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
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.
Claim(s) 1-8, 10-11, 18-19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Husemann et al. (US 2011/0318579).
Regarding claims 1, 3 and 5-7, Husemann discloses an optically transparent adhesive compound for bonding displays (0002, 0004, 0009, 0017, 0039) comprising acrylate containing copolymer (0011), 0 to 5% by weight of UV photoinitiator (0015) and up to 5% by weight of crosslinkers (0040), therefore it is noted that the acrylate copolymer is present in an amount of 90 to 100% by weight. Husemann discloses the copolymer comprising more than 50% by weight of n-octyl methacrylate, i.e. a linear alkyl methacrylate monomer (0015, 0028) and 0 to 30% by weight of hydroxypropyl acrylate, i.e. hydroxy group containing acrylate monomer (0014, 0015, 0032), wherein the adhesive has a haze of less than 5% and a transmission of at least 85% according to ASTM D1003 (0017). Given that Husemann discloses the same ASTM D1003 as presently claimed, it is clear that the haze and transmission of the adhesive of Husemann are measured at 400 nm to 800 nm.
In light of the overlap between the claimed adhesive and the adhesive disclosed by Husemann, it would have been obvious to one of ordinary skill in the art to use an adhesive that is both disclosed by Husemann and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 2, Husemann discloses the adhesive of claim 1, wherein given that acid monomer and photoacid can be 0 in the present claim, it is considered to be optional components.
Regarding claim 4, Husemann discloses the adhesive of claim 1, wherein acrylate monomer is a mixture of heptyl acrylate and octyl acrylate (0026-0028).
Regarding claim 8, Husemann discloses the adhesive of claim 1, wherein the copolymer comprises hydroxypropyl acrylate, i.e. 2-hydroxypropyl acrylate, (0014, 0015, 0032),
Regarding claim 10, Husemann discloses the adhesive of claim 1, wherein given that the monomer amount is 0 in the preset claim, it is considered to be optional.
Regarding claim 11, Husemann discloses an adhesive transfer tape (title) comprising adhesive of claim 1, wherein the tape has a release liner (0096) but is silent regarding the thickness.
Since the instant specification is silent to unexpected results, the specific thickness of the release liner is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of the liner, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of the liner in the transfer tape to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 18, Husemann discloses the optically transparent adhesive compound for bonding displays (0002, 0004, 0009, 0017, 0039) wherein the adhesive has a weight average molecular weight from 200,000 to 4,000,000 (0048).
Regarding claim 19, Husemann discloses the adhesive of claim 1, wherein given that the adhesive of Husemann is the same as claimed in present claim, it is clear that the adhesive of Husemann would inherently have the same property as presently claimed.
Regarding claim 21, Husemann discloses the adhesive of claim 1, wherein the copolymer of Husemann is silent regarding acid monomers, the acid monomer the copolymer of Husemann is considered to be 0.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Husemann et al. (US 2011/0318579) in view of Cho et al. (US 2014/0184053).
Regarding claim 9, Husemann discloses the adhesive of claim 1, but fails to disclose 10 to 70% by weight of butyl acrylate.
Cho discloses adhesive film and optical display (abstract) wherein the adhesive comprising acrylic copolymer comprising 40 wt% to 70 wt% of butyl acrylate to obtain excellent adhesion (0033).
It would have been obvious to one of ordinary skill in the art to use the butyl acrylate and its amount of Cho in the adhesive of Husemann acrylate to obtain excellent adhesion.
Claim(s) 9 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Husemann et al. (US 2011/0318579) in view of Kunihiro et al. (US 2021/0246341).
Regarding claim 20, Husemann discloses the adhesive of claim 1, but fails to disclose 10 to 70% by weight of butyl acrylate and 5 to 25% of lauryl acrylate.
Kunihiro discloses adhesive comprising acrylic copolymer (0020) comprising lauryl acrylate or butyl acrylate in an amount of 15 to 55 wt% to obtain adhesive strength.
It would have been obvious to one of ordinary skill in the art to use lauryl acrylate or butyl acrylate in an amount of 15 to 55 wt% of Kunihiro in the adhesive of Husemann to obtain adhesive strength.
Claim(s) 22-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Husemann et al. (US 2011/0318579) in view of Husemann et al. (US 2006/0205835).
Regarding claims 22-24, Husemann discloses an optically transparent adhesive compound for bonding displays (0002, 0004, 0009, 0017, 0039) comprising acrylate containing copolymer (0011), 0 to 5% by weight of UV photoinitiator (0015) and up to 5% by weight of crosslinkers (0040), therefore it is noted that the acrylate copolymer is present in an amount of 90 to 100% by weight. Husemann discloses the copolymer comprising more than 50% by weight of n-octyl acrylate (0015, 0028) and 0 to 30% by weight of hydroxypropyl acrylate (0014, 0015, 0032), wherein the adhesive has a haze of less than 5% and a transmission of at least 85% according to ASTM D1003 (0017). Given that the copolymer of Husemann is silent regarding acid monomers, the acid monomer the copolymer of Husemann is considered to be 0.
Husemann discloses hydroxypropyl acrylate but is silent with respect to 4-hydroxybutyl acrylate.
Husemann ‘835 discloses transparent acrylate adhesive (title) comprises equivalent and interchangeability of using hydroxypropyl acrylate with 4-hydroxybutyl acrylate (0015).
Given that Husemann ‘835 discloses the equivalence and interchangeability of using 4-hydroxybutyl acrylate as presently claimed with using hydroxypropyl acrylate as disclosed by Husemann, it would have been obvious to one of ordinary skill in the art to arrive at the present invention at taught by Husemann ‘835.
Further, given that Husemann discloses the same ASTM D1003 as presently claimed, it is clear that the haze and transmission of the adhesive of Husemann in view of Husemann ‘835 are measured at 400 nm to 800 nm.
Regarding claim 25, Husemann in view of Husemann ‘835 discloses the adhesive of claim 23, wherein given that butyl acrylate is optional, it is clear that when butyl acrylate is not present, it meets the present claim.
Regarding claim 26, Husemann in view of Husemann ‘835 discloses the adhesive of claim 1, wherein given that the copoloymer of Husemann in view of Husemann ‘835 containing octyl acrylate and 4-hydroxybutyl acrylate as explained above, it is clear that it meets the scope of present claim, i.e. consists of.
Regarding claims 27-29, Husemann in view of Husemann ‘835 discloses the adhesive of claim 23, wherein given that the adhesive of Husemann in view of Husemann ‘835 is the same as claimed in present claim, it is clear that the adhesive of Husemann in view of Husemann ‘835 would inherently have the same property as presently claimed.
Response to Arguments
Applicant's arguments filed 02/19/2026 have been fully considered but they are not persuasive.
Applicant argues that Husemann does not disclose using octyl methacrylate specifically in combination with hydroxypropyl acrylate. However, it is noted that the present claim 1 does not require octyl methacrylate and hydroxypropyl acrylate, rather claim 1 broadly recites linear alkyl acrylate with 6 to 10 carbon atoms and any hydroxy group containing acrylate monomers.
Applicant argues that Husemann examples discloses butyl acrylate and 2 ethylhexyl acrylate. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant argues that Husemann lists at least 18 different monomers for group a1 and 14 different functional monomers for group a2. However, the fact remains that Husemann does disclose the claimed monomers as explained above.
Applicant points to examples and argues that the monomers recited in claim 1 yields unexpected improved adhesion. However, it is noted that the data is not persuasive given that the data is not commensurate in scope with the scope of the present claim given that the examples discloses specific type and amounts of monomers while present claim broadly recites 15 to 95% by weight of linear alkyl acrylate with 6 to 10 carbon atoms and 5 to 30% by weight of hydroxy group containing acrylate monomers. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range.
Applicant argues that neither Cho nor Kunihiro cures the deficiencies in Husemann with respect to claim 1. However, note that while Cho and Kunihiro do not disclose all the features of the present claimed invention, Cho nor Kunihiro are used as teaching references, and therefore, it is not necessary for these secondary references to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather these references teach a certain concept, namely Cho discloses adhesive film and optical display wherein the adhesive comprising acrylic copolymer comprising 40 wt% to 70 wt% of butyl acrylate to obtain excellent adhesion, and Kunihiro discloses adhesive comprising acrylic copolymer comprising lauryl acrylate or butyl acrylate in an amount of 15 to 55 wt% to obtain adhesive strength in combination with the primary reference, discloses the presently claimed invention.
Regarding claim 21, applicant argues that all Husemann examples use a significant amount of acid monomer. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Regarding claim 23, applicant argues that Husemann does not disclose 4-hydroxybutyl acrylate as claimed. Examiner agreed with the applicant and newly added claim 23 is rejected under Husemann in view of Husemann ‘835.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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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.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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