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 § 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.
Claim 9 is 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 9 recites the broad recitation a glass transition temperature of no greater than 20 oC, and the claim also recites no greater than 15, 10, 5, or 0 oC 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.
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.
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.
Claim(s) 1-8 and 10-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feichtmeier et al. (US 6,350,791), when taken with Dumur, F. Eur. Polym. J. 2020, 139, 110026.
Regarding claims 1-2, 4-8, 10 and 12-14: Feichtmeier et al. (US ‘791) discloses adhesive compositions containing a thermoformable polymer component and photoactivatable curing system [abstract; 2:50-3:6], wherein Feichtmeier et al. (US ‘791) discloses the photoinitiator includes cationic photoinitiators such as Irgacure 261 (η6-(1-methyletyhl)phenyl(η5-cyclopentadienyl) iron hexafluorophosphate) [8:4-9:8] and radical photoinitiators such as Irgacure 651 [10:62-67]. Feichtmeier et al. (US ‘791) discloses Example 1 [Ex. 1; 18:49-20:13; Table, Ex. 1] contains 34.13 wt% n-butyl acrylate, 7.49 wt% N-vinyl caprolactam, 2.77 wt% hydroxy PhPA (hydroxyphenoxypropylacrylate [Table 1]), 24.14 wt% D.E.R. 331 (liquid bisphenol A based epoxy resin [Table 1]), 9.57 wt% D.E.R. 671 (solid bisphenol A based epoxy resin [Table 1]), 7.08 wt% 445006 (core/shell polymer; silicone core with polymethylmethacrylate shell [Table 1]), 2.77 wt% aluminum trihydroxide, 0.1 wt% Irgacure 261 {note: Irgacure 261 exchanged for Irgacure 651 as the photoinitiator in Ex. 1 [8:4-9:8; 10:62-67]; see MPEP 2131.02}, 0.04 wt% Irganox 1010, 1.79 wt% DICY, and 0.54 wt% 2MZ-A-S {corresponding to 35.1 wt% n-butyl acrylate, 2.8 wt% hydroxy PhPA, 24.8 wt% D.E.R. 331, 9.8 wt% D.E.R. 671, 7.3 wt% 445006, based on organic component} [Ex. 1; 18:49-20:13; Table, Ex. 1]. Feichtmeier et al. (US ‘791) discloses the thermoformable polymer component can be prepared from a prepolymeric (partially polymerized) mixture of acrylic monomers [6:36-7:10].
Feichtmeier et al. (US ‘791) does not specifically disclose Ex. 1 employing partially polymerized acrylic monomers (prepolymeric mixture). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed partially polymerized acrylic monomers (via 34.13 wt% n-butyl acrylate, 7.49 wt% N-vinyl caprolactam, 2.77 wt% hydroxy PhPA (hydroxyphenoxypropylacrylate)) based on the invention of Feichtmeier et al. (US ‘791), and would have been motivated to do so since Feichtmeier et al. (US ‘791) suggests the thermoformable polymer component can be prepared from a prepolymeric (partially polymerized) mixture of acrylic monomers [6:36-7:10].
Dumur, F. Eur. Polym. J. 2020, 139, 110026 provides evidence for Irgacure 261 (η6-(1-methyletyhl)phenyl(η5-cyclopentadienyl) iron hexafluorophosphate) as an UV photoinitiator [Scheme 1; §2.1; Fig. 8].
Regarding claim 3: Feichtmeier et al. (US ‘791) discloses aluminum trihydroxide having an average particle size of less than 5 µm [9:55-10:2].
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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claim 11: Feichtmeier et al. (US ‘791) discloses 0.1 to 2 wt% of cationic photoinitiator [9:9-15].
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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claim 15-16: Feichtmeier et al. (US ‘791) discloses adhesive tapes comprising a release layer in contact with the adhesive [2:30-49; 18:49-56; 19:7-20:3; Ex. 1].
Regarding claim 17-18: Feichtmeier et al. (US ‘791) discloses the adhesive was applied to steel coupons and bonded to afford a steel coupon/adhesive/steel coupon sandwich [18:1-47; Ex. 1; Table 2, Ex. 1].
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feichtmeier et al. (US 6,350,791), when taken with Dumur, F. Eur. Polym. J. 2020, 139, 110026 as applied to claim 1 above, when taken with Tobing et al. (US 2025/0243384), Matsumura et al. (US 5,874,041) and Ayensa, N.; Reviriego, F.; Reinecke, H.; Gallardo, A.; Elvira, C.; Rodríguez-Hernández, J. Polymers 2025, 17, 2448.
Regarding claim 9: Feichtmeier et al. (US ‘791) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Feichtmeier et al. (US ‘791) discloses n-butyl acrylate (homopolymer Tg = -54 oC), N-vinyl caprolactam (homopolymer Tg = 100 oC), and hydroxyphenoxypropyl acrylate (homopolymer Tg = 33 oC); corresponding to a copolymer (76.9 wt% n-butyl acrylate, 16.9 wt% N-vinyl caprolactam and 6.2 wt% hydroxy PhPA) Tg ~ -33 oC, via Fox equation
1
T
g
=
∑
i
w
i
T
g
i
[Ex. 1; 18:49-20:13; Table, Ex. 1].
Tobing et al. (US ‘384) provides evidence for n-butyl acrylate homopolymer having a Tg = -54 oC [0099].
Matsumura et al. (US ‘041) provides evidence for N-vinyl caprolactam homopolymer having a Tg = 100 oC [12:30-31].
Ayensa et al. (Polymers 2025, 17, 2448) provides evidence for 2-hydroxy-3-phenoxypropyl acrylate (HPPA) homopolymer having a Tg = 33 oC [§3.1].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Feichtmeier et al. (US 6,350,791) was relied on for disclosing adhesive compositions containing a thermoformable polymer component and photoactivatable curing system [abstract; 2:50-3:6], wherein Feichtmeier et al. (US ‘791) discloses the thermoformable polymer component can be prepared from a prepolymeric (partially polymerized) mixture of acrylic monomers [6:36-7:10]. Feichtmeier et al. (US ‘791) discloses Example 1 [Ex. 1; 18:49-20:13; Table, Ex. 1] contains n-butyl acrylate, N-vinyl caprolactam and hydroxy PhPA (hydroxyphenoxypropylacrylate) [Table 1]).
The rejection of claim 9 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is maintained. The broad recitation a glass transition temperature of no greater than 20 oC encompasses the narrower ranges (15, 10, 5, or 0 oC) also recited in the claim. 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.
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.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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