RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claims 1-12, 14, and 16 filed on 14 July 2026, have been entered in the above-identified application. Claims 17-20 have been added. Claims 1-20 are pending, of which claims 10-16 remain withdrawn from consideration as described on page 3 of the Office Action mailed on 08 April 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 14 July 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
WITHDRAWN REJECTIONS
The objections to claim 7, made of record on page 4, paragraph 9 of the office action mailed 08 April 2026 have been withdrawn due to Applicant’s amendment.
The 35 U.S.C. § 102 rejection of claims 1, 2, and 5-8 over Palasz (U.S. pub. 2006/0110596) of record on page 4 paragraph 11 of the previous office action has been withdrawn due to Applicant’s amendment in the response filed 08 July 2026. In particular, Palasz does not use a combination of tackifier resins as presently claimed.
The 35 U.S.C. § 102 rejection of claims 1, 2, and 5-8 over Lu (U.S. Pub. 2009/0272950) of record on page 6 paragraph 12 of the previous office action has been withdrawn due to Applicant’s amendment in the response filed 08 July 2026. In particular, Lu does not have any specific examples which use a combination of tackifier resins as presently claimed.
The 35 U.S.C. § 103 rejection of claims 3 and 4 as over Lu, made of record on page 8 paragraph 16 of the previous office action has been withdrawn due to Applicant’s amendment in the response filed 08 July 2026. In particular, Lu does not teach using a hydrogenated terpene phenolic tackifier resin.
NEW AND REPEATED REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claims 17 and 18 are objected to because of the following informalities. Appropriate correction is required.
Claim 17 in line 3 uses the word “relatively” instead of “relative”.
Claim 18 in line 4 uses the word “relatively” instead of “relative”.
Claim 18 in line 9 contains an extra comma in the phrase “…from 90 to 100 mass%, , relative to…”. The Examiner suggests the amended phrase “…from 90 to 100 mass%, [[, ]]relative to…”.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 17 and 18 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed had possession of the claimed invention.
Regarding claim 17, the claim purports to recite that the amount of acrylic resin (A) in the adhesive composition is from 0.1 to 5.0 mass% of adhesive composition. Applicant refers to paragraph [0070] to provide support for this limitation.
However, paragraph [0070] instead recites that the content of the energy-beam reactive group in the energy-beam crosslinkable acrylic resin (A) is preferably from 0.1 to 5.0 mass% of the total amount of the energy beam crosslinkable acrylic resin (A). (emphasis added). The overall content of resin (A) in the composition is from 20-95 mass% of the total adhesive composition, see paragraph [0073].
Thus the claim limits the total amount of resin (A) to claimed amount rather than the amount of the reactive group as a portion of resin (A). The Examiner suggests amending the claim to recite the supported limitation. As the claim is presently written, it contains new matter. The claim should be amended accordingly.
Regarding claim 18, similar to claim 17 as described above, this claim purports to recite that the amount of acrylic resin (A) in the adhesive composition is from 0.2 to 3.0 mass% of adhesive composition. Applicant refers to paragraph [0070] to provide support for this limitation.
However, paragraph [0070] instead recites that the content of the energy-beam reactive group in the energy-beam crosslinkable acrylic resin (A) is preferably from 0.1 to 5.0 mass% of the total amount of the energy beam crosslinkable acrylic resin (A). (emphasis added). The overall content of resin (A) in the composition is from 20-95 mass% of the total adhesive composition, see paragraph [0073].
Thus the claim limits the total amount of resin (A) to claimed amount rather than the amount of the reactive group as a portion of resin (A). The Examiner suggests amending the claim to recite the supported limitation. As the claim is presently written, it contains new matter. The claim should be amended accordingly.
Claim Rejections - 35 USC § 103
Claims 1-2 and 5-8 are rejected under 35 U.S.C. 103 as being obvious over 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]. Note that “energy beam” is defined in the present specification to be inclusive of UV light, see paragraph [0042].
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 specified range of from 1-39 parts by mass based on 100 parts of the acrylic resin (A). 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.
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 a styrene-based monomer as claimed.
Regarding claim 8, Lu teaches forming the adhesive composition onto a carrier or release liner, see p. 3, [0036].
Claims 1-5, 7, 8, and 17-20 are rejected under 35 U.S.C. 103 as being obvious over Niwa (U.S. Pub. 2020/0208026).
Regarding claim 1, Niwa describes a pressure sensitive adhesive composition with reduced dependence on fossil-fuel based materials while comprising an acrylic pressure-sensitive adhesive. See abstract. The acrylic polymer is described at p. 2-3, [0028] et seq. The adhesive is active energy ray-curable, see p. 2, [0025] and definition at p. 2, [0024]. UV radiation is used to cure the polymer at p. 8, [0090]. This reads on acrylic resin (A). Note that “energy beam” is defined in the present specification to be inclusive of UV light, see paragraph [0042].
The adhesive also includes one or more tackifiers, see p. 10, [0103]. Suitable tackifiers include vinyl-aromatic hydrocarbon resins such as styrene or alpha-methyl styrene, see p. 11, [0108]. This reads on resin (B1). Other suitable resins include rosin-based tackifier resins which may be hydrogenated, see p. 10, [0104] which reads on resin (B3), and/or terpene-based tackifier resins which may be modified by phenol and/or hydrogenation, see p. 10, [0105] which reads on resin (B2).
The total amount of tackifier in the adhesive composition is from 5 parts to 100 parts by weight of the acrylic polymer, and most preferably from 25 to 35 parts by weight based on 100 parts by weight of the acrylic polymer, see p. 11, [0112]. Thus the total amount of (B1), (B2), and (B3) is preferably within the 25-35 parts by weight range, allowing for the individual amounts of (B1), (B2) and/or (B3) to be within the claimed ranges of 1-40 or 1-39 parts by weight as claimed.
As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claims 2-5, The total amount of tackifier in the adhesive composition is from 5 parts to 100 parts by weight of the acrylic polymer, and most preferably from 25 to 35 parts by weight based on 100 parts by weight of the acrylic polymer, see p. 11, [0112]. Thus the total amount of (B1), (B2), and (B3) is preferably within the 25-35 parts by weight range, allowing for the individual amounts of (B1), (B2) and/or (B3) to be within the claimed ranges of 1-40 or 1-39 parts by weight as claimed.
Two or more of these tackifiers may be used in combination, see p. 10, [0103].
Regarding claim 7, suitable aromatic hydrocarbon tackifier resins include polymers of vinyl-group containing aromatic hydrocarbons such as styrene, see p. 11, [0108]. This is inclusive of styrene homopolymers.
Regarding claim 8, Niwa taches forming the adhesive composition on a substrate or release liner, see p. 12, [0124-0125] and p. 13, [0130].
Regarding claims 17 and 18, Note: the Examiner has considered the claimed amount of acrylic resin to refer to the amount of crosslinkable functional group-containing monomer in the acrylic resin (A) rather than the total amount of acrylic resin (A) in the adhesive composition.
Niwa teaches that the acrylic resin may include 1 wt. % or more and 8 wt. % or less of a carboxy-group containing monomer, see p. 6, [0070] and [0072]. This is within the range of 0.1 to 5 wt. % as in claim 17 and from 0.2 to 3.0 wt. % as in claim 18.
Niwa further teaches that the total amount of tackifier in the adhesive composition is from 5 parts to 100 parts by weight of the acrylic polymer, and most preferably from 25 to 35 parts by weight based on 100 parts by weight of the acrylic polymer, see p. 11, [0112]. Thus the total amount of (B1), (B2), and (B3) is preferably within the 25-35 parts by weight range, allowing for the individual amounts of (B1), (B2) and/or (B3) to be within the claimed ranges of 20-40 parts by weight as claimed in claim 18.
Furthermore, this allows for the amount of the styrene-based resin (B1) to be 90 wt. % or more of the total amount of tackifier as in claim 18.
Regarding claim 19, Niwa teaches that the tackifier has a softening point of preferably 105°C or higher and 120°C or lower, see p. 11, [0111].
Regarding claim 20, Niwa teaches that polymers of styrene are a suitable material for the tackifier resin, see p. 11, [0108].
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 08 July 2026 regarding the 35 U.S.C. § 102 rejection of claims 1, 2, and 5-8 of record over Lu have been carefully considered but are deemed unpersuasive. The Examiner has considered the remarks in regards to the present 35 U.S.C. § 103 rejection over Lu.
Applicant admits that Lu teaches both a rosin-based tackifier and alpha-methylstyrene resin as tackifiers but notes that the examples of Lu use only a single tackifier (the rosin-based tackifier FORAL 85). Based on this, applicant believes there is no motivation to arrive at the claims by using a combination of tackifiers in the recited amounts.
The Examiner is not persuaded. Lu teaches various tackifiers at p. 2, [0027], and as such it would have been obvious to have used two or more of the disclosed tackifiers in combination within the tackifier amounts disclosed in Lu, namely up to 40 wt. % of the adhesive, see p. 2, [0028].
As for applicant’s argument that the claimed invention exhibits superior results compared to adhesives using a single tackifier, the Examiner is not persuaded. As an initial matter, the Examiner notes that applicant has not alleged unexpected results. MPEP § 716.02 describes the requirements to rebut a prima facie case of obviousness by relying upon unexpected results. In particular, MPEP § 716.02(d) notes that the unexpected results must be commensurate in scope with the claimed invention. To establish criticality of a claimed range, applicant should compare a sufficient number of tests both inside and outside the claimed ranges to show the criticality of the claimed range. See In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960); MPEP § 716.02(d)(II).
In the instant case, the data provided is not commensurate in scope with the claims. The examples use a specific energy beam crosslinkable acrylic resin (A), namely acResin A204UV from BASF having a benzophenone structure in a side chain. Claim 1 does not require such a resin, merely an acrylic resin having energy beam crosslinkability, which does not specify a benzophenone group or its quantity. As to the tackifiers, the claims specify using from 1-40 parts by mass of the styrene based resin tackifier (B1) while Examples 2-4 use only 20 or 30 parts by weight of the styrene based resin (B1). Furthermore, while the claim allows for 1-39 parts by mass of resin (B2) and/or (B3), the noted examples use only 10 or 20 parts by mass of resin (B2) or (B3). The only examples outside of this range use only a single tackifier resin, see Examples 1 and 5 and comparative examples 1-5.
As the evidence of unexpected results is not commensurate in scope with the claims, the evidence of nonobviousness is insufficient to overcome the prima facie case of obviousness.
Accordingly, Lu is still relied upon for a 35 U.S.C. § 103 rejection.
Conclusion
All claims are rejected.
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 extension fee 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 Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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