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 of Group I, claims 1-9, in the reply filed on 10 December 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10 December 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 1-9 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. Specifically, claim 1 is directed to a “UV-curable adhesive composition” in the preamble, but then further claims a “cured product”. It is unclear if applicants are intending to claim the composition (a mixture of compounds prior to reaction) or a cured product (post polymerization and curing). Since the preamble of the claim is directed to the composition, and for purpose of examination, the Examiner is interpreting the claim to be the composition prior to reaction. As such, dependent claims 2-9 are also rejected.
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.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furusho et al. (JP 2016-204597), wherein the machine English translation is used for citation, in view of Kume et al. (WO 2012/133163), wherein the machine English translation is used for citation.
Regarding claims 1 and 2; Furusho et al. teaches a polymerizable composition using N-substituted (meth)acrylamides [09, 012] in an amount of 5-70% by weight [021], a photoinitiator, a monofunctional monomer, and polyfunctional monomer [022].
Furusho et al. fails to teach the composition further comprising a thermoplastic resin having no reactivity with the N-containing monomer or the monofunctional (meth)acrylate monomer. Kume et al. teaches an adhesive laminate comprising acrylic compounds and further comprising a thermoplastic resin additive [064]. Furusho et al. and Kume et al. are analogous art because they are both concerned with the same field of endeavor, namely pressure sensitive adhesive laminate compositions suitable for use in polarizing plates. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the thermoplastic resin as taught by Kume et al., to the composition of Furusho et al. and would have been motivated to do so in order to achieve increased durability, as is customary in the art.
The Examiner makes note that “a cured product being obtained by..” is a product by process limitation. 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)); see MPEP §2113.
Regarding claim 3; Furusho et al. teaches the composition further comprises antifoaming agents (defoamer) [060].
Regarding claim 4; Furusho et al. fails to explicitly teach wherein the cured product has a glass transition temperature of 20 to -30°C. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. glass transition temperature, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claim 5; Furusho et al. teaches the composition to be used for screen printing [061].
Regarding claims 6-9; Furusho et al. teaches an adhesive sheet comprising the composition as set forth above on a substrate, and further teaches an adhesive laminate [078, 087].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767