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 1-12 in the reply filed on November 13, 2025 is acknowledged. The traversal is on the ground(s) that there would be no burden in search and examination of inventions of Group I and Group II. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I and II 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 as set forth on pages 3-4 of the previous Office Action.
The requirement is still deemed proper and is therefore made FINAL.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 13,2025.
Information Disclosure Statement
The listing of references in the specification (e.g. see page 2, lines 3-5) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The information disclosure statement filed on December 27, 2023 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
The IDS lists a document (see Cite No 2) under NPL, which is not in English. Applicant has not provided a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of this document. not in the English language.
Specification
The disclosure is objected to because of the following informalities: Page 24 of the specification recites monomers “ECHMA”, ‘BA”, and “MA” but does not list full name of these monomers.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: specification fails to provide proper antecedent basis for claim 10. Given that claim 10 is part of original claims, applicant can amend the specification to provide proper antecedent basis without introducing a new matter in the specification.
Appropriate correction is required.
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 1-12 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 “at least one reactive component, especially preferably an epoxy resin”, and “one or more foaming agents, especially preferably hollow spheres”. The recitation “especially preferably” renders claim indefinite, because, it is unclear whether the epoxy resin and the hollow spheres are positively required. For claim interpretation, epoxy resin and hollow spheres are considered as optional.
Further, as to claim 1,it is respectfully submitted that applicant can replace the recitation “especially preferably an epoxy resin” with “wherein the at least one reactive component optionally includes an epoxy resin”. Further, applicant can replace the recitation “especially preferably hollow spheres” with “wherein the at least one or more foaming agents optionally include hollow spheres”.
Further, as to claim 1, this claim recites “at least one polymer at in total more than 60.0% by weight, based on the total weight of the reactive adhesive”. There is a lack of antecedent basis with respect to the recitation “the reactive adhesive”. For claim interpretation, the first outer reactive adhesive or the second outer reactive adhesive includes 60.0 % by weight of at least one polymer.
As to claim 6, this claim recites components “at least one epoxy resin” “at least one photoinitiator”, and “one or more foaming agents”, and “at least one polymer”. It is unclear whether these components are additional or further refers to the components ((i) to (iv)) recited in parent claim 1. Furthermore, as to claim recitation “at least one polymer at in total more than 60.0% by weight, based on the total weight of the reactive adhesive”. There is a lack of antecedent basis with respect to the recitation “the reactive adhesive. See the rejection of claim 1 previously.
As to claim 7, this claim recites “each of the reactive adhesives”. There is a lack of antecedent basis with respect to this limitation in the claim. Further, claim 7 recites “UV initiator”. It is unclear whether this UV initiator is same as the photoinitiator of parent claim 1 or additional initiator.
As to claim 8, this claim recites “the reactive adhesives”. There is a lack of antecedent basis with respect to this limitation in the claim.
As to claim 9, this claim recites “independently of one another, one or both reactive adhesives each comprise…” It is unclear what is meant by the recitation “independently of one another” if both reactive adhesives comprise the solid and liquid epoxy resins recited in the claim. Further, as to the claim recitation “one or both reactive adhesives”. It is unclear whether this recitation refers to “a first outer reactive adhesive” and “second outer reactive adhesive”.
As to claim 10, this claim recites “independently of one another, both reactive adhesives each comprise…”. It is unclear what is meant by the recitation “independently of one another” if both reactive adhesives comprise poly(meth)acrylate of claim10.
Further, as to the claim 10 recitation “both reactive adhesives each comprise”, it is unclear whether this recitation refers to “a first outer reactive adhesive” and “second outer reactive adhesive”.
Further, as to claim 10, this claim recites “the parent monomer composition”. There is a lack of antecedent basis with respect to this limitation in the claim. Applicant can replace the recitation “the parent monomer composition of the poly(meth)acrylate comprises one or more monomers which contain at least one cyclic ether group” with the recitation “wherein the at least one poly(meth)acrylate comprises one or more monomers which contain at least one cyclic ether group”.
As to claim 11, this claim recites “independently of one another, one or both reactive adhesives are syntactically foamed.” It is unclear what is meant by the recitation “independently of one another” if both reactive adhesives are syntactically foamed. Further, it is unclear whether the recitation “one or both reactive adhesives” refers to “a first outer reactive adhesive” and “second outer reactive adhesive”.
As to claim 12, this claim recites “independently of one another, one or both reactive adhesives comprise a multiplicity of expanded microballoons.” It is unclear what is meant by the recitation “independently of one another” if both reactive adhesives comprise expanded microballoons. Further, it is unclear whether the recitation “one or both reactive adhesives” refers to “a first outer reactive adhesive” and “second outer reactive adhesive”.
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 1-5, 7, 8, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Burmeister et al. (WO 2017207119 A1; US 20200325362 A1 is relied upon as equivalent document in the rejection) in view of Dollase et al. (US 20150037559 A1) and as evidence by Koyama et al. (US 5234792).
As to claim 1, Burmeister discloses a pressure-sensitive adhesive (PSA) strip (reactive adhesive tape) comprising an inner layer F of a film carrier (foil), a first layer SK1 (first outer reactive adhesive) formed of self-adhesive composition based on a foamed acrylate composition, and a second layer SK2 (second outer reactive adhesive) formed of self-adhesive composition based on a foamed acrylate composition (abstract, 00048-0051).
Further, as to claim 1, Burmeister discloses that the self-adhesives further include epoxy crosslinkers (at least one reactive component) (0088, 0129, 0166-0167), photoinitiator (at least one photoinitiator) (0130), hollow beads (foaming agent such as hollow spheres) to form syntactically foamed adhesive (0008, and 0215), and polyacrylate polymer (at least one polymer) (0072).
Further as to claim 1, both adhesives SK1 and SK2 are crosslinked (0064, 0073, 0087). As such, a person having ordinary skill in the art would recognize that the adhesives SK1 and SK2 of Burmeister are reactive adhesive. Given that the adhesives of Burmeister are reactive, the PSA strip of Burmeister is a reactive adhesive tape as claimed.
As to claim 1, the difference between the claimed invention and the prior art of Burmeister is that Burmeister is silent as to disclosing the amount of polymer as claimed (60.0 wt% or more).
Dollase discloses a PSA having a high bond strength (0012). The PSA of Dollase comprises 30-65 wt% based on the total weight of the adhesive, of at least one poly(meth)acrylate (0013). The claimed range of at least one polymer of more than 60.0 wt% overlaps or lies within the range disclosed by Dollase such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
Burmeister discloses PSA comprising polyacrylate polymer (0072) but does not explicitly disclose its amount as claimed. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the polyacrylate of Burmeister in the amount disclosed by Dollase, which renders obvious the claimed amount of polymer, motivated by the desire to form the PSA of Burmeister.
As to claims 2 and 3, Burmeister as set forth previously discloses polyacrylate polymer (0072), which suggests claimed “poly(meth)acrylates”. The examiner submits that a person having ordinary skill in the art would recognize that “poly(meth)acrylate” encompasses polyacrylate and polymethacrylate.
As to claim 4 and 5, Burmeister discloses that the film carrier is PET (0238).
As to claim 7, Burmeister discloses epoxy crosslinkers (epoxy resin) (0088, 0129, 0166-0167). Further, Burmeister discloses photoinitiator (0130). Therefore, a person having ordinary skill in the art would recognize that each reactive adhesive of Burmeister would include epoxy resin and UV initiator, which is same.
As to claim 8, Burmeister discloses epoxycyclohexyl carboxylate as polyfunctional epoxide crosslinker (0167). A person having ordinary skill in the art would recognize that the aforementioned crosslinker meets claimed cycloaliphatic epoxy resin.
As to claim 10, Burmeister discloses that the polyacrylate includes acrylate and/or methacrylate and/or olefinically unsaturated monomers (iii) (0079). Further, Burmeister discloses tetrahydrofurfuryl acrylate monomer as an example of monomer (iii) (0086 and 0087). A person having ordinary skill in the art would recognize that tetrahydrofurfuryl acrylate contains a cyclic ether group (see column 30, lines 30-35 of Koyama “Note that any cyclic ether compounds such as tetrahydrofurfuryl acrylate…”).
As to claim 11, Burmeister discloses that the adhesives are syntactically foamed (0007-0008 and 0235).
As to claim 12, Burmeister discloses that the adhesive comprises expanded microballoons (0219).
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Burmeister et al. (WO 2017207119 A1; US 20200325362 A1 is relied upon as equivalent document in the rejection) in view of Dollase et al. (US 20150037559 A1) and as evidence by Koyama et al. (US 5234792) as applied to claim 1 above, and further in view of Yang et al. (WO 2020240343 A1: US 20220251432 A1 is relied upon as equivalent document in the rejection).
As to claim 6 (ii)-(iv) limitations, Burmeister as modified by Dollase as set forth previously discloses these limitations.
Burmeister is silent as to disclosing 18 wt% to 60 wt% of epoxy resin (claim 6(i)) and claim 9. .
Yang discloses a curable PSA and adhesive tape (abstract). The curable PSA of Yang includes 30-65 parts by weight of reactive polyacrylate, 30-50 parts by weight of a liquid epoxy resin, 5-20 parts by weight of solid epoxy resin, 0.3-5 parts by weight of a hydroxyl containing compound, and 0.02-3 parts of a photoinitiator (0007).
As to claim 6, Yang discloses adhesive comprising 50 parts by weight of CSA 9005L, 40 parts by weight of liquid epoxy resin (YD-128), 10 parts by weight of solid epoxy resin (NEPS901), 1 part by weight of V2070, and 1 part by weight of 1176 (Example E1, Table 1 and Table 2). As such, wt% of at least one epoxy resin disclosed by Yang is 43.5 wt% (calculated as (40/(50+40+10+1+1)) * 100 = 43.5 wt%), which is within the claimed range of 18 wt%-60 wt%.
As to claim 9, Yang discloses that when the epoxy resin component is a mixture of the liquid epoxy resin and the solid epoxy resin, and the amount of the liquid epoxy resin in the composition is 30-50 parts by weight, preferably 30-40 parts by weight, and the amount of the solid epoxy resin is 5-20 parts by weight, preferably 10-20 parts by weight, warping can be effectively prevented by virtue of a synergistic effect of the two epoxy resins without obviously reducing the bonding strength (0066). Further, Yang discloses that, when the epoxy resin component consists of only the solid epoxy resin, the bonding strength of the cured pressure-sensitive adhesive is lower; when the epoxy resin component consists of only the liquid epoxy resin, although the bonding strength of the cured pressure-sensitive adhesive may be higher, the problem of warping will occur (0067). Moreover, Yang discloses that when the total amount of the epoxy resin component is overly small, the bonding strength of the cured pressure-sensitive adhesive is poor. When the total amount of the epoxy resin component is overly great, the toughness of the cured pressure-sensitive adhesive is not good. That is to say, the cured pressure-sensitive adhesive is brittle (0068).
As to the claimed ratio of the liquid to solid epoxy resin, a person having ordinary skill in the art would recognize that for 10 parts by weight of a solid epoxy resin and 30 parts by weight of a liquid epoxy resin disclosed by Yang above (0066), the ratio of liquid epoxy resin to solid epoxy resin of 3:1 in Yang meets claimed ratio.
As to claims 6 and 9, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a solid and a liquid epoxy resins of Yang and use it in the adhesives of Burmeister, motivated by the desire to form the adhesive tape having suitable bond strength and resistance to warping.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 December 11, 2025