DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-20 are currently pending in the application.
Applicant’s election without traverse of Group I invention (claims 1-7) in the reply filed on 3/16/26 is acknowledged. Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-7 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.
Claim 1 recites the limitation “a C9 type hydrocarbon resin”. The addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955). MPEP 2173.05(b)IIIE.
Claim 1 recites the limitation “a resin composition containing alkyl acrylate, polyethylene glycol alkyl ether methacrylate, hydroxyalkyl acrylate, perfluorinated alkyl (meth)acrylate, and silicone (meth)acrylate”, i.e., as polymerizable components. The claimed limitation lacks clarity in view of the disclosure, because it is unclear if the resin composition contains the recited components in polymerized or unpolymerized state. For instance, while the resin composition includes polymerizable components according to paragraphs [0067]-[0075] in the disclosure (PGPUB), in an exemplified embodiment in paragraph [0088], the components of the resin composition in a polymerized form are combined with a C9 resin and a curing agent to form an adhesive composition [0089]-[0090].
Claims 2-7 are subsumed by rejected base claim 1 and are therefore included in this rejection. For the purpose of examination, Examiner interprets the resin composition of claim 1 as containing an alkyl acrylate, a polyethylene glycol alkyl ether methacrylate, a hydroxyalkyl acrylate, a perfluorinated alkyl (meth)acrylate and a silicone (meth)acrylate, either in a polymerized state or an unpolymerized state.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO 2019/045479 A1), in view of Ogawa et al. (US 2009/0053519 A1), and either Okazaki et al. (US 6,458,902 B1) or Kim et al. (KR 2013013544 A, machine translation, KR’544).
At the outset, it is noted that WO 2019/045479 A1 is relied upon for date purposes, while US 2020/0347269 A1 is relied upon as its English equivalent and referred to in the body of this rejection.
Regarding claim 1, Kim teaches an adhesive film for an optical member, comprising at least two types of (meth)acrylic monomers for a (meth)acrylic prepolymer, and (meth)acrylate containing silicone (Ab.), wherein the (meth)acrylic monomers of the prepolymer may be present in a pre-polymerized or completely non-polymerized state. The monomer mixture may include alkyl group-containing (meth)acrylates, including alkyl acrylates, hydroxyl group-containing (meth)acrylates, a siloxane-modified (meth)acrylate (reads on silicone (meth)acrylate) [0047], [0052]-[0062], and a copolymerizable monomer, such as polyethylene oxide alkyl ether(meth)acrylate [0069]-[0070], [0080].
Kim teaches an optical film formed of at least one resin, e.g., polyethylene terephthalate resin, a polycarbonate resin, a polyimide resin, having a film thickness of about 25 μm to about 250 μm, and an optical member including an optical film and an adhesive film formed on at least one surface of the optical film [0180]-[0184].
Kim further teacher teaches that the adhesive composition may include a curing agent, such as an isocyanate-based curing agent, and also typical additives, including antistatic agents [0153]-[0154]. Exemplified embodiments are directed to an adhesive composition comprising a copolymer of EHA, IOBA (read alkyl acrylates), 2-EHA (reads on hydroxylalkyl acrylate), SMZ7515E (reads on silicone (meth)acrylate) and sheets thereof, comprising HQ-115, i.e., an ionic compound as an antistatic agent, and an adhesive sheet formed by coating the composition on to PET film (TABLE 1, Example 1).
Kim is silent with regard to (1) a resin composition comprising claimed perfluorinated alkyl (meth)acrylate, and an adhesive composition thereof comprising (2) a curing agent and a C9 hydrocarbon resin as in the claimed invention.
At the outset, it is noted that in the case where the claimed ranges "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). See MPEP § 2144.05.
The prior art to Ogawa is directed to adhesive compositions for providing an optical member, and is therefore, in an analogous art. Ogawa teaches adhesives comprising a base polymer including at least one (meth)acrylic ester with a halogen element and at least one (meth)acrylate in a copolymeric unit [0031], and an antistatic agent, the antistatic agent including an ionic compound (Ab.). Disclosed (meth)acrylic esters with a halogen element include one or more of 2,2,2-trifluoroethyl(meth)acrylate, 2,2,3,3-tetrafluoropropyl acrylate; 1H,1H,5H- octafluoropentyl(meth)acrylate; hexafluoro-2-propyl(meth)acrylate, heptafluoro-2-propyl acrylate, 2-(perfluorooctyl)ethyl methacrylate etc. (read on perfluorinated alkyl (meth)acrylate) [0032]. Compositions including such halogen element in the (meth)acrylates provide for improved productivity of the adhesive compositions in terms of costs [0032], while maintaining superior antistatic performance [0080], and high transparency, ability of preventing contamination and/or corrosion [0031], [0061], [0062].
The prior art to Okazaki teaches hydrogenated C9 petroleum resins having excellent tack, thermal stability, adhesion and compatibility, and being colorless, odorless and tasteless, for use in adhesive compositions (Ab., col.5-col. 6, Examples, ref. claims).
In the alternative, Kim ‘544 teaches curable optical pressure sensitive adhesive compositions based on (meth)acrylate monomers and including a hydrocarbon resin, such as a C9 aromatic resin, in an amount of 5 to 20 parts by wt., based on 100 % by wt. of the adhesive composition (Ab., [0008], [0048]-[0054]).
In view of the advantages taught in Ogawa and Okazaki, and given the teaching in Kim on suitable monomers for preparing the curable copolymers of the adhesive compositions for optical films, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an adhesive film/sheet comprising an optical film and an adhesive composition comprising a resin/(co)polymer containing monomers (or units thereof) within the scope of Kim, as modified by Ogawa’s perfluorinated alkyl (meth)acrylate, wherein said adhesive composition includes an isocyanate-based curing agent and Okazaki’s hydrogenated C9 tackifying resin.
In the alternative, in view of the advantages taught in Ogawa, the teaching in Kim ‘544 on suitable tackifying resins for use in curable optical pressure sensitive adhesive compositions, and given the teaching in Kim on suitable monomers for preparing the curable copolymers of the adhesive compositions for optical films, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an adhesive film/sheet comprising an optical film and an adhesive composition comprising a resin/(co)polymer containing monomers (or units thereof) within the scope of Kim, as modified by Ogawa’s perfluorinated alkyl (meth)acrylate, wherein said adhesive composition includes an isocyanate-based curing agent and Kim’s C9 hydrocarbon resin. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Regarding claims 2 and 3, while teaching an isocyanate-based curing agent [0154], although Kim is silent on the amount thereof, the secondary reference to Ogawa teaches diisocyanate compounds as crosslinking agents, that their amount may be adjusted with respect to a desired balance between the cross-linking agent and the base polymer, for e.g., to an amount of about 0.01 parts by weight to about 5 parts by weight, based on about 100 parts by weight of the base polymer, in order to impart flexibly and/or high thermal resistance to the base polymer by cohesiveness of an acrylic adhesive [0041]-[0044]. Additionally, although Okazaki does not explicitly teach an amount of the C9 tackifier resin in an adhesive composition, it is examiner’s position that the amount thereof is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one of ordinary skill in the art to utilize appropriately effective amount of C9 hydrocarbon tackifier, including those within the scope of the present claims so as to produce desired end results.
In the alternative, Kim ‘544 teaches C9 aromatic resin in an amount of 5 to 20 parts by wt., based on 100 % by wt. of the adhesive composition (Ab., [0008], [0048]-[0054]).
Regarding claim 4, disclosed Okazaki’s C9 resins in Okazaki is derived from vinyltoulene and/or indene (Examples). In the alternative, Kim ‘544 teaches that the C9 aromatic resin may be polymerized with vinyl toluene, dicyclopentadiene, indene, methylstyrene, styrene and methylindenes [0053].
Regarding claim 5, Kim teaches an adhesive film having a thickness of about 10 μm to about 200 μm, for stacking on an optical film [0046].
Regarding claim 6, Ogawa teaches 2,2,2-trifluoroethyl(meth)acrylate, 2,2,3,3-tetrafluoropropyl acrylate; 1H,1H,5H- octafluoropentyl(meth)acrylate; hexafluoro-2-propyl(meth)acrylate, heptafluoro-2-propyl acrylate, 2-(perfluorooctyl)ethyl methacrylate etc. [0032].
Regarding claim 7, Kim teaches a monomer mixture comprising about 5 wt % to about 99.9 wt % of an alkyl group-containing (meth)acrylate [0055], about 0.10 wt % to about 60 wt % of a hydroxyl group-containing (meth)acrylate, preferably about 1 to 5 wt.% [0052], about 0.5 wt % to about 80 wt % of a silicon-containing (meth)acrylate [0065], and a copolymerizable monomer, such as polyethylene oxide alkyl ether(meth)acrylate, at about 1 wt.% to about 15 wt.% [0069]- [0070], [0080]. Additionally, Ogawa prescribes a perfluorinated alkyl (meth)acrylate at 0.1% to 15 % by wt., based on the total wt. of the polymer [0031].
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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