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 . Per amendment dated 7/2/26, claims 1, 2, 6-11 are currently pending in the application.
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, 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, 2, 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yamagata et al. (WO/2016/203510 A1, machine translation), as evidenced by JP 2015-151514 A, machine translation-Table 1) (of record).
Yamagata teaches a pressure-sensitive adhesive composition and a pressure-sensitive adhesive tape obtained using the composition, the composition comprising an acrylic copolymer (A), crosslinking agent (B), said acrylic copolymer (A) containing 10 to 20 mass % of a (meth) acrylic acid alkyl ester (A1) having an alkyl group having 1 to 3 carbon atoms, e.g., ethyl (meth)acrylate, 50 to 80 mass % of a (meth) acrylic acid alkyl ester (A2) having an alkyl group having 4 to 12 carbon atoms, e.g., 2-ethylhexyl acrylate, 10 to 15 mass % of a carboxyl group-containing monomer (A3), e.g., acrylic acid, 0.01 to 0.5 mass % of a hydroxyl group-containing monomer (A4), e.g., 4-hydroxybutyl acrylate, and 1 to 5 mass % of vinyl acetate (A5) as constituent components of a polymer chain, and having a weight average molecular weight of a copolymer obtained by using a peroxide-based polymerization initiator of 950,000 to 2,000,000 and a theoretical Tg of -55°C to -75oC [0011], [0016]-[0025].
Disclosed copolymers of Examples 1-8 in Table I have a Tg as claimed, and include units of methyl acrylate (MA), (reads on (A2)-claim 4), 2-ethylhexyl acrylate (2-EHA) and butyl acrylate (BA) (read on (A1)-claim 4), acrylic acid (AA) (reads on (A3)-claim 4), 4-hydroxybutyl acrylate (4-HBA) (reads on (A4)-claim 4); and vinyl acetate (Vac) (reads on (A5)-claims 7 and 8), are combined with a crosslinking agent (B) and applied onto a silicone treated paper (reads on sheet-shaped base material of claim 10) to form a conductive adhesive tape [0044]-[0045].
Yamagata is silent on an acrylic copolymer formed from monomers in amounts as claimed, having a weight average molecular weight and adhesiveness index within the scope of the claimed invention in one single embodiment as in the claimed invention.
At the outset, it is noted that 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). See MPEP § 2144.05.
Given the generic teaching on the lower limit of the weight average molecular weight at 950,000, and a Tg at -55oC, monomers and amounts thereof for preparing the acrylic copolymer, and the teaching on (meth) acrylic acid alkyl esters (A1) having an alkyl group having 1 to 3 carbon atoms, i.e., equivalence of methyl acrylate and ethyl acrylate, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a copolymer within the scope of Yamagata, including those having a Tg, a weight average molecular weight and an adhesiveness index as in the claimed invention.
For instance, based on the generic teaching on monomers and amounts thereof, it would have been obvious to a skilled artisan to prepare a copolymer having a molecular weight of 950,000, from ethyl acrylate, EA (10), EHA (79.4), AA (10), 4-HBA (0.1) and VAc (1.5), within the scope of monomers and amounts recited in instant claims 6-8.
Per evidence reference, the Tg of AA is 106oC (379K), 2-EHA is -70oC (203K), butyl acrylate is -50oC (223K), AA is 106oC (379K), EA is -24oC (248K), VAc is 30oC (303K), and 4-HBA is -30oC (243K).
The calculated Tg for such as copolymer based on EA (by Fox equation known in the art) is 215.48 (reads on a, meets limitation of claim 2). Additionally, with b at 95, and c at 11.5 (AHTg=AA+VAc=10+1.5) in the claimed expression, the calculated adhesiveness index is 1.62x10-2, which falls within the claimed range.
Claims 1, 2, 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa et al. (JP2019-151837 A, machine translation and Table 1-Google translation), as evidenced by Shimizu et al. JP 2013-147587 A, machine translation) (references of record).
Regarding claims 1, 2, 6, Ishikawa teaches a pressure sensitive adhesive composition and a tape thereof (Ab.), formed by copolymerizing the following monomers (Overview, [0018], [0027]-[0044], ref. claims):
(al) 1 to 20% by weight of a terminal carboxy group-containing monomer represented by the general formula (1), CH2 = CRl-CO-O - (R2 - COO-)nH (wherein R1=H or methyl, R2 is saturated aliphatic group and n is a positive integer of 1 or more, e.g., carboxyethyl acrylic acid;
(a2) 0.1 to 5% by weight of (meth) acrylic acid;
(a3) 55 to 97% by weight of (meth) acrylate having an alkyl group having 4 to 24 carbon atoms (excluding t-butyl(meth)acrylate); e.g., n-butyl (meth)acrylate and 2-ethylhexyl acrylate
(a4) 11% by weight or less e.g., a alkyl (meth) acrylate having an alkyl group having 1 to 3 carbon atoms or a vinyl ester-based monomer having 3 to 10 carbon atoms; and further containing
(a5) 0.01 to 5% by weight of a hydroxyl group-containing monomer, e.g., 2-hydroxyethyl (meth)acrylate.
Disclosed pressure sensitive adhesive composition includes a crosslinking agent (B), in addition to acrylic resin (A) [0069]-[0080].
Disclosed acrylic resins (A) have a of from Tg of -80oC to 10oC [0062]-[0064], and a weight average molecular weight of from 10 0,000 to 5,000,000, preferably from 300000 to 1,500,000 [0059].
Disclosed resin of Example (A-3) in Table 1 is formed from monomers CAO (a1, 3.75 % by mass), acrylic acid (a2, 1.25%), butyl acrylate (a3-1, 24.9%), 2-ethylhexyl acrylate (a3-2, 61%), methyl acrylate (a4, 9%) and 2-hydroxyethyl acrylate (a5, 0.1%), having a Mw of 600 K, while that of Example (A-4) has a Mw of 730K.
Per evidence reference, Tg (of corresponding homopolymers) are: methyl acrylate is 8oC (283K), acrylic acid is 106oC (379K), carboxyethyl acrylate is 37oC(310K), 2-hydroxyethyl methacrylate is 55oC(328K), n-butyl acrylate is -54oC(219K) and 2-ethylhexyl acrylate is -70oC(203K) (pages 5-7).
Ishikawa is silent on an adhesive composition having claimed adhesiveness index.
As stated in paragraph 6 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Given the teaching on monomers and amounts thereof for forming the acrylic resin (A), suitable Tg and weight average molecular weight thereof, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to from pressure sensitive adhesive compositions from acrylic resins, including those of the claimed invention.
For instance, a skilled artisan would have found it obvious to prepare a copolymer from monomers as in Example (A-3), except replacing CEA with carboxyethyl acrylate (Tg of 37oC) taught as species of formula 1 (a1), and having molecular weight of 730,000 as that of Examples (A-4) with a reasonable expectation of success. The calculated Tg such as modified (A-3) polymer is 216.46 (reads on a). In Example (A-3), amount of monomer AHTg is 14.11 (3.275+9+1.25+0.01, reads on c ) and the molecular weight of Example (A-4) is 730,000, i.e., claimed b=73. Thus, the calculated adhesiveness index by claimed formula (1) for the modified (A-3) polymer is 0.16 and falls within the claimed range. Although the Tg of 2-hydroxyethyl methacrylate of 55oC(328K) taught in the evidence reference differs from -15oC taught in JP reference in paragraph 3 above, the small amount of 0.1% by wt.% relied in the calculates does not alter the Tg significantly.
Regarding claims 7 and 8, Ishikawa teaches a variety of other suitable monomers may be used that don’t negatively impact the physical properties, including vinyl acetate as being equivalent to methyl acrylate, and other monomers [0038]-[0042], [0047]-[0055]. As such, the recitation “10% by mass of less” in claim 8 encompasses 0 as the lower limit.
Regarding claims 9 and 10, disclosed pressure-sensitive adhesive tape is obtained from the pressure-sensitive adhesive applied to one surface of a substrate, e.g., cloth or plastic film and dried [0091]-[0093].
Regarding claim 11, given the teaching on suitable ranges for monomers (a1) to (a5) in the general disclsoure, a skilled artisan would have found it obvious to prepare an acrylic resin (A) as in (A-3) from carboxyethyl acrylate as (a1), HEA and AAc, in amounts as disclosed for (A-3), and including MA and 2EHA in amounts of 7 wt.% and 63 wt.%, respectively, as having a molecular weight to 730,000 as that of Example (A-4). The calculated Tg is 219.15K, AHTg is 12.11, and the calculated adhesiveness index is 0.017, which falls within the claimed range.
Response to Arguments
In the amendment dated 7/2/26, the anticipation rejections of record are withdrawn. The rejections based on Yamagata are modified herein above in view of the amended claim 1. Additionally, new grounds of rejections are presented herein above.
Applicant’s arguments on Yamagata have been duly considered. Applicant argues that although Yamagata uses variables and parameters and does not reveal the relationship between the three variables that lead to the pressure-sensitive adhesiveness index expressed by Expression (1), that Yamagata fails to recognize the pressure-sensitive adhesiveness index as a result-effective variable for determining pressure-sensitive adhesiveness, and there is no rationale for experimenting with the three variables (a, b, and c) to arrive at the pressure-sensitive adhesiveness index in the claimed range through routine experimentation or optimization. Referring to Examples 1-5 in the specification, Applicant argues that the specific weight average molecular weight and adhesiveness index within the scope of the claimed invention, manifest significant effects, when compared to comparative Examples.
In response, for reasons elaborated in the rejections of record and presented herein above, Yamagata teaches a weight average molecular weight, a Tg, and type monomers and amounts thereof of overlapping scope and therefore, it would have been within the level of ordinary skill on the art to any prepare copolymer within the scope of Yamagata, including those of the present claims absent, evidence of criticality for the claimed invention.
A teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
As for the asserted significant effects of the present invention, as an initial matter, it is noted that in Examples 1, 2 and 4 (Table 1), AA, MA, Vac and HEA would contribute to AHTg, per evidence references cited above. The total amount of these adds up to be 12.1 (not 12). Additionally, the Total Mass for Example 5 does not add up to 100.0.
Considering the data on record, it is noted that inv. Examples 1-5 having a specific adhesiveness index (1.50-1.82 x 10-2), and obtainable from Mw (70 x104-104x104), AHTg (12.0-12.2) and a Tg (195.5K) show one or more improved properties (Table 1), compared to Comp. Examples 1-6 (Table 2) having the adhesiveness index outside of the claimed range. However, this data is limited in scope and it is not clear why this limited data would be reasonably representative of claim 1 that is of a much broader scope.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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