teaches that another useful class of crosslinking agent include multifunctional isocyanate compounds (paragraph [0054]).
Before the effective filing date of the claims, 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 replace the polyfunctional isocyanate crosslinking agent of Hanai with the multifunctional (meth)acrylate of Sherman. The motivation for doing so would have been that Sherman establishes that multifunctional (meth)acrylate and multifunctional isocyanate crosslinking agents are functionally equivalent in building molecular weight and strength of (meth)acrylate copolymers. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Sherman with Hanai in view of Ansai to obtain the invention as specified by the instant claim.
Claims 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hanai in view of Ansai as applied to claim 1, and further in view of Chang et al. (US Patent No. 6,371,997 B1) (Chang) and Ohsawa et al. (US Patent No. 5,162,178) (Ohsawa).
Reference is made to FIG. 3-2 of Hanai, reproduced below:
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Regarding instant claims 21 and 22:
FIG. 3-2 illustrates a lithium-ion battery (paragraph [0018]) comprising the pressure-sensitive adhesive tapes <3>, electrode terminals <4>, positive electrodes <5>, negative electrodes <6>, separators <7> between the electrodes, and active material <8> (paragraphs [0106-0114]).
Hanai further discloses that the negative electrode substrate is coated with a negative electrode active material and the positive electrode substrate is coated with a positive electrode active material (paragraph [0077]).
Hanai does not disclose the claimed current collectors or plastic-containing current collector.
However, Chang discloses that in the manufacture of lithium batteries, current collectors are included on both the anode and cathode (col. 2, lines 36-38).
Further, Ohsawa discloses that for a negative electrode for a secondary battery, a current collector may be made of electric conductive materials inclusive of carbon coated plastic plates (col. 4, lines 34-50).
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 use the current collectors of Chang and Oshawa on the electrodes of Hanai. The motivation for doing so would have been that said current collectors are art-recognized components for secondary batteries. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Regarding instant claim 23:
Hanai further discloses that the pressure-sensitive adhesive sheet is used for the production of a secondary battery including a nonaqueous electrolytic solution, such as a lithium-ion battery (paragraph [0075]).
Hanai does not explicitly disclose the claimed gel polymer electrolyte, polymer electrolyte, or combination thereof.
However, Chang teaches that lithium secondary batteries are classified into lithium ion batteries using a liquid electrolyte and lithium batteries using a polymer electrolyte, wherein the polymer electrolyte includes pure polymer electrolyte, a gel polymer electrolyte, and a hybrid polymer electrolyte (col. 1, lines 36-41).
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 replace the electrolytic solution of Hanai with the pure polymer electrolyte, a gel polymer electrolyte, or hybrid polymer electrolyte of Chang. The motivation for doing so would have been that Chang establishes liquid electrolytes and polymer electrolytes as functional equivalent electrolytes for the production of lithium secondary batteries. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Chang and Ohsawa with Hanai in view of Ansai to obtain the invention as specified by the instant claims.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the previous 35 U.S.C. §112(b) rejection are fully considered. Applicant’s amendments necessitate new grounds of 35 U.S.C. §112(b) rejections.
Applicant’s arguments regarding the previous prior art grounds of rejection are fully considered. Applicant’s amendments necessitate the new grounds of rejection. Applicant’s arguments traversing the Hanai reference are fully considered, but are unpersuasive.
Applicant argues that Hanai provides that the use of a hydroxyl group-containing monomer, together with limiting carboxyl group-containing monomers, maintains adhesive strength, prevents corrosion, lowers water absorption, and suppresses trouble caused by water contained in the pressure sensitive adhesive sheet. Applicant argues that Hanai’s passing inclusion of vinyl morpholine in a broad list of optional “other copolymerizable monomers” does not provide an apparent teaching, suggestion, or reason to select vinyl morpholine and incorporate it into the specific acrylic copolymer relied upon by the Office. Applicant contends that the morpholine moiety is a hygroscopic group. Applicant further argues that Hanai does not provide an apparent reason to select and combine all four recited monomer-derived moieties in one acrylic copolymer.
Applicant’s arguments are unpersuasive. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP §2123. In the instant case, Hanai in view of Ansai, which disclose the acrylate copolymer with all of the positively recited moieties necessarily encompasses the claimed composition and obviates Applicant’s invention. Applicant’s argument that the skilled artisan would not be motivated to include the vinyl morpholine moiety is merely conclusive especially when Hanai positively discloses that such a moiety may be included into the acrylic copolymer, and such a positive disclosure is indicative of a reasonable expectation of success of the combination.
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.
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/TAM/Examiner, Art Unit 1788 09/01/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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