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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 2, 4, 6, 9, 10, 13, 15, 16, 18, 20, 22, 23, 27, 28, 32, and 33 in the reply filed on November 14, 2025 is acknowledged. The traversal is on the ground(s) that Rachwal fails to disclose a cured polymerizable ionic liquid. This is not found persuasive because, the groups of inventions I and II as set forth by the previous examiner in the Office action mailed on September 16, 2025 still do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features. Even though the inventions of these groups require the technical feature of the article of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art under 35 USC 103 over Akamatsu et al. (US 20180265750 A1) in view of Lewandowski et al. (US 8383721 B2) as set forth in the current Office action.
The requirement is still deemed proper and is therefore made FINAL.
Claims 34-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 (election) requirement in the reply filed on November 14, 2025.
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.
Claims 1, 2, 4, 6, 9, 10, 13, 15, 16, 18, 20, 22, 23, 27, 28, 32, and 33 are 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.
As to claim 1, this claim recites “cured polymerizable ionic liquid”. This recitation is indefinite in view of the specification. The examiner submits that it is unclear what is meant by “cured polymerizable”. The examiner submits that “cured” encompasses a material that is polymerized. Accordingly, it is unclear what is “cured polymerizable” as relates to the ionic liquid. For purpose of examination, if prior art discloses the ionic liquid recited in claim 1, it will be considered to be “cured polymerizable ionic liquid”.
Further, as to claim 1, this claim recites “wherein the effort required to separate the first component from the second component as measured by work of adhesion per surface area, is reduced by application of a DC electric potential across the adhesive composition”. This recitation is indefinite, because it is unclear what is the value of “DC electric potential”. Without setting forth specific voltage, the meets and bounds of recitation “DC electric potential” are unclear.
Further, as to claim 1, this claim recites “R3 is H or CH3, preferably H”. The recitation “preferably H” is indefinite, because it is unclear whether R3 is positively required to be H or optional. The examiner respectfully submits that applicant should delete “preferably H”.
Further, as to claim 1, this claim recites “R8 is a (hetero)hydrocarbyl group which may be substituted at the 2-, 4- or 5-position”. The recitation “may be substituted” is indefinite, because it is unclear whether R8 is positively substituted. The examiner submits that the recitation “may be substituted” should be replaced with “optionally substituted”.
As to claim 15, this claim recites “cured first polymerizable ionic liquid” and “cured second polymerizable ionic liquid”. These recitations are indefinite, because it is unclear what is meant by cured polymerizable ionic liquid. See claim 1 above.
Further, as to claim 15, this claim recites R3 is H or CH3, preferably H”. The recitation “preferably H” is indefinite, because it is unclear whether R3 is positively required to be H or optional. The examiner respectfully submits that applicant should delete “preferably H”.
Further, as to claim 15, this claim recites “R8 is a (hetero)hydrocarbyl group which may be substituted at the 2-, 4- or 5-position”. The recitation “may be substituted” is indefinite, because it is unclear whether R8 is positively substituted. The examiner submits that the recitation “may be substituted” should be replaced with “optionally substituted”.
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.
Claims 1, 2, 4, 6, 10, 13, 15,16,18,20,22, 23, 27, 28, 32, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Akamatsu et al. (US 20180265750 A1) in view of Lewandowski et al. (US 8383721 B2).
As to claim 1, Akamatsu discloses a technique for joining adherends to each other with a double-sided adhesive sheet (adhesive composition) and technique for separating the adherends from each other by applying a voltage to generate potential difference (abstract and 0001).
Further, as to claim 1, Akamatsu discloses a joined body (article) comprising an adherend Y1 having conductivity (a first component having a first electrically conductive surface) (0077 and Figure 3), a double-sided adhesive sheet containing an adhesive layer 11 containing a polymer and an electrolyte (Figure 1, 0044), a conductive substrate 30 (Figure 1 and 0071), and another adhesive layer 21 (Figure 1, 0071), and a conductive or non-conductive adherend Y2 (second component having a second surface) (Figure 3, 0077). Further, Akamatsu discloses that the electrolyte contained in the adhesive layer is ionic liquid, including imidazolium-based cation (0057 and 0059).
As to claim 1, the difference between the claimed invention and the prior art of Akamatsu is that Akamatsu is silent as to disclosing the cured polymerizable ionic liquid, wherein the polymerizable ionic liquid comprises a polymerizable anion and a cation corresponding to the conjugate acid of the imidazole compound of Formula I.
Lewandowski discloses polymerizable ionic liquid compositions that are useful in adhesive (column 1, lines 59-60). Lewandowski further discloses claimed cured polymerizable ionic liquid comprises a polymerizable anion and a cation corresponding to the conjugate acid of the imidazole compound of Formula I reproduced below (column 2, lines 5-25).
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Lewandowski further discloses that the ionic liquids are excellent solvents for both organic and inorganic materials, having high polarity, high thermal stability, high refractive indices, high ionic conductivity, and non-flammability. Further, according to Lewandowski, ionic liquid has potential ability to be recycled, and have been promoted as environmentally safe or “green” solvents to replace conventional organic solvents (VOcs) (column 1, lines 35-55).
Akamatsu as set forth previously desires ionic liquid in the adhesive layer. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use an adhesive composition comprising a cured polymerizable ionic liquid as the adhesive layer in Akamatsu, motivated by the desire to join the first and the second components with the adhesive composition containing the ionic liquid that has high polarity, high thermal stability, high refractive indices, high ionic conductivity, and non-flammability.
As to claim 1, Akamatsu does not explicitly disclose the claimed property “wherein the effort required to separate the first component from the second component as measured by work of adhesion per surface area, is reduced by application of a DC electrical potential across the adhesion composition”. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Akamatsu as modified by Lewandowski renders obvious claimed article. Moreover, Akamatsu discloses that a voltage is applied to the first adhesive layer containing electrolyte (ionic liquid) via the conductive adherend and the conduction substrate. Further, Akamatsu discloses that when the voltage is applied in this manner, a potential difference in the thickness direction of the adhesive is generated, and the composition of a surface of the adhesive layer changes. Accordingly, the adhesive force of the adhesive face with respect to the conductive adherend and/or conductive substrate is lowered (0011). Therefore, it would be reasonable to presume that the aforementioned property would inherently be present in the invention of Akamatsu.
As to claim 2, Lewandowski discloses that each of the R1, R2, and R3 is H, w is 0, and Z is an ester (read as -C(O)-O-R by the examiner) with R being a hydrocarbyl group (column 2, lines 10-20). Further, Preparatory Example 1 of Lewandowski disclosing the following:
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As to claim 4, Lewandowski discloses claimed polymerizable anions (see claim 8).
As to claim 6, this claim recites that the monomer component is optional (not required). Further, Lewandowski does not explicitly mention the amount of the cation and the anion as claimed. However, Lewandowski as set forth previously discloses the claimed polymerizable ionic liquid. Absent, new and unexpected results, a person having ordinary skill in the art would have found it obvious to arrive at the claimed amounts of cation and anion, motivated by the desire to form an adhesive containing a cured polymerizable ionic liquid that has high polarity, high thermal stability, high refractive indices, high ionic conductivity, and non-flammability.
As to claim 10, Akamatsu discloses that the adherend Y2 can be conductive or non-conductive (0077). Therefore, a person having ordinary skill in the art would recognize that the second surface of the second component in Akamatsu is electrically conductive surface.
As to claim 13, Akamatsu does not disclose whether the composition of the first electrically conductive surface is different from the composition of the second electrically conductive surface. However, Akamatsu as set forth previously discloses that the adherends Y1 and Y2 are conductive (0077). Therefore, a person having ordinary skill in the art would find it obvious to select same or different conductive adherends such that the composition of the first electrically conductive surface is same or different from the composition of the second electrically conductive surface, motivated by the desire to form a joined body of Akamatsu using same or different adherends.
As to claims 15, 18, 20, and 22, Akamatsu discloses a double-sided adhesive sheet X1 containing an adhesive layer 21, a conductive substrate 30 (carrier/carrier is an electrically conductive carrier), and an adhesive layer 11 in this order (Figure 1,0044). Further, Akamatsu discloses that the adhesive layer 21 is in contact with a conductive or nonconductive adherend Y2 (Figure 3, 0077), and the adhesive 11 is in contact with a conductive adherend Y1 (Figure 3, 0077). Akamatsu further discloses that the adhesive layer 11 and the adhesive layer 21 include electrolyte such as ionic liquid (0045,0059, 0013).
Akamatsu is silent as to disclosing a cured first polymerizable ionic liquid and a cured second polymerizable ionic liquid as claimed.
The invention of Lewandowski is previously disclosed with respect to a cured polymerizable ionic liquid and incorporated here by reference.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a first adhesive composition and the second adhesive composition, each containing a cured polymerizable ionic liquid disclosed by Lewandowski, motivated by the desire to join the first and the second component with a double sided adhesive sheet containing the ionic liquid that has high polarity, high thermal stability, high refractive indices, high ionic conductivity, and non-flammability.
As to claims 16 and 23, Akamatsu discloses that the conductive substrate 30 has a laminate structure including a substrate 31 and a conductive layer 32 (0071). Further, Akamatsu discloses that the substrate is fiber based or paper based (0071). Accordingly, Akamatsu suggests porous material (e.g. paper).
As to claim 27, Akamatsu further discloses a first outer adhesive 23 on a side of the first component Y3 opposite the adhesive composition and a second outer adhesive 22 on a side of the second componentY5 opposite the adhesive composition (Figure 7, 0092, Figure 9, 0101).
As to claim 28, Akamatsu does not explicitly disclose whether the adhesives is PSA. However, Akamatsu discloses that the adhesive layers 22 and 23 contain a polymer exhibiting adhesiveness (0094-0095). Further, Akamatsu discloses that the polymer for the adhesive layers 22 and 23 is same as the polymer for the adhesive layer 11 (0094-0095). Moreover, Akamatsu discloses acrylic polymer as a component for the adhesive layer 11 (0047), which would be recognized by one of ordinary skill in the art as PSA. Therefore, a person having ordinary skill in the art would recognize that Akamatsu suggests a PSA or it would have been obvious to use a PSA so as to adhere the first and the second components with e.g. a figure pressure.
As to claim 32, Akamatsu does not explicitly disclose whether the first or the second component is recyclable. However, a person having ordinary skill in the art would have found it obvious to use recyclable component, motivated by the desire to avoid disposal of the component in a landfill and thereby help the environment.
As to claim 33, Akamatsu does not explicitly disclose claimed property “wherein the effort required to separate the first component from the second component, as measured by the % change in work of adhesive per surface area at 0 V and -25 V for 100 seconds, is at least 20%”. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Akamatsu as modified by Lewandowski renders obvious claimed article. Moreover, Akamatsu discloses that a voltage is applied to the first adhesive layer containing electrolyte (ionic liquid) via the conductive adherend and the conduction substrate. Further, Akamatsu discloses that when the voltage is applied in this manner, a potential difference in the thickness direction of the adhesive is generated, and the composition of a surface of the adhesive layer changes. Accordingly, the adhesive force of the adhesive face with respect to the conductive adherend and/or conductive substrate is lowered (0011). Therefore, it would be reasonable to presume that the aforementioned property would inherently be present in the invention of Akamatsu.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Akamatsu et al. (US 20180265750 A1) in view of Lewandowski et al. (US 8383721 B2) as applied to claim 1 above, and further in view of Heucher et al. (US 20180340097 A1).
Akamatsu is silent as to disclosing claim 9.
Heucher discloses a method for forming a reversibly bonded substrate using a hot melt adhesive composition, which at least partially loses its adhesiveness upon application of an electrical current and thus allows debonding of substrates that have been bonded using the adhesive (0001). Heucher further discloses a coating of a non-conductive substrate (component comprising a nonconductive material) with a conductive ink before applying the hot melt adhesive of the invention (0012).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide an electrically conductive coating on a surface of a first component comprising a first nonconductive material, motivated by the desire to use such component in an article that requires adhesion and then separation using a conductive adhesive composition.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hedegaard et al. (US 20240253329 A1) discloses articles containing adhesive exhibiting on-demand debonding behavior, Moughton et al. (US 20240263044 A1) discloses electrically debondable UV activated adhesives, Maher et al. (US 20250084198 A1) discloses composite adhesives, Moughton et al. (US 20250215278 A1) discloses composite adhesive comprising polymeric nanoparticles.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 January 19, 2026