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 .
This Office action is in response to the amendment filed 8/25/2026. Claims 4-9 and 11 are amended; and claims 1-14 are currently pending in the application.
Election/Restrictions
Applicant’s election without traverse of group I, drawn to claims 1, 7, 9 and 11-13, in the reply filed on 8/25/2026 is acknowledged.
Claim 2-6, 8, 10 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 8/25/2026.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 9 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura et al (WO 2020/162245 A1).
It is noted that WO 2020/162245 A1 is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claim 1, Nakamura et al teach in example 3-5, a polymer formed from monomer mixture comprising BA (i.e., butyl acrylate), 2-EHA (i.e., 2-ethylhexyl acrylate) (i.e., both read on alkyl (meth)acrylate in present claim 1), AA (i.e., acrylic acid and reads on polar monomer in present claim 1) and monomer B-1 obtained in production example 2-1 (paragraph 0105). See example 2-1, wherein the monomer B-1 is a reaction product of 2-acryloyloxyethyl isocyanate and monool (paragraph 099). The monomer B-1 is a compound 3 obtained by reacting compound 3a with compound 3b (paragraph 030). Compound 3 is represented by formula:
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(see original document as published) wherein R11 is a hydrogen atom or methyl group, R12 is an alkylene group having 2 to 4 carbon atoms, R13 represents an alkyl group having 1 to 20 carbon atoms, “b” is preferably an integer of 1 to 4; and “c” is preferably an integer of 20 to 600 (paragraph 031) which reads on the polyether macromer of formula I, wherein R1 is hydrogen or methyl, R2 = alkylene having 1 to 4 carbon atoms, X1 = -O- and Q1 is a polyether group in present claim 1. The curable composition preferably contains a crosslinking agent (paragraph 071) which reads on the crosslinking agent in present claim 1. Adhesive layer is made of the cured product (paragraph 083). The composition, of Nakamura et al, is an adhesive is implicit in the formation of an adhesive layer when cured (i.e., reads on adhesive composition in present claim 1).
Regarding claims 9 and 11-12, Nakamura et al teach that pressure sensitive adhesive sheet can be obtained by applying the curable composition on a first release film (paragraph 083) which reads on composition is a pressure-sensitive adhesive in present claim 9, and article comprising a substrate and an adhesive composition positioned adjacent to the substrate in present claim 11; and a one-sided adhesive in present claim 12.
Regarding claim 13, Nakamura et al teach that laminate includes an adhesive layer and is used as a flexible member in a flexible display panel (paragraph 085) which reads on article is an electronic device incorporating the adhesive composition in present claim 13.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al (WO 2020/162245 A1).
The discussion with respect to Nakamura et al in paragraph 7 above is incorporated here by reference.
Nakamura et al fail to disclose in a single embodiment a polymer comprising polyether macromer having the presently claimed weight average molecular weight.
However, Nakamura et al in the general disclosure teach that monomer B-1 can be represented by formula:
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(see original document as published) wherein R11 is a hydrogen atom or methyl group, R12 is an alkylene group having 2 to 4 carbon atoms, R13 represents an alkyl group having 1 to 20 carbon atoms, “b” is preferably an integer of 1 to 4; and “c” is preferably an integer of 20 to 600 (paragraph 031). It is noted that when b = 1, c = 20 to 600, molecular weight of the monomer B-1 is calculated to about 760 to about 18,000 Daltons (i.e., overlaps with the weight average molecular weight of polyether macromer in present claim 7. Case law holds that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), See MPEP § 2144.04. Therefore, in light of the teachings in general disclosure of Nakamura et al and case law, it would have been obvious to one skilled in art prior to the filing of present application, to have used monomer B-1 (i.e., polyether macromer) having molecular weight in overlapping ranges in preparing the polymer, in Nakamura et al, absent evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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