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 .
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.
Claim(s) 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Shoji (JP 2021031594) in view of Yoon et al. (US 2021/0130656) and Hayakawa (JP 2016121293).
Regarding claim 1, Shoji teaches an active energy ray-curable release adhesive composition (paragraph [0001]) comprising acrylic resin, urethane (meth)acrylate, and photopolymerization initiator (paragraph [0011]), wherein the acrylic resin is made from monomers including alkyl (meth)acrylate and isobornyl (meth)acrylate (paragraphs [0028] and [0030]). The acrylic resin has weight average molecular weight of 10,000-2,500,000 (paragraph [0043]). The composition also comprises monofunctional monomer (paragraph [0096]).
Shoji fails to teach acrylic resin including a first monomer.
However, Yoon et al. teaches a multilayer adhesive film comprising a first and/or second outer adhesive layer made from a polymer of a first composition containing a first alkyl group-containing (meth)acrylate-based monomer (paragraph [0009]) which may be one or more moomers selected from the group consisting of ethylhexyl (meth)acrylate monomers, isobornyl (meth)acrylate monomers, hydroxyethyl (meth)acrylate monomers, and benzophenone (meth)acrylate monomers (paragraph [0028]).
It would have been obvious to one of ordinary skill in the art to include a first monomer including a benzophenone (meth)acrylate monomer in the acrylic resin of Shoji in order to enhance step absorbency (Yoon et al., paragraphs [0029] and [0030]).
Shoji fails to teach monofunctional (meth)acrylate monomer.
However, Hayakawa discloses adhesive composition comprising urethane (meth)acrylate and monofunctional (meth)acrylate compound (paragraph [0010]).
It would have been obvious to one of ordinary skill in the art to use monofunctional (meth)acrylate compound as the monofunctional monomer of Shoji in order to impart good adhesion and excellent solvent and chemical resistance (paragraph [0010]).
Regarding claim 2, Shoji teaches 10-200 parts urethane (meth)acrylate per 100 parts acrylic resin (paragraph [0012]), i.e. 50-1000 parts acrylic resin per 100 parts urethane (meth)acrylate.
Regarding claim 4, Shoji teaches wherein the urethane (meth)acrylate has weight average molecular weight of 500-10,000 g/mol (paragraph [0073]).
Regarding claims 5 and 6, given that Shoji in view of Yoon and Hayakawa teaches resin composition identical to that presently claimed, the resin composition would necessarily have a peel strength as presently claimed, absent evidence to the contrary.
Allowable Subject Matter
Claims 3 and 7 are allowed.
Claims 8 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Applicant amended claims 3 and 7 into independent form.
Applicant argues that the Office must establish that Yoon is either in the same field of endeavor as the claimed invention or reasonably pertinent to the problem faced by the inventor.
However, both Yoon and Shoji are drawn to acrylate adhesives, therefore, the motivation of Yoon would be pertinent to the invention of Shoji. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)
Applicant argues that Yoon attributes step absorbency/reworkability to its multilayer structure and tailored glass transition temperatures of different layer resins, not to inclusion of a benzophenone-functional monomer in a Shoji-type release PSA resin.
However, given that Shoji discloses an acrylic resin made from alkyl and isobornyl acrylate monomers and Yoon discloses an acrylic resin made from alkyl, isobornyl, and benzophenone acrylate monomers, the improved absorbency which is the result of the glass transition temperature of the acrylic resin of Yoon would be applicable to the acrylic resin of Shoji.
Applicant argues that regarding claims 5 and 6 the Office’s inherency position is unsupported and the claimed invention is directed to a different post-cure result.
However, the peel strength disclosed by Shoji is different from the peel strength disclosed of the claimed invention and used in the present invention. Both the units disclosed by Shoji and method used are different than those disclosed by the present invention. Given that Shoji in view of Yoon and Hayakawa teaches resin composition identical to that presently claimed, the resin composition would necessarily have a peel strength as presently claimed, absent evidence to the contrary.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
Prosecution Insights