DETAILED ACTION
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.
Election/Restrictions
Applicant's election with traverse of Group I and the species of copolymer of example 2 in the reply filed on 07 April 2026 is acknowledged. The traversal is on the ground(s) that no unity of invention issue was raised during the international phase, and a different standard cannot be applied during the national phase. This is not found persuasive because unity of invention is the standard for both phases, and as put forth in the restriction requirement, there is no unity of invention due to the lack of a sharded special technical feature. The requirement is still deemed proper and is therefore made FINAL.
Claim 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species of copolymer, there being no allowable generic or linking claim. Claim 4 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US Patent Application Publication 2013/0126079).
Lee et al. discloses acrylate based adhesive compositions for optical use that have a copolymer prepared from an alkyl (meth)acrylate with the alkyl having 16 to 22 carbon atoms, a polar monomer, and a crosslinking agent (abstract).
The alkyl (meth)acrylate monomer with the alkyl having 16 to 22 carbon atoms can be cetyl (meth)acrylate (claim 3), with cetyl methacrylate being employed in 5 wt% in an example (example 2). The polar monomer can be 2-hydroxyethey (meth)acrylate (claim 3), with 2-hydroxyethyl acrylate being employed in 10 wt% in an example (example 2). This example also has 3 wt% of a crosslinking agent.
As for the amounts, independent instant claim 1 recites a limitation to the relative amounts of the first two monomers. The example disclosed by Lee et al. does not read upon this range (the ratio is 1:2, or 0.5). However, Lee et al. discloses the amount of the alkyl (methacrylate) and polar monomer present are from about 1 to about 10 wt% and from about 1 to about 20 wt%, respectively (abstract). And such amounts provide for a range of relative amounts which overlap the instantly recited limitation. And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claim 5 further limits the monomers present, and the above cited monomers read upon these limitations.
Claims 1, 2, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US Patent Application Publication 2013/0126079) in view of PCT Patent Application Publication WO 2020/066589. The above cited WIPO patent publication is not in English, and as such the English-language equivalent document Gotanda et al. (US Patent Application Publication 2022/0035076) will be cited to support the rationale of this rejection.
Lee et al. discloses acrylate based adhesive compositions for optical use that have a copolymer prepared from an alkyl (meth)acrylate with the alkyl having 16 to 22 carbon atoms, a polar monomer, and a crosslinking agent (abstract).
The alkyl (meth)acrylate monomer with the alkyl having 16 to 22 carbon atoms can be cetyl (meth)acrylate (claim 3), with cetyl methacrylate being employed in 5 wt% in an example (example 2). The polar monomer can be 2-hydroxyethey (meth)acrylate (claim 3), with 2-hydroxyethyl acrylate being employed in 10 wt% in an example (example 2). This example also has 3 wt% of a crosslinking agent.
Lee et al. discloses the inclusion of a crosslinking agent, but does not disclose the specific crosslinking agents recited by instant claim 2 which is the elected species of crosslinking agent.
Gotanda et al. discloses crosslinking agents useful for preparing acrylate polymers (abstract). Useful crosslinking agents taught include silicone methacrylate of formula (3) (paragraph [45]), which is the elected species of crosslinking agent.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have used the crosslinking agent taught by Gotanda et al. as the crosslinking agent in the acrylate polymer disclosed by Lee et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
As for the amounts, independent instant claim 1 recites a limitation to the relative amounts of the first two monomers. The example disclosed by Lee et al. does not read upon this range (the ratio is 1:2, or 0.5). However, Lee et al. discloses the amount of the alkyl (methacrylate) and polar monomer present are from about 1 to about 10 wt% and from about 1 to about 20 wt%, respectively (abstract). And such amounts provide for a range of relative amounts which overlap the instantly recited limitation. And in cases involving overlapping ranges, where the instantly claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claims 2 and 5 further limit the monomers present, and the above cited monomers read upon these limitations.
Conclusion
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/Brian Gulledge/ Primary Examiner, Art Unit 1699
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