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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 8/242026, with respect to the rejection of claim 8 under 35 U.S.C. 112(a) as set forth in paragraph 4 of the action mailed 5/28/2026, have been fully considered and are persuasive. The rejection of claim 8 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 8/242026, with respect to the rejection of claims 1-11 under 35 U.S.C. 112(b) as set forth in paragraph 6 of the action mailed 5/28/2026, have been fully considered and are persuasive. The rejection of claims 1-11 has been withdrawn. However, see the below-postured rejection(s) under 35 U.S.C. 112.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, paragraph 00174 of the specification as originally filed demonstrates a range of Mw for an acrylic polymer (singular), which said range spans the Mw presently claimed for both the low-molecular-weight acrylic polymer and the low-molecular-weight acrylic polymer. Paragraph(s) 0009, 0036, 0096 and 00137 discloses an upper limit for the low-molecular-weight acrylic polymer of 500,000. The inventive examples beginning at paragraph 00245 disclose polymer A with a Mw of 110,000, polymer B with a Mw of 250,000, polymer C with a Mw of 530,000, polymer D with a Mw of 700,000 and polymer E with a Mw of 1,000,000, with Synthesis Examples 11-16 disclosing Polymer A as crosslinked to form Polymers 11-16.
Table 2 demonstrates adhesive films 1-5 respectively comprising Polymers A-E; that is, adhesive films 1-5 comprises ONLY a single polymer, with adhesive films 1-3 comprising ONLY a polymer claimed as the low-molecular-weight acrylic polymer and adhesive films 4-5 comprising ONLY a polymer claimed as the high-molecular-weight acrylic polymer. None of the inventive examples appear to demonstrate and adhesive film comprising BOTH the low-molecular-weight acrylic polymer and the high-molecular-weight acrylic polymer with the respective MW values of current claim 1.
Thus, there appears to be no support for a low-molecular-weight acrylic polymer having a second Mw of 530,000 when the high-molecular-weight acrylic polymer has a first Mw of at least 700,000.
Claims 1-11 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.
Regarding claims 1 and 7, it is unclear from the claim limitation, and in light of the specification, what is, and is not, being claimed. The presently recited stress relaxation of 0.20 to 0.70 appear to be further limiting the adhesive film following the second-UV cure and comprising BOTH the low and high molecular weight acrylic polymers. However, only adhesive films 15-16, which comprise a single high-molecular-weight acrylic polymer, demonstrate a degree of stress relaxation (0.206 and 0.250) within the claimed range or 0.2 to 0.70.
Also, paragraphs 0017 and 0049 of the specification appear to attribute the presently claimed degree of stress relaxation to the adhesive film following a first-curing.
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 7-9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al. (US 2019/0106608 A1) in view of Park et al. (US 2010/0129569 A1).
Regarding claim(s) 1, 3-4, 8 and 11, Jozuka teaches a pressure-sensitive adhesive (PSA) layer having a storage modulus at 25 ℃ of 0.17 to 0.6 MPa (para 0035), and comprising an acrylic base polymer towards transparency (optically clear adhesive (OCA), current claim 11) (para 0047) comprising a primary alky (alkyl (meth)acrylate monomer and a copolymerizable secondary monomer (para 0048); the former of which is selected from, inter alia, 2-ethylhexyl (meth)acrylate (para 0049-0055) and the latter of which is selected from, inter alia, 2-hydroxyethyl (meth)acrylate (para 0061).
Jozuka also teaches that PSA composition comprises:
a photopolymerization initiator towards UV polymerization (para 0088, 0093, 0095);
a chain transfer agent (molecular weight regulator) towards adjusting the weight-average molecular weight (Mw), number-average molecular weight (Mn) and the molecular weight distribution (Mw/Mn) (para 0085);
crosslinking agents such as polyfunctional crosslinking agents such as, inter alia, 1,6-hexanediol di(meth)acrylate (para 0072-0074), which is identical to the crosslinking agent represented by Formula 3 (current claim 8), which said crosslinking is provided via ultraviolet (UV) rays (second-UV cured adhesive film).
Jozuka does not specify that the PSA layer demonstrates a degree of stress relaxation of 0.20 to 0.70, and that the acrylic base polymer comprises a high-molecular-weight acrylic polymer having a first Mw of at least 700,000 and a low-molecular-weight acrylic polymer having a second Mw of at most 530,000, with the high-molecular-weight acrylic polymer present in an amount of at least 30 parts by weight based 100 parts by weight of the total amount of the high-molecular-weight acrylic polymer and the low-molecular-weight acrylic polymer (current claim 1); or that the first Mw is 700,000 to 3,000,000 (current claim 3) and that the second Mw is 100,000 to 300,000 (current claim 4).
However, Jozuka does teach that the acrylic base polymer has a Mw of 700,000 or higher, and a dispersity (Mw/Mn) of 8 to 40 which provides both high-molecular-weight polymers (high-molecular-weight acrylic polymer having a first Mw) and low-molecular-weight polymers (low-molecular-weight acrylic polymer having a second Mw), the latter of which manifests light-pressure initial adhesion (good adherend wetting) and the former of which demonstrates deformation resistance. Jozuka further instructs that the Mw, Mn and Mw/Mn are adjusted via polymerization conditions, chain transfer agent(s), etc. (para 0084-0085).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the high-molecular-weight acrylic and low-molecular-weight acrylic polymers of Jozuka with the presently claimed Mw and in the presently claimed proportions for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards the PSA layer of Jozuka demonstrating a balance of light-pressure initial adhesion/adherend wetting and deformation resistance based on the properties required of the prior art’s intended application as in the present invention.
In addition, Park teaches acrylic PSA compositions (title), and further instructs one skilled in the art that adjusting the stress relaxation reduces light leakage (para 0001, 0016). Park also teaches that the modulus and the viscosity (proportional molecular weight) of a polymer affect the stress relaxation (para 0014) while too much cohesion reduces the stress relaxation (para 0036).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the PSA layer of Jozuka with the presently claimed degree of stress relaxation (analogous to the deformation/cohesion) under the presently claimed conditions based on the properties (e.g., prevention of light leakage) required of the prior art’s intended application as in the present invention.
Regarding claim(s) 2 and 9, the Applicant’s attention is respectfully directed to the rejections under 35 U.S.C. 112 set forth above. The presently claimed invention is directed to an adhesive film as pre-ambled in at least current claim 1, formed from the recited compositional elements and cured, and demonstrating a final degree of stress relaxation of 0.20 to 0.70, and not to a method for producing the adhesive film.
Thus, any intermediate products, such as the recited first-UV cured adhesive film demonstrating the properties recited in current claims 2 and 9, are not required of the second-UV cured adhesive (i.e., the final adhesive film), and thus need not be taught by the prior art in order to teach or render obvious the presently claimed invention.
Regarding claim 5, Jozuka teaches that the PSA layer has a peel strength (adhesive strength) of 8 N/20 mm or more (para 0015), or approximately 1142 gf/28mm or more.
Regarding claim 7, as noted above, Jozuka teaches both high-molecular-weight polymers and low-molecular-weight polymers comprising a primary alky (meth)acrylate monomer and a copolymerizable secondary monomer, the former of which is selected from, inter alia, 2-ethylhexyl (meth)acrylate (first compound represented by Formula 1) and the latter of which is selected from, inter alia, 2-hydroxyethyl (meth)acrylate (second compound represented by Formula 2).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jozuka et al. (US 2019/0106608 A1) in view of Park et al. (US 2010/0129569 A1).
Regarding claim 10, as noted above, Jozuka also teaches that PSA composition comprises
a photopolymerization initiator towards UV polymerization, a chain transfer agent towards adjusting the weight-average molecular weight (Mw), number-average molecular weight (Mn) and the molecular weight distribution (Mw/Mn), and crosslinking agents.
Jozuka also teaches that the polyfunctional crosslinking agents are present at 3% by weight or less (para 0072-0074), which overlaps that presently claimed (0.01 to 0.5 parts by weight), towards adjusting the storage modulus in balance with other adhesive properties (para 0072-0074), with the photopolymerization initiators present at 0.001 to 5 parts by weight (para 0103), which overlaps that presently claimed (0.01 to 0.4 parts by weight).
In addition, while the Jozuka discusses the motivation including the amounts of initiators and chain transfer agents is directed at the (meth)acrylic oligomer, Jozuka does further instruct that these components are included in proportions based on the oligomer’s (or polymer’s) desired molecular weight (para 0165).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the PSA layer of Jozuka with the presently claimed proportions of the crosslinking agent(s), the photopolymerization initiator and the chain transfer agents based on the molecular weights of the acrylic base polymers, and the storage modulus and the cohesion of the PSA layer, required of the prior art’s intended application as in the present invention.
Claim(s) 1-3, 5-6 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huh et al. (US 2014/0160406 A1) in view of Park et al. (US 2010/0129569 A1).
Regarding claim(s) 1, 3, 5-6 and 8, Huh teaches a PSA layer (adhesive film) having first and second surfaces with different peel strengths to alkali-free glass (para 0007), which said second surface has a peel strength of 250 to 650 gf/25 mm (or 280 to 728 gf/28 mm), which overlaps that presently claimed (at least 300 gf/28 mm, current claim 5, 300 to 500 gf/28 mm, current claim 6). The PSA layer is formed from a UV-curable PSA composition (para 0109) comprising an acryl polymer (acrylic polymer) having a Mw of 500,000 to 2,500,000, which overlaps that presently claimed (at least 700,000, 700,000 to 3,000,000, current claim 3), towards a balance of durability and coatability (para 0112).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The PSA further comprises a multifunctional acrylate crosslinked via UV radiation (UV-cured adhesive film), which said multifunctional acrylate is selected from, inter alia, 1,6-hexanediol di(meth)acrylate, which is identical to the crosslinking agent represented by Formula 3 (current claim 8) (para 0137-0140) and a photoinitiator (para 0147).
While Huh does not specify that the PSA layer demonstrates a degree of stress relaxation of 0.20 to 0.70, Huh does teach that this property is adjusted via adjusting the gel fraction (para 0161). Also, the invention of Huh is also concerned withe light leakage, which is controlled via adjusting the tensile modulus, crosslinking, etc. (abstract, para 0107, 0110, 0120, 0127, 0141-0142).
In addition, Park teaches acrylic PSA compositions (title), and further instructs one skilled in the art that adjusting the stress relaxation reduces light leakage (para 0001, 0016). Park also teaches that the modulus and the viscosity (proportional molecular weight) of a polymer affect the stress relaxation (para 0014) while too much cohesion reduces the stress relaxation (para 0036).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the PSA layer of Jozuka with the presently claimed degree of stress relaxation (analogous to the deformation/cohesion) under the presently claimed conditions based on the properties (e.g., prevention of light leakage) required of the prior art’s intended application as in the present invention.
Regarding claim(s) 2 and 9, the Applicant’s attention is respectfully directed to the rejections under 35 U.S.C. 112 set forth above. The presently claimed invention is directed to an adhesive film as pre-ambled in at least current claim 1, formed from the recited compositional elements and cured and demonstrating a final degree of stress relaxation of 0.20 to 0.70, and not to a method for producing the adhesive film.
Thus, any intermediate products, such as the recited first-UV cured adhesive film demonstrating the properties recited in current claims 2 and 9, are not required of the second-UV cured adhesive (i.e., the final adhesive film), and thus need not be taught by the prior art in order to teach or render obvious the presently claimed invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 8/24/2026, with respect to the rejections of claims 1, 3-5, 7-8 and 11 over Jozuka et al. under 35 U.S.C. 103; claims 2, 6 and 9 over Jozuka et al. in view of Park et al. under 35 U.S.C. 103; and claim 10 over Jozuka et al. under 35 U.S.C. 103 as set forth in paragraphs 9-11 of the action mailed 5/28/2026, have been fully considered but they are not persuasive.
As acknowledged by the Applicant, the presently claimed invention now requires a specific “curing history” toward achieving the final product of the recited “adhesive film” in the pre-amble. The Examiner acknowledges the Applicant’s assertions in regards to the alleged advantages provided by the invention as claimed such as the increase in degree of relaxation, decreased creep, the inhibition of moisture penetration and reduced/prevented delamination/deformation.
However, the Examiner respectfully reminds that Applicant the claimed invention is directed to a product, and not to the method employed to achieve said product, including the process directed to the first-UV curing. Indeed, as recited, the presently claimed invention of at least current claim 1 is taught or rendered obvious over the cited prior art given by the combination of Jozuka/Park set forth above regardless of the intermediate steps(s) leading up to the final adhesive film following the second-UV curing step.
Turning now to the Applicant’s allegations with respect to Jozuka’s indifference to stress relaxation of its disclosed PSA layer, the Examiner respectfully reminds the Applicant that,
“[T]he discovery of a previously unappreciated property of a prior art composition, or of
a scientific explanation for the prior art’s functioning, does not render the old
composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use,
new function or unknown property which is inherently present in the prior art does not
necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,
433 (CCPA 1977).
In addition, as noted in Park, stress relaxation is a consideration towards reducing light leakage, which would be reasonably considered by the skilled artisan in regards to the application of the adhesives of Jozuka in optical devices such as smartphones (see para 0003-0005 of Jozuka). Park also instructs that the modulus of a polymer affects the stress relaxation, whereas too much cohesion reduces the stress relaxation (see para 0014, 0036). Thus, Park clearly instructs the skilled artisan as to the means and motivation for providing the PSA layer of Jozuka with the presently claimed degree of stress relaxation of the recited final adhesive film product.
While Park discusses stress relaxation as dependent on several factors, Park specifically teaches that crosslinking is understood in the art to affect stress relaxation properties (para 0011-0012, 0062). Also, the Examiner respectfully submits Park was employed to remedy Jozuka in regards to stress relaxation and the means and motivation to adjust the property in adhesives. No attempt has been made in the previous or current action to interchange the disclosures of Park and Jozuka, but simply to demonstrate what would be obvious to one skilled in the art in consideration of stress relaxation properties and its consideration y for the PSA layer of Jozuka.
Further, it is noted that the "test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the primary
reference... Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ
871,881 (CCPA 1981) and that "combining the teachings of references does not involve
an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224,
226 (CCPA).
That is, Park is not disqualified as a remedying reference simply because Park is not identical to Jozuka in regards to all the compositional elements and all the considerations that went into the Park invention (e.g., entanglement).
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 10/2/2026
