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 .
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.
Claim(s) 1-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirose et al.
Regarding claims 1 and 29, Hirose teaches a pressure-sensitive sheet having an adhesive layer made from an acrylic pressure-sensitive adhesive (PSA) comprising an acrylic polymer (Abstract; acrylic PSA layer discussed at paras [0140]-[0200]; PSA composition discussed at paras [0201]-[0251]). The acrylic polymer is preferably a polymerization product of a monomer mixture (para [0202]), i.e., a copolymer, based on a polymerization of
a monomer A (the monomer B1 of Hirose described at paras [0151]-[0155] and [0188]-[0191]) that may be, for example, n-butyl acrylate (para [0155]);
a monomer B (the monomer A of Hirose described at paras [0142]-[0144] that is a (meth)acrylate); and
a monomer C (the monomer B2 of Hirose described at paras [0157]-[0182] that may be, e.g., an ethylenic unsaturated mono-carboxylic acid such as acrylic acid, methacrylic acid (para [0158])).
Regarding the recitation of "in an amount from 90% to 99.5% by weight," Hirose teaches a ratio of acrylic monomer to all monomeric components of the total polymer is 90% by mass or higher, and can be 98% to 100% by mass (para [0183]), such range either anticipating or rendering obvious the recited range. When the prior art discloses a range which touches or overlaps the claimed range, such range anticipates if the prior art range discloses the claimed range with sufficient specificity. MPEP 2131.03. Alternatively, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); MPEP 2144.05.
Regarding the recitation of "a crosslinker in an amount of from 0.5 wt.% to 10 wt.%, based on total weight of the composition," Hirose teaches the inclusion of crosslinking agents (i.e., crosslinkers) at paras [0247]-[0249]). Hirose teaches the amount of crosslinking agent is usually about 0.01 to 15 parts by mass relative to 100 parts by mass of all monomeric components in the acrylic PSA layer (para [0282]), such range either anticipating or rendering obvious the recited range of 0.5 to 10 wt.%. See MPEP 2131.03 and 2144.05. Hirose teaches such an amount of crosslinker is preferable because it is likely to form a PSA with well-balanced adhesion to a low-polar material, such as an olefinic rubber material (para [0282]).
Thus, if not anticipated, it would have been obvious to one of ordinary skill in the art at the time of filing of the claims of the invention to combine the acrylic copolymer monomers according to Hirose recited in claim 1 with a crosslinker in the range recited in claim 1 for the advantage taught in Hirose of well-balanced adhesion to a low-polar material.
Regarding the limitation of the composition being free from photo-initiators and being thermally curable, Hirose et al. discloses the composition can be thermally curable using a thermal curing initiator.[0206] While this is directed to making the polymer and not curing, Hirose et al. explicitly states that “the method for polymerizing the PSA composition to allow its curing is not particularly limited. For instance, it can be the same with or different from the polymerization method used in the partial polymerization of the monomer mixture.”[0229] Since one of the choices for forming the polymer is thermal initiation, this effectively teaches that thermal curing can be used. One in the art would appreciate that when the composition was intended to be thermally cured, there would be no need for a photoinitiator since that it not a thermal curing initiator.
Regarding the time and temperature for curing, Hirose et al. discloses polymerization can take place at 20-100 C.[0206] While the reference is silent as to the length of curing, this is within the ability of one of ordinary skill in the art to determine absent unexpected results.
Regarding claim 2, see the rejection of claim 1 above and Hirose teaching at paras [0151]- [0154] that monomer B1 of Hirose (i.e., monomer A of the claim) may be an alkyl (meth)acrylate, including methyl, ethyl, propyl, n-butyl, 2-ethylhexyl, decyl (meth)acrylate and combinations thereof (para [0154]).
Regarding claim 3, see the rejection of claim 1 above and the Hirose teaching at paras [0157]-[0172] that the monomer B2 of Hirose (i.e., monomer B of the claim) may be acrylic acid, methacrylic acid, crotonic acid, itaconic acid, fumaric acid, maleic anhydride, (meth) acrylamide, N,N-methyl acrylamide and mixtures thereof.
Regarding claim 4, see the rejection of claim 1 above and the Hirose teaching at paras [0142]-[0150] that the monomer A of Hirose (i.e., monomer C of the claim) is a (meth)acrylate. Although Hirose further teaches its (meth)acrylate is an amino-group-containing (meth)acrylate, the claim 4 recitation of, for example, methyl acrylate and methyl methacrylate broadly includes the aminomethyl (meth)acrylates identified in paras [0147]-[0150].
Regarding claim 5, Hirose teaches that its monomer B1 (i.e., monomer A) of the claim) may be 2- ethylhexyl acrylate, butyl acrylate, or isooctyl acrylate (para [0154] and that the monomer B1 is typically in an amount of 50% by mass or higher and suitably 95% by mass or lower (para [0188]), such range anticipating or rendering obvious the recited range of from 50% by weight to 99.99% by weight.
Regarding claim 6, Hirose teaches its monomer B2 (i.e., monomer B of the claim) may be acrylic acid, methacrylic acid or itaconic acid (para [0158]). Regarding the recitation of "in an amount of from 0.1% by weight to 10% by weight," Hirose teaches the monomer B2 content is suitably 20% by mass or less and preferably 10% by mass or less (para [0192]), such range anticipating or rendering obvious the recited range.
Regarding claim 7, Hirose teaches its monomer A (i.e., monomer C of the claim) is a methyl acrylate or methyl methacrylate (paras [0142]-[0149]). Regarding the recitation of "an amount of from 0.1% by weight to 25% by weight," Hirose teaches its monomer A is 0.2% by mass or higher and preferably 20% by mass or lower (paras [0184]- [0185]), such range anticipating or rendering obvious the recited range.
Regarding claim 8, Hirose teaches its crosslinking agent (i.e., crosslinker) may be an acrylate-based polyfunctional monomer (para [0247]), a metal salt or a silane coupling agent (para [0249]).
Regarding claim 9, Hirose teaches its crosslinking agent may be epoxy-based (para [0249]). Hirose further teaches its crosslinking agent may be polyglycerol polyglycidyl ether (para [0280]), understood to be a glycidyl copolymer.
Regarding claim 10, Hirose teaches its crosslinking agent may include the polyfunctional monomers exemplified as the monomer B2 (para [0247]), one of which is 2-hydroxyethyl acrylate having a Tg value of -15°C, functionality of 2, and viscosity and molecular weight falling within the recited ranges.
Regarding claim 11, a solvent-free composition is described at para [0229] of Hirose.
Regarding claim 12, Hirose at para [0085] teaches a PSA sheet of Hirose may have a multilayer structure formed with one acrylic PSA layer (i.e., layer according to claim 1) whose back face, opposite from an adhesive face, is laminated with a non-release surface of another layer, i.e., a substrate. Hirose further teaches that the substrate layer may be either another PSA layer or a layer not constituting an adhesive face (paras [0297]-[0300]). Hirose teaches using a release layer at para [0138]) and providing protection for the adhesive face using a release liner at para [0139].
Regarding claims 13 and 14, Hirose teaches its adhesive layer may range in thickness for 1 µm, suitably 5 µm or larger, to about 1000 µm, preferably 600 µm or smaller (paras [0297]-[0300]). These ranges anticipating or rendering obvious the ranges recited in claims 13 and 14. See MPEP 2131.03 and 2144.05.
Regarding claim 15, please see the Section 112 rejection above. In order to advance prosecution, the limitation "the polymeric membrane" is understood to refer to the substrate. As set forth in the rejection of claim 12, Hirose teaches the multilayer composite of Hirose is a "sheet." Hirose also describes the sheet as being in the form of a PSA tape, label or film (para [0085]), all understood to be structures wherein the layer comprising the composition is in contact with substantially all of one planar surface of the substrate, which may be a polymeric membrane (see para [0298] teaching the substrate layer may have a thickness of 0.05 µm; see also para [0303] describing a construction having a non-adhesive bubble-containing layer, i.e., a membrane).
Regarding the recitation in claim 16 of "wherein the multilayer composite has a peel strength, when adhered to a stainless steel panel and tested according to PSTC 101, of at least 6 lbs. per inch," at para [0066], Hirose teaches its PSA layer has a peel strength of 0.1 N/20 mm or greater when adhered to a steel plate, a range that is understood to overlap and thus render obvious the recited range. MPEP 2144.05.
Regarding claim 17, Hirose teaches its multilayer composite may include a membrane (see the rejection of claim 15 that is incorporated herein). Hirose also teaches roofing sheets as an example of olefinic rubber surface to which its PSA sheets may be adhered (para [0335]). Thus, Hirose is understood to teach/suggest the roofing membrane recited in claim 17.
Regarding claim 18, an underlayment is understood as anything that may be placed under something else, e.g., a layer placed between a subfloor and a finished floor or a roof component between shingles and a roof deck. Thus, claim 18 is directed to a future use a PSA sheet according to Hirose that does not further limit claim 18. In order to advance prosecution, on the merits, please see the rejection of claim 12 that is incorporated herein, Hirose teaching a multilayer composite wherein a PSA sheet of Hirose is adhered to a substrate. Hirose further teaches applications wherein the PSA sheet of Hirose is adhered to, for example, weather strips and roofing sheets (para [0335]), such uses understood as including underlayment applications.
Regarding claim 19, please see the Section 112 rejection above. On the merits, please see the rejection of claim 12 that is incorporated herein, Hirose teaching a PSA sheet having an adhesive layer, a substrate and a release liner. Please also see the rejection of claim 18 that is incorporated herein.
Regarding claim 20, please see the Section 112 rejection above. On the merits, please see the rejection of claim 12 that is incorporated herein, Hirose teaching a PSA sheet having a substrate and an adhesive layer. The substrate may include polypropylene film (i.e., nonwoven polypropylene), ethylene-propylene copolymer film (i.e., nonwoven polyethylene) (para [0110]) and also woven or non-woven fabric made from synthetic fibers, including polyester fibers (para [0111]).
Regarding claim 21, please see the Section 112 rejection above. On the merits, both the terms roof assembly and underlayment are directed to future uses of the PSA sheet of Hirose. On the merits, Hirose teaches applications wherein the PSA sheet of Hirose is adhered to, for example, roofing sheets (para [0335]), such use being understood as both an underlayment and roof assembly application.
Regarding claim 22, Hirose teaches a process for forming a PSA sheet, i.e., a multilayer composite (paras [0201]-[0205]).
The process may include the steps of
(a) polymerizing a mixture comprising a monomer A, a monomer B, and a monomer C, in an amount of from 90% to 99.5% by weight, and a crosslinker in an amount from 0.5% to 10% by weight, based on total weight of the acrylic polymer, to provide a thermally curable pressure-sensitive adhesive (for the adhesive components and contents thereof, see the rejection of claim 1 that is incorporated by reference herein; see para [0202] describing the production of a polymerization product of the monomer mixture and para [0203] describing various polymerization methods may be used including those carried out in the presence of a thermal polymerization initiator, thus teaching the production of a thermally curable pressure adhesive);
(b) heating the thermally curable pressure-sensitive adhesive (see Example H1 at paras [0368]-[0372] teaching mixing and heating of monomer mixture); and
(c) extruding the adhesive to a planar surface of a polymeric membrane such that adhesive is in contact with substantially all of one planar surface of the polymeric membrane, forming an adhesive coating layer comprising the adhesive (see para [0201] teaching the PSA layer according to Hirose may be applied in a heat-melted state, teaching/suggesting a step of extruding; see also para [0085] teaching laminating the adhesive PSA layer with a non-release site surface of another layer (para [0085])).
Regarding the recitation of "wherein the adhesive coating layer has a thickness of from 25 to 500 µm," please see the rejection of claims 13 and 14 that are incorporated herein.
Regarding "(d) subjecting the adhesive coating layer to thermal energy," and “[an] adhesive that is thermally cured” see paras [0206]-[0210] teaching the use of thermal polymerization initiators with thermal polymerization preferably carried out at a temperature of about 20°C to 100°C (para [0206]), thus predictably teaching/suggesting subjecting the coating to thermal energy to complete cure as a suitable process step). One in the art would appreciate that when the composition was intended to be thermally cured, there would be no need for a photo-initiator since it was not photo cured.
Regarding the steps of "(f) applying a release liner to the adhesive coating layer to form a multilayer composite" and "(g) winding the composite," see para [0139] discussing an embodiment having a release liner. Para [0139] also teaches providing a release face so that when wound, an adhesive face is in contact with a release face and is thus protected. Thus, Hirose necessarily teaches a step of applying a release liner in certain applications and the discussion of providing a release surface in order to protect a PSA sheet of Hirose when it is "wound," renders predictable, and therefore obvious a step of winding a composite that includes either a release liner or a release face. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Regarding claim 23, please see the rejection of claim 22 above and the teaching in Hirose of carrying out thermal polymerization at a temperature of about 20°C to 100°C (para [0206]), overlapping and thus rendering obvious the recited temperature of from 100°C to 200°C. Regarding the recitation of "for a duration of from 5 min to 15 min, such is considered a design choice that is arbitrary in nature and thus obvious in the absence of a showing of criticality.
Regarding claim 24, please see the rejection of claim 12 that is incorporated by reference herein that teaches step (a).
The step (b) of removing a release liner is considered predictable and obvious as it has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Regarding the step (c) of "adhering/ laminating/ installing" please see the Section 112 rejection above. On the merits, please see Hirose teaching of roofing sheets as an example of olefinic rubber surface to which its PSA sheets according to Hirose may be adhered (para [0335]). Roofing sheets are understood to be a roof substructure. Thus a PSA sheet according to Hirose being adhered/ laminated/ installed onto a roofing sheet is understood to teach step (c) of claim 24.
Regarding claim 25, according to Hirose at para [0046], the PSA sheet of Hirose may be applied to a surface of an adherent at "ordinary temperature" also described as "room temperature" at para [0060]. Such temperature falls within the recited range.
Regarding claim 26, please see the rejection of claim 9 above and Hirose teaching polyglycerol polyglycidyl ether (para [0280]).
Regarding claim 27, Hirose teaches its crosslinker may comprise polyfunctional monomers exemplified as the monomer B2 (para [0247]), which includes oxazoline group containing monomers (paras [0165] and [0249]). Hirose teaches aziridine-based crosslinking agents at para [0249]).
Regarding claim 28, Hirose et al. discloses the composition can be applied to a roofing membrane made of EPM rubber.([0004];[0335])
Regarding claim 29, Hirose et al. discloses the composition can contain carbon black.[0042]
Response to Arguments
Applicant's arguments filed 1/27/26 have been fully considered but they are not persuasive.
Regarding applicant’s argument that Hirose et al. does not teach a hot melt thermally curable adhesive, while Hirose et al. talk about thermal initiators in paragraphs [0206]-[0210], this is directed to making the polymer and not curing. However, Hirose et al. explicitly states that “the method for polymerizing the PSA composition to allow its curing is not particularly limited. For instance, it can be the same with or different from the polymerization method used in the partial polymerization of the monomer mixture.”[0229] Since one of the choices for forming the polymer is thermal initiation, this effectively teaches that thermal curing can be used. The fact that it is not the preferred embodiment and that none of the examples refer to a thermally curing initiator does not mean the reference does not teach it. It simply means it is not the preferred embodiment. Non-preferred embodiments are still teachings. It is noted that Hirose et al. does explicitly teach using “heating, irradiation of active energy rays, etc.” as a curing means[0100] though it does not state these are in the alternative. As to teaching it is a hot melt, Hirose et al. teaches the composition can be applied in a heat-melted state, as a hot melt.[0201]
Regarding applicant’s argument that Hirose et al. contains solvent and therefore would be incompatible with a hot melt, Hirose et al. explicitly teaches that a hot melt PSA is an alternative to one with solvent[0201] and that it is preferable the PSA not have solvent/[0229]
Regarding applicant’s argument that the cross-linkers of the invention do not function as thermal polymerization initiators, the claims does not teach that thermal initiators are not present.
Regarding applicant’s arguments as to unexpected results, the claims are not commensurate in scope with the data. The unexpected results are shown for one specific crosslinker while the claims encompass all cross-linkers. Additionally, applicant is arguing the unexpected results for a specific adhesive thickness, which is also not claimed in claim 1.
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 BARBARA J MUSSER whose telephone number is (571)272-1222. The examiner can normally be reached 7:30-4:30 M-Th; 7:30-3:30 second Fridays.
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BARBARA J. MUSSER
Primary Examiner
Art Unit 1746
/BARBARA J MUSSER/Primary Examiner, Art Unit 1746
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