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 1-7, 9, 11, and 12, filed on 26 June 2026, have been entered in the above-identified application. Claims 10 have been cancelled by applicant. Claims 1-9 and 11-18 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 18 September 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
WITHDRAWN REJECTIONS
The objections to claims 5 and 12, made of record on page 3, paragraph 6 of the office action mailed 27 March 2026 have been withdrawn due to Applicant’s amendment in the response filed 26 June 2026.
The 35 U.S.C. § 112(b) rejection of claims 5 and 9-12 and the § 112(d) rejection of claims 6-7, made of record on pages 3-6, paragraphs 7-10 have been withdrawn due to Applicant’s amendments.
The 35 U.S.C. § 103 rejection of claims 1-9 as over Breiner (U.S. Pat. 8,669,328) made of record on page 7, paragraph 15 of the office action mailed 27 March 2026 has been withdrawn due to Applicant’s amendment in the response filed 26 June 2026. In particular, Breiner does not specify the adduct ingredient (b) as recited in amended claim 1.
The 35 U.S.C. § 103 rejection of claims 10-12 as over Breiner (U.S. Pat. 8,669,328) in view of Dones (U.S. Pat. 6,316,517) made of record on page 11, paragraph 16 of the office action mailed 27 March 2026 has been withdrawn due to Applicant’s amendment in the response filed 26 June 2026. In particular, neither Breiner nor Dones specifies the adduct ingredient (b) as recited in amended claim 1.
The 35 U.S.C. § 103 rejection of claims 13-18 as over Breiner (U.S. Pat. 8,669,328) in view of WO 2017/190911 A1 made of record on page 12, paragraph 17of the office action mailed 27 March 2026 has been withdrawn due to Applicant’s amendment in the response filed 26 June 2026. In particular, WO ‘911 does not remedy the above described deficiency of Breiner.
NEW 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 Objections
Claims 1 and 2 are objected to because of the following informalities. Appropriate correction is required.
Claim 1 at part (b) is missing a word, as it presently recites “… at least one epoxy (meth)acrylate monomer, which is an adduct of (meth)acrylate group and a polyepoxide compound; and,”. The Examiner suggests reciting “… at least one epoxy (meth)acrylate monomer, which is an adduct of a (meth)acrylate group-containing compound and a polyepoxide compound; and,”.
Claim 2 at part (b) is missing a word, as it presently recites “… at least one epoxy (meth)acrylate monomer, which is an adduct of (meth)acrylate group and a polyepoxide compound; and,”. The Examiner suggests reciting “… at least one epoxy (meth)acrylate monomer, which is an adduct of a (meth)acrylate group-containing compound and a polyepoxide compound; and,”.
Claim Rejections - 35 USC § 103
Claims 1-9, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over SG 10202103242U in view of Breiner (U.S. Pat. 8,669,328).
Regarding claims 1 and 2, SG ‘242 discloses a laminate which is formed using a pressure-sensitive adhesive layer (see p. 2, [0006] and p. 7, [0026]). The adhesive layer includes polymer (A) which is preferably an acrylic copolymer, see p. 13, [0045] and p. 14, [0047]. This component is from 40-100 wt. % of the adhesive composition, and may be 90 wt. % or higher or even 97 wt. % or higher, see p. 13, [0046]. It is formed from alkyl (meth)acrylate monomers such as n-butyl acrylate and 2-ethylhexyl acrylate which are ethylenically unsaturated monomers, see p. 14, [0048] and p. 15, [0051].
The polymer also includes a photoreactive monomer (B) which forms a crosslinked structure upon irradiation of light, see p. 25-26, [0076-0077]. Monomer (B) includes compound (B1) which has at least two ethylenically unsaturated groups per molecule, see p. 28, [0084]. Examples of this compound are bisphenol-A based epoxy (meth)acrylates such as bisphenol A glycidyl ether (meth)acrylic acid adduct or other epoxy-acrylate adducts specified at p. 29-30, [0087]. The amount of this compound is from 0.5 parts by weight or greater based on 100 parts by weight of polymer (A), see p. 30-31, [0089].
The adhesive also includes a photoreactive monomer compound (B2) used in combination with (B1) which preferably has 3 or more functional groups, see p. 31, [0090-0091]. Example compounds are multi-functional acrylates such as pentaerythritol tri(meth)acrylate; these example compounds do not include epoxy functionality. See p. 32, [0093]. Compound (B2) is present in the amount of 0.1 parts by weight or greater based on 100 parts by weight of polymer (A), see p. 32, [0094].
Also present is a photopolymerization initiator in the amount of 0.001 to 5 parts by weight based on 100 parts by weight of monomers to be polymerized, see p. 22, [0065-0066]. Benzophenone-based photopolymerization initiators are described as suitable materials, see p. 22, [0066]. The benzophenone group is capable of decomposing under photoirradiation to form a radical. However, SG ‘242 does not specify that the photopolymerization initiator includes an ethylenically unsaturated group.
Breiner discloses a composition with a dispersion of (meth)acrylate polymers A and B, in which each polymer A and B is obtained by emulsion polymerization of a mixture comprising:
0.1 to 99.9% of at least one benzophenone derivative compound of formula (I) as shown:
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99.1% to 0.1% of at least one ethylenically unsaturated monomer different from but copolymerizable with component (a). See claim 1.
The R1-R6 groups of formula (I) are defined at col. 8, lines 20-47.
Breiner notes that benzophenone and its derivatives are widely used photoinitiators which form free radicals to bring about polymerization or crosslinking of ethylenically unsaturated monomers, see col. 2, lines 6-9. This reads on component (a) as claimed.
The (b) component of Breiner is a (meth)acrylate monomer preferably having from 1 to 12 carbon atoms in the alkyl group such as methyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, lauryl (meth)acrylate, or others, see col. 4, lines 26-65. Methyl methacrylate, butyl acrylate, and methacrylic acid are particularly preferable such monomers, see col. 6, lines 3-13. This preferably comprises from 70 to 97.5 wt. % of the acrylate monomers. See col. 4, lines 36-38. This reads on component (c) as claimed.
It would have been obvious to have used the benzophenone-based photoinitiator having an unsaturated group as in Breiner in the adhesive composition of SG ‘242 to arrive at the claimed copolymer, as SG ‘242 teaches that benzophenone-based photoinitiators are suitable materials and Breiner uses such photoinitiators to polymerize a similar acrylate-based copolymer. Thus there is a reasonable expectation of success in the proposed combination.
SG ‘242 and Breiner are analogous as they each describe acrylic adhesive copolymers which use benzophenone-based photopolymerization initiators, thus they are similar in composition and function.
Regarding claims 3-7, Inventive Example 1 of Breiner uses methacryloyloxybenzophenone as a comonomer. This material has the following structure:
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This reads on the general formula (A)-(B)b of claim 3 in which A is the benzophenone group, and B is the methacrylic functional group, and b is 1.
This also reads on claim 4 as A is the benzophenone group, B is the methacrylic functional group, and b is 1.
This also reads on claims 5, 6, and 7 in which R0 is a C6 aryl group, R00 is the structure shown on the left side of the claim, R2 through R5 are each H, and R6 has the structure of:
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as required by the proviso of claim 5 in which R” is C1 alkyl.
Regarding claim 8, the methacryloyloxybenzophenone used in Inventive Example 1 of Breiner is a benzophenone methacrylate as claimed.
Regarding claim 9, SG ‘242 teaches that the functional group equivalent weight of compound (B1) is 100 g/mol or higher, and preferably 600 g/mol or lower. See p. 28-29, [0084].
Regarding claims 11 and 12, SG ‘242 teaches specific examples of compound (B1) at p. 29, [0087]. One example is bisphenol A glycidyl ether (meth)acrylic acid adduct. Bisphenol A glycidyl ether is a polyglycidyl ether of bisphenol A. Bisphenol A is a polyhydric phenol.
Claims 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over SG 10202103242U in view of Breiner (U.S. Pat. 8,669,328) as applied above, and further in view of WO 2017/190911 A1. Dollase (U.S. Pub. 2021/0222037) was relied upon as the translation of WO ‘911.
Regarding claim 13, SG ‘242 and Breiner are relied upon as described above to teach the copolymer of claim 1.
Neither SG ‘242 nor Breiner teach or suggest the use of a photoacid generator (PAG) in the composition.
However, Dollase describes a polymer obtainable by radical polymerization for adhesive systems, see abstract. The copolymer includes epoxy-functionalized methacrylic co-monomers as well as acrylic monomers which are not functionalized with epoxy, see p. 3, [0031-0032] and p. 4, [0045-0049] and [0055]. The composition is cured using UV radiation, see p. 1, [0006-0007] and p. 6, [0078]. The composition includes from 0.1 to 5 wt. % of photochemically activatable initiators, see p. 7, [0090] and p. 9, [0101], and suitable such commercialized photoinitiators are Cyracure UVI-6990, Cyracure UVI-6974, Optomer SP-55, SP-150, or SP-170, SarCat CD-1010, CD-1011, and CD-1012, and others listed at p. 8, [0098]. These are among the PAG materials described in the present specification at p. 22, [0128] and thus read on the claimed PAG.
SG ‘242, Dollase and Breiner are analogous because they each disclose photocurable compositions for adhesives which include epoxy-functionalized acrylic comonomers. Thus they are similar in composition and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include one of the photoacid generator photoinitiators of Dollase as a photoinitiator for the adhesive composition of SG ‘242 having the photoinitiator of Breiner in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to use a PAG as these can bring about cationic curing reaction of the epoxy groups via UV radiation, see Dollase at p. 7, [0090].
Regarding claim 14, SG ‘242 and Breiner teach the copolymer of claim 1 as described above in regards to claims 1 and 13. Dollase teaches using from 0.1 to 5 wt. % of the PAG in the composition, see p. 9, [0101]. The claimed tackifier resin and wax may be 0% and thus are considered optional and not required by the claim. However, Breiner also teaches that a tackifying resin may be added, see col. 17, lines 52-60, and the paragraph describes using up to 10 wt. % of such additives, see col. 18, lines 5-11.
SG ‘242 further teaches that the adhesive copolymer can be a hot melt pressure-sensitive adhesive, see p. 45, [0129].
Regarding claim 15, SG ‘242 taches that the adhesive is photopolymerizaed by UV radiation, see p. 28, [0138]. The adhesive is crosslinked as described at p. 48-49, [0140]. Photocuring is performed using UV radiation, see p. 48, [0138].
Breiner teaches that the polymer dispersion is UV-curable, see abstract, and teaches crosslinking with UV light, see col. 18, lines 29-46. The composition is useful as a coating, covering, pressure-sensitive adhesive, or other uses as described at col. 18, lines 12-19.
Regarding claim 16, SG ‘242 taches that the adhesive is photopolymerizaed by UV radiation, see p. 28, [0138]. The adhesive is crosslinked as described at p. 48-49, [0140]. Photocuring is performed using UV radiation, see p. 48, [0138].
Breiner teaches that the composition is useful as a coating, covering, pressure-sensitive adhesive, or other uses as described at col. 18, lines 12-19. The composition is applied in a temperature range of 20-150°C and thus may be a hot melt pressure-sensitive adhesive as claimed.
Regarding claim 17, SG ‘242 teaches applying the adhesive composition to a release film to form the adhesive layer, see p. 48-49, [0140].
Regarding claim 18, SG ‘242 teaches that the adhesive is used to form a decorative laminate, see p. 2, [0006]. The decorative film may include a print layer, see p. 60, [0172], and thus may be in the form of a label.
Breiner also teaches that the composition is useful as a label, see col. 18, lines 12-19.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 26 June 2026 regarding the 35 U.S.C. § 103 rejection of the claims of record have been considered but are moot due to the new grounds of rejection.
Relevant Prior Art
CN 113459612 A is another publication of SG ‘242.
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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