DETAILED ACTION
This is an Office action based on application number 18/564,846 filed 29 November 2023, which is a national stage entry of PCT/JP2022/021976 filed 30 May 2022, which claims priority to JP2021-093190 filed 2 June 2021.
Amendments to the claims, filed 28 November 2023, have been entered into the above-identified application.
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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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 1, 5, 7-12, and 14-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higashi et al. (US Patent Application Publication No. US 2014/0065417 A1) (US 417).
Regarding instant claims 1, 5 and 15:
US 417 discloses a pressure-sensitive adhesive comprising a (meth)acryl-based polymer obtained by polymerization of a monomer component including 19 to 99.5% by weight of alkyl (meth)acrylate having a branched alkyl group of 10 to 24 carbon atoms at an ester end (Claim 1).
US 417 discloses that said alkyl (meth)acrylate having a branched alkyl group of 10 to 24 carbon atoms at an ester end is capable of forming a homopolymer having a glass transition temperature (Tg) of -80 to 0° C (paragraph [0035]).
It is noted that the amount of the alkyl (meth)acrylate having a branched alkyl group of 10 to 24 carbon atoms at an ester end and the glass transition temperature of the monomer overlap the ranges recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
US 417 further discloses that ultraviolet (UV) light is used in the process of forming the pressure-sensitive adhesive layer (paragraph [0095]). US 417 further discloses an embodiment wherein the ultraviolet rays form the pressure-sensitive adhesive layer through curing (paragraph [0145]).
US 417 further discloses that the thickness of the pressure-sensitive adhesive layer is typically about 1 to about 400 μm (paragraph [0101]), which includes the thickness of 150 μm recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
US 417 further discloses that the pressure-sensitive adhesive layer has a gel fraction of 20 to 98% by weight (paragraph [0024]), which overlaps the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
US 417 further discloses that he polymer that composes the pressure-sensitive adhesive has a glass transition temperature (Tg) of -70 to 0° C such that an adhesive having good heat resistance is obtained (paragraph [0056]). The disclosed range overlaps the range of the glass transition temperature of the cured product; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
US 417 further discloses that the (meth)acryl-based polymer contains a polyfunctional monomer for controlling the cohesive strength of the pressure-sensitive adhesive, wherein examples of the polyfunctional monomers are inclusive of trimethylolpropane tri(meth)acrylate, pentaerythritol tri(meth)acrylate, dipentaerythritol hexa(meth)acrylate, 1,6-hexanediol di(meth)acrylate, (poly)ethylene glycol di(meth)acrylate (paragraph [0054]).
These polyfunctional monomers are substantially identical to some of the specific examples of crosslinking components disclosed in Applicant’s original disclosure (see Specification at paragraphs [0026-0027]). Therefore, the polyfunctional monomers of US 417 meet the claimed crosslinking component.
US 417 further discloses that a photopolymerization initiator is added to the monomer component (paragraph [0066]), which meets the claimed UV curing agent (see Applicant’s original disclosure at paragraph [0029] of the Specification wherein Applicant discloses that the UV curing agent is preferably a photoradical polymerization initiator).
As to the claimed reaction percentage of the cured product and the reaction percentage of the surfaces (i.e., recited in both Claims 1 and 5), it is the Examiner’s position that given the disclosure that the pressure-sensitive adhesive is formed by a curing reaction, it is within the ambit of one ordinary skill in the art to perform a full cure (i.e., 100% reaction percentage, which lies within both ranges recited by the claim) to produce the adhesive.
As to the claimed “without sealing an upper surface of the applied composition, with UV light having a wavelength of 315 nm to 480 nm at an irradiance of 90 mW/cm2 and a dose of 1,350 mJ/cm2 in an atmospheric environment”, these limitations are product-by-process limitations. Although US 417 may not explicitly disclose these limitations, it is noted that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
Regarding instant claim 7:
Each of the polyfunctional monomers disclosed by US 417, cited above, comprise at least a (meth)acrylate group.
Regarding instant claim 8:
Each of the polyfunctional monomers disclosed by US 417, cited above, comprise at least a (meth)acrylate group.
Further, each of said polyfunctional monomers is substantially identical to some of those crosslinking components disclosed in Applicant’s original disclosure. Therefore, one of ordinary skill in the art would expect those substantially identical monomers have the same properties, i.e., a homopolymer of said polyfunctional monomers has a gel fraction of 80% or higher, as required by the instant claim.
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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 9:
Each of the polyfunctional monomers disclosed by US 417, cited above, comprise at least a (meth)acrylate group.
US 417 further discloses that the polyfunctional monomer is present in an amount of 3% by weight or less (paragraph [0055]), which overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Further, each of said polyfunctional monomers is substantially identical to some of those crosslinking components disclosed in Applicant’s original disclosure. Therefore, one of ordinary skill in the art would expect those substantially identical monomers have the same properties, i.e., having a viscosity of at 25°C of 10,000 cps or higher.
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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claims 10-11:
US 417 further discloses that the content of the photopolymerization initiator (i.e., the claimed UV curing agent) is not particularly limited, but is preferably 0.01 to 5 parts by weight based on 100 parts by total weight of the monomer component (paragraph [0071]), which overlaps the claimed ranges; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claims 12 and 14
US 417 further discloses that the (meth)acryl-based polymer contains other copolymerizable monomers inclusive of N-acryloylmorpholine, N-vinylpyrrolidone, and n-vinyl-ε-caprolactam (paragraph [0051]), wherein each is a nitrogen-containing monomer. Further, n-vinyl-ε-caprolactam is a nitrogen-containing monomer having a lactam structure.
Regarding instant claims 16 and 17:
The limitations “UV-curable composition for printing” and “used for screen printing or ink-jet printing” are intended use limitations.
While US 417 may not explicitly disclose the intended use limitations, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In the instant case, US 417 discloses all the compositional limitations required by the UV-curable composition, as cited in the rejection of claim 1, and is considered capable of performing the intended use, absent evidence to the contrary.
Regarding instant claims 18-19:
US 417 further discloses that the pressure-sensitive adhesive may be formed by a method of applying the pressure-sensitive adhesive to a support (paragraph [0005], wherein the pressure-sensitive adhesive is formed by ultraviolet irradiation of the monomer component (paragraph [0105]).
Regarding instant claim 20:
Reference is made to FIG. 1 of US 417, reproduced below:
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FIG. 1 shows a specific example of the use of the pressure-sensitive layer wherein capacitance touch panel <1> includes decorative panel <11>, pressure-sensitive adhesive layers <12>, ITO films <13> and hard coated film <14> (paragraph [0014]). The combinations illustrated read on the claimed laminates.
Regarding instant claim 21:
US 417 discloses an embodiment wherein the pressure-sensitive adhesive is applied directly to a support to form the pressure-sensitive adhesive layer (paragraph [0118]).
US 417 further discloses an embodiment wherein the pressure-sensitive adhesive is formed by ultraviolet irradiation of the monomer component (paragraph [0105]).
Therefore, there must exist an embodiment encompassed by US 417 wherein the monomer composition of US 417 is applied on an optical member and exposed to light to form an adhesive layer as required by the claim.
FIG. 1 illustrates that two adherends are bonded by a pressure-sensitive adhesive layer to form a laminate; therefore, there must exist an embodiment wherein after the adhesive layer is formed on substrate and exposed to light to form an adhesive layer, a second adherend is bonded to the adhesive layer to form a laminate.
Regarding instant claim 22:
US 417 further discloses that various methods may be used to apply the pressure-sensitive adhesive layer inclusive of spray coating, gravure coating, and reverse coating (paragraph [0106]).
Claims 2-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 417 in view of Rehmer et al. (US Patent No. 5,180,756) (US 756).
Regarding instant claims 2-4:
US 417 discloses a pressure-sensitive adhesive comprising a (meth)acryl-based polymer, as cited in the rejection of claim 1 above.
US 417 further discloses that the pressure-sensitive adhesive composition comprises additives inclusive of a tackifier (paragraph [0100]).
US 417 does not explicitly disclose a nonreactive component having no reactivity with the curing component.
However, US 756 discloses agents curable by ultraviolet radiation (Title) comprising copolymers containing as principal monomers, (meth)acrylates of alkanols (col 3, lines 65-68).
US 756 teaches that when the agents are used as adhesives, conventional tackifiers inclusive of rosins and terpene/phenol resins are added in amounts of from 0 to 50% by weight (col. 9, lines 7-22)
In their original disclosure, Applicant characterizes that examples of the claimed nonreactive components are inclusive of rosin resin and terpene resin tackifiers (see Specification at page 17, paragraphs [0042-0045]). Therefore, the tackifiers inclusive of rosins and terpene/phenol resins are construed to meet the claimed nonreactive component having no reactivity with the curing component.
The amount of tackifier disclosed by US 756 overlaps the range recited by claim 3; “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art combination before him or her, to include rosin or terpene/phenol resin tackifiers of US 756 to the composition of US 417. The motivation for doing so would have been that US 756 provides a concrete example of those tackifiers desired by US 417; furthermore, tackifiers are known additives for UV curable agents used as adhesive compositions.
Therefore, it would have been obvious to combine US 756 with US 417 to obtain the invention as specified by the instant claims.
Regarding instant claim 6:
US 417 discloses the (meth)acrylate monomer required by claim 1, above.
US 417 discloses polyfunctional monomers that are crosslinking components that are substantially identical to the crosslinking components of Applicant’s invention as cited in the rejection of claim 1, above.
US 417 in view of US 756 discloses tackifiers that are substantially identical to the nonreactive components of Applicant’s invention as cited in the rejection of claim 2, above.
Therefore, the polyfunctional monomers of US 417 must have reactivity with the (meth)acrylate monomer and/or have reactivity with the (meth)acrylate monomer and the nonreactive component as required by the claims because all of the components are substantially identical to those of Applicant’s invention.
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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Claims 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 417 in view of Hirose et al. (US Patent Application Publication No. US 2012/0177901 A1) (US 901).
Regarding instant claim 13:
US 417 discloses the UV-curable composition comprising a nitrogen-containing monomer curing component as cited in the rejection of claims 1 and 12, above.
US 417 does not explicitly disclose the amount of said nitrogen-containing monomer.
However, US 901 discloses a pressure-sensitive adhesive composition composed of an acrylic polymer (paragraph [0016]).
US 901 further discloses that for the purpose of modifying cohesive force, heat resistance, and cross-linking property, the acrylic polymer contains a copolymerizable monomer inclusive of nitrogen-containing heterocyclic monomers and lactam monomers (paragraph [0021]).
US 901 further discloses that the amount of copolymerizable monomer is not particularly limited, but is usually contained in an amount within a range of 0.1 to 30% by mass based on the total mass of the monomer components (paragraph [0022]). Said amount overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to control the amount of the nitrogen-containing monomer of US 417 to the amount prescribed by US 901. The motivation for doing so would have been that US 901 provides a concrete amount of nitrogen-containing comonomers that is art recognized as providing benefits inclusive of modifying cohesive force, heat resistance, and cross-linking property.
Therefore, it would have been obvious to combine US 901 with US 417 to obtain the invention as specified by the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 11/06/2025
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788