RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claims 1, 3, 10, 12, and 18, filed on 31 March 2026, have been entered in the above-identified application. Claims 2 and 15 have been cancelled by applicant. Claims 1, 3-14, and 16-20 are pending, of which claims 14, 16, and 17 remain withdrawn from consideration as described on page 3 of the Office Action mailed on 12 January 2026.
WITHDRAWN REJECTIONS
The 35 U.S.C. § 102 rejection of claims 1, 2, 8-11 and 18 over Yang (U.S. Pub. 2022/0251432), made of record on page 4, paragraph 9 of the office action mailed 12 January 2026 has been withdrawn due to Applicant’s amendment in the response filed 31 March 2026. In particular, Yang does not specify a polyethylene foam carrier as presently claimed.
The 35 U.S.C. § 103 rejection of claims 12-13 as over Yang and of claims 3-7 over Yang in view of Komatsuzaki (U.S. Pub. 2015/0050477), made of record on pages 7-10, paragraphs 13-14 of the office action mailed 12 January 2026 have been withdrawn due to Applicant’s amendment. Yang does not specify a polyethylene foam carrier as presently claimed.
The 35 U.S.C. § 103 rejection of claims 18-20 as over Schuh (U.S. Pub. 2019/0062606) made of record on page 11, paragraph 15 of the office action mailed 12 January 2026 has been withdrawn due to Applicant’s amendment. Schuh does not specify a polyethylene foam carrier as presently claimed.
NEW AND REPEATED 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 § 103
Claims 1, 3-13 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (U.S. Pub. 2022/0251432) in view of Iwasaki (U.S. Pat. 10,793,755).
Regarding claim 1, Yang describes a curable pressure-sensitive adhesive composition and adhesive tape used with electronic components. See abstract and p. 1, [0001]. In particular, Yang discloses a double-sided adhesive tape in Example 10 at p. 14, [0172] which is formed from an adhesive composition comprising 50 parts by weight of reactive polyacrylate, 40 parts by weight of a liquid epoxy resin, 10 parts by weight of a solid epoxy resin, 1 part by weight of a cationic photoinitiator, and 4 parts by weight of a polyol (total 105 parts by weight). Thus the polyacrylate represents 50/105 or about 47.6 wt. % of the adhesive, the combined epoxy components represent 50/105 or about 47.6 wt. % of the adhesive, and the photoinitiator represents 1/105 or about 0.95 wt. % of the adhesive composition. See Table 6 at p. 14. This composition was applied on two sides of a porous polypropylene foam carrier layer to obtain a double-sided pressure-sensitive foam adhesive tape, see p. 15, [0176]. The adhesives are curable with UV light as described at p. 15, [0177].
Regarding suitable carrier substrates, while Yang exemplifies a foamed polypropylene, Yang also discloses other materials as electrical insulating layers including other polyolefins such as polyethylene film, see p. 7, [0090] including foam layers, see p. 7, [0091]. However, Yang does not specify a polyethylene foam carrier layer as claimed.
Iwasaki describes an adhesive sheet and attached electronic device, see title and abstract. The adhesive includes an acrylic polymer, see col. 3, lines 57-62. The adhesive is formed on one or both sides of a foam substrate, see col. 9, lines 58-61 and col. 10, lines 5-9. Preferably the foam substrate is a polyethylene-based foamed resin substrate, although polypropylene foam substrates are also described, see col. 13, lines 53-67.
Iwasaki further teaches that the foam substrate has a thickness of 1,500 microns or less, preferably 500 microns or less with a lower limit of 50 microns. See col. 18, lines 4-10. This overlaps the claimed range of 150 to 550 microns.
As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Yang and Iwasaki are analogous because they are similar in structure and function, as each discloses pressure-sensitive adhesive sheets with acrylic-containing adhesive layers formed on polyolefin foam substrates.
It would have been obvious to one of ordinary skill in the art at the time of the invention to apply the adhesive of Yang onto a polyethylene foam substrate as disclosed in Iwasaki in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to substitute polyethylene foam for polypropylene foam as Iwasaki teaches that polyolefin foam substrate are suitable due to their desired properties including closed-cell structure and flowability to irregularities on the surface of an adherend, and a polyethylene foam in particular provides a uniform thickness and preferable flexibility. See Iwasaki at col. 13, lines 53-67. There is a reasonable expectation of success as polypropylene and polyethylene are each polyolefins.
Regarding claim 3, Yang discloses that suitable epoxy resins contain 2 or more epoxy groups, and that a cycloaliphatic epoxy resin is a suitable well-known epoxy resin. See p. 5, [0064]. Thus, a liquid cycloaliphatic diepoxy is disclosed as a suitable polymerizable epoxy compound of Yang.
Regarding claim 4, Iwasaki teaches that the foam substrate has an apparent density of from 0.08 to 0.7 g/cm3, most preferably 0.3 to 0.6 g/cm3 because the interlaminar strength, compressive strength, average bubble diameter, and other properties can be easily controlled within this density range. See col. 13, lines 36-48. This is equal to 300 to 600 kg/m3 and is within the claimed range.
Regarding claim 5, Iwasaki teaches that the foam substrate has a 25% compressive strength of preferably 20 kPa or more, most preferably from 120 to 700 kPa. See col. 12, lines 39-49. This overlaps the claimed range. Although the compressive strength is measured according to JIS K6767 rather than DIN 53577-1988-12 as claimed (see col. 12, lines 50-58), the tests appear to be similar as they measure the same property and reflect the difference in a Japanese standard test name compared to a European standard test name.
As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claim 6, Iwasaki teaches that the foam substate has a thickness of preferably 50 to 500 microns, see col. 18, lines 4-10. Using a 50-500 micron thick polyethylene foam substrate with an apparent density of from 0.3 to 0.6 g/cm3 (300-600 kg/m3) (see col. 13, lines 36-48) results in a foam carrier surface weight range of from 15 g/m2 to about 833 g/m2. For example, a 250 micron thick foam carrier with an apparent density of 0.5 g/cm3 (500 kg/m3) has a surface weight of 125 g/m2.
As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claim 7, Iwasaki teaches using a foam carrier substrate which is a closed-pore foam, see col. 13, lines 26-35.
Regarding claim 8, Example 8 of Yang uses 65 parts by weight of reactive polyacrylate, 30 parts of liquid epoxy resin, 5 parts of solid epoxy resin, 0.1 parts of epoxy functional silane coupling agent, 1 part of polyol, and 1 part of photoinitiator for a total of 102.1 weight parts. See Table 5 at p. 14 and also Table 6 on p. 14 for further explanation of the components used. Thus the amount of polyacrylate is 65/102.1 or about 63.7 wt. % of the curable adhesive layer.
Regarding claim 9, Yang teaches that the reactive acrylate monomer component is based on monofunctional acrylic compounds, see p. 4, [0055-0056]. Specific preferred monomers include butyl acrylate or methyl acrylate, see p. 4, [0059].
Regarding claim 10, Example 8 of Yang uses 65 parts by weight of reactive polyacrylate, 30 parts of liquid epoxy resin, 5 parts of solid epoxy resin, 0.1 parts of epoxy functional silane coupling agent, 1 part of polyol, and 1 part of photoinitiator for a total of 102.1 weight parts. See Table 5 at p. 14 and also Table 6 on p. 14 for further explanation of the components used. Thus the total amount of polymerizable epoxy compounds is 35/102.1 or about 34.3 wt. % of the curable adhesive layer and is slightly outside of the claimed range.
However, Yang also teaches other amounts of additives which allow for an amount of polymerizable epoxy compounds to be within the claimed range. For example, Yang teaches using from 0.3 to 5 parts by weight of the polyol component, see p. 6, [0072]. Table 6 on p. 14 gives an example which employs 4 parts by weight of polyol component.
Modifying Example 8 of Yang to include 4 parts by weight of polyol instead of 1 part by weight of polyol results in 35 parts by weight of epoxy components out of 105.1 total weight parts, which is 33.3 wt. % of epoxy compounds in the composition.
Note that in accordance with MPEP §2123 a rejection is proper over a prior art reference’s broad disclosure instead of merely preferred embodiments or examples because patents are relevant as prior art for all information they contain. In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804 (Fed. Cir. 1989).
Regarding claim 11, Yang teaches that the epoxy resins use molecules that contain 2 or more epoxy groups, see p. 5, [0064].
Regarding claim 12, the claimed limitation is a functional limitation of the adhesive element. Yang does not expressly state that the adhesive element is configured to permit mechanical separation of the cured bond along the carrier layer with a separating tool as claimed. However, Yang does describe various performance tests which measure the adhesive properties of the cured adhesive sheet, see p. 12, [0149-0151] which use the method of ASTM D3330 to obtain the peeling force of the cured adhesive tape. The adhesive tape is considered to be capable of mechanical separation along the carrier layer with a separating tool as claimed
Regarding claim 13, Yang further teaches that each adhesive layer thickness may be from 15-75 microns when dry, see p. 8, [0096]. Thus the total of the two adhesive layers may be from 30-150 microns. When comparing this thickness to that of the carrier layer which may be from 50-500 microns (see Iwasaki at col. 18, lines 4-10), the resulting thickness ratio may be as little as 0.06 (30 micron thick adhesive layers and 500 micron thick foamed substrate) or as much as 3.0 (150 micron thick adhesive layers and 50 micron thick foamed substrate). This overlaps the claimed range of 0.15 to 0.6. Calculating the thickness ratio using reasonable intermediate thickness values for the adhesive layers (100 microns thick total) and foamed carrier layer (250 microns thick) results in a thickness ratio of 0.4 which is within the claimed range.
Regarding claim 18, Yang describes a curable pressure-sensitive adhesive composition and adhesive tape used with electronic components. See abstract and p. 1, [0001]. In particular, Yang discloses a double-sided adhesive tape in Example 10 at p. 14, [0172] which is formed from an adhesive composition comprising 50 parts by weight of reactive polyacrylate, 40 parts by weight of a liquid epoxy resin, 10 parts by weight of a solid epoxy resin, 1 part by weight of a cationic photoinitiator, and 4 parts by weight of a polyol (total 105 parts by weight). Thus the polyacrylate represents 50/105 or about 47.6 wt. % of the adhesive, the combined epoxy components represent 50/105 or about 47.6 wt. % of the adhesive, and the photoinitiator represents 1/105 or about 0.95 wt. % of the adhesive composition. See Table 6 at p. 14. This composition was applied on two sides of a porous polypropylene foam carrier layer to obtain a double-sided pressure-sensitive foam adhesive tape, see p. 15, [0176]. The adhesives are curable with UV light as described at p. 15, [0177].
Regarding suitable carrier substrates, while Yang exemplifies a foamed polypropylene, Yang also discloses other materials as electrical insulating layers including other polyolefins such as polyethylene film, see p. 7, [0090] including foam layers, see p. 7, [0091]. However, Yang does not specify a polyethylene foam carrier layer as claimed.
Iwasaki describes an adhesive sheet and attached electronic device, see title and abstract. The adhesive includes an acrylic polymer, see col. 3, lines 57-62. The adhesive is formed on one or both sides of a foam substrate, see col. 9, lines 58-61 and col. 10, lines 5-9. Preferably the foam substrate is a polyethylene-based foamed resin substrate, although polypropylene foam substrates are also described, see col. 13, lines 53-67.
Regarding the limitation that the adhesive is configured to permit mechanical separation of a cured bond along the carrier layer with a separating tool, the claimed limitation is a functional limitation of the adhesive element. Yang does not expressly state that the adhesive element is configured to permit mechanical separation of the cured bond along the carrier layer with a separating tool as claimed. However, Yang does describe various performance tests which measure the adhesive properties of the cured adhesive sheet, see p. 12, [0149-0151] which use the method of ASTM D3330 to obtain the peeling force of the cured adhesive tape. The adhesive tape is considered to be capable of mechanical separation along the carrier layer with a separating tool as claimed
Yang and Iwasaki are analogous because they are similar in structure and function, as each discloses pressure-sensitive adhesive sheets with acrylic-containing adhesive layers formed on polyolefin foam substrates.
It would have been obvious to one of ordinary skill in the art at the time of the invention to apply the adhesive of Yang onto a polyethylene foam substrate as disclosed in Iwasaki in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to substitute polyethylene foam for polypropylene foam as Iwasaki teaches that polyolefin foam substrate are suitable due to their desired properties including closed-cell structure and flowability to irregularities on the surface of an adherend, and a polyethylene foam in particular provides a uniform thickness and preferable flexibility. See Iwasaki at col. 13, lines 53-67. There is a reasonable expectation of success as polypropylene and polyethylene are each polyolefins.
Regarding claim 19, Yang describes the polyacrylate component of the adhesive at p. 4-5 of the document. The base monomers are C1-C10 alkyl acrylate or C1-C10 alkyl methacrylate or C3-C8 cycloalkyl acrylate or C3-C8 cycloalkyl methacrylate or C6-C12 aryl acrylate, which are acrylic esters and methacrylate esters, see p. 4, [0058]. A comonomer having a reactive group is present in the amount of 1.5-30 wt. %, preferably 3-20 wt. % of the total amount of polyacrylate, see p. 4, [0060]. Thus the amount of acrylic ester or methacrylic ester monomers is the balance, or from 70-98.8 wt. % or preferably 80-97 wt. % of the acrylic monomers. This overlaps the claimed range.
Regarding claim 20, Iwasaki teaches that a tackifying resin may be included in the adhesive composition in the amount of 5 to 60 parts by mass based on 100 parts of the adhesive polymer, see col. 8, lines 50-56.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schuh (U.S. Pub. 2019/0062606) in view of Iwasaki (U.S. Pat. 10,793,755).
Regarding claim 18, Schuh describes a polymerizable adhesive composition and a double-sided adhesive article, see abstract and p. 1, [0001] and p. 4, [0050]. The adhesive may be on a foamed carrier base, see p. 6, [0081]. The adhesive composition is curable with a UV-activated photoinitiator, see p. 4, [0046]. The composition includes:
(a1) 35-90 wt. % of at least one (meth)acrylic ester such as 2-ethylhexyl acrylate, see p. 5, [0058] and [0071] and p. 11, [0159], reading on monomer x) as claimed. The example at p. 11, [0159] uses 35 kg of 2-ethylhexyl acrylate monomer out of 100 kg of monomer components on a solvent-free basis, which is 35 wt. %.
(a2) 5-30 wt. % of at least one olefinically unsaturated monomer having at least one cationically polymerizable functional group, see p. 5, [0059]. Preferred such (a2) monomers include glycidyl (meth)acrylate, see p. 5, [0074], which is a polymerizable epoxy compound and reads on monomer y) as claimed. The example at p. 11, [0159] uses 10 kg of 3,4-epoxycyclohexylmethyl methacrylate monomer out of 100 kg of monomer components on a solvent-free basis, which is 10 wt. %.
(a3), (a4), and (a5) described at p. 5, [0060-0062] are other components not excluded by the claim which is written in open-ended language using the term “comprising”, see MPEP § 2111.03.
A cationic photoinitiator is present in the composition in the amount of 0.01 to 2 parts by weight, preferably 0.1 to 1.5 parts by weight, based on 100 parts by weight of the polyacrylate and cationically polymerizable monomers, see p. 9, [0115]. Vazo 67 photoinitiator is used in the example at p. 1, [0159] in an amount within the claimed range. This reads on component z).
It would have been obvious to have disposed the adhesive composition of Schuh on both sides of a foam carrier as disclosed in Schuh to arrive at the claimed invention as a foam carrier, coated on one or both sides thereof is disclosed as a suitable bonding element of the invention, see, e.g., claim 11.
Schuh does not describe a polyethylene foamed carrier substrate.
Iwasaki describes an adhesive sheet and attached electronic device, see title and abstract. The adhesive includes an acrylic polymer, see col. 3, lines 57-62. The adhesive is formed on one or both sides of a foam substrate, see col. 9, lines 58-61 and col. 10, lines 5-9. Preferably the foam substrate is a polyethylene-based foamed resin substrate, although polypropylene foam substrates are also described, see col. 13, lines 53-67.
Schuh and Iwasaki are analogous because they are similar in structure and function, as each discloses pressure-sensitive adhesive sheets with acrylic-containing adhesive layers formed on polyolefin foam substrates.
It would have been obvious to one of ordinary skill in the art at the time of the invention to apply the adhesive of Schuh onto a polyethylene foam substrate as disclosed in Iwasaki in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to substitute polyethylene foam for polypropylene foam as Iwasaki teaches that polyolefin foam substrate are suitable due to their desired properties including closed-cell structure and flowability to irregularities on the surface of an adherend, and a polyethylene foam in particular provides a uniform thickness and preferable flexibility. See Iwasaki at col. 13, lines 53-67. There is a reasonable expectation of success as Schuh teaches using a foamed carrier substrate.
Regarding the limitation that the adhesive is configured to permit mechanical separation of a cured bond along the carrier layer with a separating tool, the claimed limitation is a functional limitation of the adhesive element. Schuh does not expressly state that the adhesive element is configured to permit mechanical separation of the cured bond along the carrier layer with a separating tool as claimed. However, Schuh does describe various performance tests which measure the adhesive properties of the cured adhesive sheet, see p. 10, [0140-0142] to obtain the peeling force of the cured adhesive tape. The adhesive tape is considered to be capable of mechanical separation along the carrier layer with a separating tool as claimed
Regarding claim 19, Schuh teaches using from 35-90 wt. % of the (a1) (meth)acrylic ester monomer component which overlaps the claimed range. See p. 5, [0058].
Regarding claim 20, Schuh also teaches that the adhesive composition includes one or more tackifier resins in the amount of preferably up to 30 wt. % based on the polymer, see p. 9, [0117].
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 31 March 2026 regarding the 35 U.S.C. § 102 and 103 rejections of claims of record over Yang, over Yang in view of Komatsuzaki, or over Schuh have been considered but are moot due to the new grounds of rejection.
Conclusion
All claims are rejected.
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 extension fee 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.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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