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 .
Response to Amendment
Applicant’s amendment filed on 03/17/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1, 4-6, 9-12 and 15 are examined on the merits in this office action.
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 03/17/2026 is considered and signed IDS form is attached.
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 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.
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, 4-6, 9-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Negele et al. (WO 2020/178218 A1 cited in IDS) in view of Awane et al. (WO 2020/067221 A1). It is noted that when utilizing Awane et al., the disclosures of the reference are based on US 2022/0032600 A1 (cited in IDS) which is an English language equivalent of the reference. Therefore, the paragraph numbers cited with respect to Awane et al. are found in US ‘600.
Regarding claims 1, 4-6, 9-12 and 15, Negele et al. disclose an ionically conductive pressure sensitive adhesive (adhesive film) prepared from an ionically conductive pressure sensitive adhesive composition comprising 5 to 80 wt% of a (meth)acrylate resin, 0.1 to 35 wt% of an ionic liquid (non-polymerizable electrolyte) and 10 to 90 wt% of a solvent (see Abstract, page 21, claim 1, page 22, claim 5 and claim 7, page 23, claim 12 and page 9, paragraph 2). Given that the present claim recites 0 to 10 wt% or up to 10 wt% of solubilizer, solubilizer is optional. Given that solvent is present in the composition, the composition is a solvent-borne composition. The ionically conductive pressure sensitive adhesive (adhesive film) is prepared by drying the ionically conductive pressure sensitive adhesive composition (see page 9, paragraph 9).
The (meth)acrylate resin comprises at least 10 wt% of (meth)acrylate monomer comprising OH-group (see page 21, claims 1 and 4). The monomers for preparing the (meth)acrylate resin include hydroxyethyl acrylate (a2), methyl methacrylate (a1), etc. (see page 21, claim 4). Based on at least 10 wt% of (meth)acrylate monomer comprising OH-group, the amount of hydroxyethyl acrylate is at least 10 wt% and the amount of methyl methacrylate is at most 90 wt%. The ionic liquid can be 1-ethyl-3-methylimidazolium chloride (see page 22, claim 6). The solvent can be ethyl acetate (ester having 4 carbon atoms) (see page 23, claim 12).
While there is no disclosure that the ionically conductive pressure sensitive adhesive (adhesive film) is an electrochemically-debondable pressure sensitive adhesive film, given that the ionically conductive pressure sensitive adhesive (adhesive film) is made from the adhesive composition including the (meth)acrylate copolymer, the non-polymerizable electrolyte and the solvent identical to that presently claimed and with their amounts overlapping with that as presently claimed, the ionically conductive pressure sensitive adhesive (adhesive film) is necessarily inherently an electrochemically-debondable pressure sensitive adhesive film.
The ionically conductive pressure sensitive adhesive (adhesive film) is disposed between two metal films such as silver films or aluminum films (see page 15, paragraph 2 and page 16, paragraph 2). The metal films read on a first substrate having an electrically conductive surface and a second substrate having an electrically conductive surface. Given that first substrate and the second substrate is metal film which are identical to that utilized in the present invention, the electrically conductive surfaces of the first substrate and the second substrate are characterized by a surface energy as presently claimed. Accordingly, Negele et al. disclose a bonded structure as presently claimed.
Negele et al. do not disclose the (meth)acrylate copolymer as presently claimed.
Awane et al. disclose an acrylic polymer comprises 70 wt% or more of alkyl (meth)acrylate monomer such as methyl (meth)acrylate (A1) and 0.1 to 35 wt% of a polar-group containing monomer such as 2-hydroxyethyl (meth)acrylate (A2) (see paragraphs 0127-0132, 0134 and 0143). A glass transition temperature of the polymer is 0 °C or lower and a weight average molecular weight is 100,000 to 5,000,000 daltons (see paragraphs 0171 and 0160). The glass transition temperature prevents decrease in initial adhesive force (see paragraph 0171). The molecular weight of acrylic polymer prevents remains of adhesive residue on surface of adherend after debonding adhesive layer as well as provides wettability of the surface of the adherend (see paragraph 0160).
In light of motivation for using the (meth)acrylic polymer disclosed by Awane et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use the (meth)acrylic polymer of Awane et al. as the (meth)acrylic polymer in Negele et al. in order to prevent decrease in initial adhesive force, prevent remains of adhesive residue on surface of adherend after debonding adhesive layer as well as provide wettability of the surface of the adherend, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 03/17/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicant argues that Negele fails to teach the specific non-polymerizable electrolyte as recited in claims 1 and 15 selected from the group consisting of 1-ethyl-3-methylimidazolium chloride, 1-ethyl-3- methyl-1H-imidazol-3-um methanesulfonate, 1-ethyl-3-methylimidazolium trifluoromethanesulfonate, 1-ethyl-3-methyl-1H-imidazol-3-um methyl sulfate, 1-ethyl-3- methylimidazolium tetrafluoroborate, 1-ethyl-3-methylimidazolium thiocyanate and mixtures thereof.
However, it is not clear why applicant argues that Negele does not teach the specific non-polymerizable electrolyte given that claim 6 (see page 22) of Negele disclose the use of 1-ethyl-3-methylimidazolium chloride.
In light of amendments, claim objections are withdrawn.
In light of amendments, 112(b) paragraph rejections are withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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