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 .
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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 30 December 2025. A preliminary amendment was filed on 23 October 2023 amending the specification, abstract and claims 1-10 and 12-16. Claims 1-16 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 15 December 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 12 February 2026 is acknowledged. The traversal is on the grounds that (1) there is a technical relationship that involves the same special technical feature, and (2) the previous Office Action did not establish an undue search burden of the claims as specified by MPEP 803.
This is not found persuasive because, (1) it is noted that inventions listed as Groups I-V do not relate to a single general inventive concept under PCT Rule 13.1 because under PCT Rule 13.2, the groups lack the same or corresponding special technical features as set forth on pages 4-5 of the previous Office Action. Furthermore, (2) because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established.
Claims 9-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 12 February 2026.
Drawings
The drawings received on 23 October 2023 are acceptable.
Claim Objections
Claim 7 is objected to because of the following informalities. Appropriate correction is required.
Claim 7 refers to a homopolymer which necessarily uses only a single monomer. Thus the claim should recite “…is a homopolymer of a styrene-based monomer.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Palasz (U.S. Pub. 2006/0110596) as evidenced by Lu (U.S. Pub. 2009/0272950).
Regarding claim 1, Palasz describes pressure-sensitive UV hot melt acrylic polymers, see abstract. The adhesive includes a UV curable acrylic resin which reads on being energy-beam crosslinkable, see p. 2, [0020-0021]. The Examples use a combination of a UV-curable adhesive resin and KRISTALEX F85 tackifier resin, see p. 4, [0052-0053].
Lu is relied upon here for the limited evidentiary purpose of teaching that KRISTALEX F85 is an alpha-methyl styrene tackifier resin, see p. 2, [0027]. Thus the use of KRISTALEX F85 in Palasz reads on the claimed styrene-based resin (B1) in the tackifier component (B).
Thus Palasz anticipates the claimed invention.
Regarding claims 2 and 5, Example 1 of Palasz uses 20 wt. % of KRISTALEX F85 tackifier resin and 80 wt. % of acrylic resin, which is 25 parts by weight of the tackifier component based on 100 parts by weight of the acrylic resin component. See p. 4, [0052].
Example 2 of Palasz uses 10 wt. % of KRISTALEX F85 tackifier resin and 90 wt. % of acrylic resin, which is about 11 parts by weight of the tackifier component based on 100 parts by weight of the acrylic resin component. See p. 4, [0052].
Each of these examples thus anticipates the claims.
Regarding claim 6, Palasz teaches that a particularly preferred acrylic polymer includes 2-ethylhexyl acrylate bonded to a pendant benzophenone group, such as that from BASF under the trade name acResin™ A 204 UV. See p. 2, [0020]. This is the same material used in the examples at p. 4, [0051-0052].
Regarding claim 7, Palasz uses KRISTALEX F85 tackifier resin, see p. 4, [0052-0053].
Lu is relied upon here for the limited evidentiary purpose of teaching that KRISTALEX F85 is an alpha-methyl styrene tackifier resin, see p. 2, [0027]. Thus the use of KRISTALEX F85 in Palasz reads on a homopolymer of a styrene-based monomer as claimed.
Regarding claim 8, Palasz teaches that a release liner and a backing film (reading on the substrate) are used along with the adhesive film, see p. 3-4, [0047-0048].
Claims 1-2 and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu (U.S. Pub. 2009/0272950).
Regarding claim 1, Lu discloses a radiation curable pressure-sensitive acrylic adhesive layer, see title and abstract. The preferred acrylic polymer is a UV curable acrylic polymer modified with a benzophenone group, see p. 2, [0021] and [0023].
The adhesive also includes a tackifier such as KRISTALEX 3085 / KRISTALEX F85, an alpha-methyl styrene resin which reads on component (B) and (B1) as claimed. See p. 2, [0027]. This material is used in Examples 1, 3, 5, and 6, see Table 1 on p. 4. These examples thus anticipate the claimed invention.
Regarding claim 2 and 5, the amount of tackifier resin used in the examples is 10 parts, 12 parts, or 15 parts by weight along with 75 parts by weight of UV-curable acrylic resin A204, see Table 1 on p. 4. These are about 14, 16, and 21 parts by weight based on 100 parts by weight of the UV-curable resin, respectively.
Regarding claim 6, Lu teaches that the preferred acrylic polymer is a UV curable acrylic polymer modified with a benzophenone group, see p. 2, [0021] and [0023].
Regarding claim 7, Lu teaches that KRISTALEX F85 is an alpha-methyl styrene tackifier resin, see p. 2, [0027], reading on a homopolymer of styrene-based monomers as claimed.
Regarding claim 8, Lu teaches forming the adhesive composition onto a carrier or release liner, see p. 3, [0036].
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Lu (U.S. Pub. 2009/0272950).
Regarding claims 3 and 4, Lu discloses a radiation curable pressure-sensitive acrylic adhesive layer, see title and abstract. The preferred acrylic polymer is a UV curable acrylic polymer modified with a benzophenone group, see p. 2, [0021] and [0023].
The adhesive also includes a tackifier such as KRISTALEX 3085 / KRISTALEX F85, an alpha-methyl styrene resin which reads on component (B) and (B1) as claimed. See p. 2, [0027]. This material is used in Examples 1, 3, 5, and 6, see Table 1 on p. 4.
Other suitable tackifiers include a hydrogenated rosin ester tackifier resin, see p. 2, [0027] and claim 16. The total amount of tackifiers is typically up to 40 wt. % or up to 30 wt. % of the adhesive composition, which encompasses the range specified in claim 4. Although there are no examples using such a combination of tackifiers, it would have been obvious to have included both the styrene-based tackifier resin and the hydrogenated rosin ester tackifier resin in the adhesive composition as each are disclosed as suitable tackifier resin components.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Traser (U.S. Pub. 2013/0273362) describes a UV-radiation curable pressure-sensitive adhesive which may include an acryloyl benzophenone monomer and a hydrogenated rosin tackifier. A styrene-based tackifier is not disclosed.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Scott R. Walshon/ Primary Examiner, Art Unit 1759
Prosecution Insights