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 .
This Office Action is in response to Applicant’s response to a Nonfinal rejection filed March 12, 2026.
Claims 7-11 are withdrawn with traverse due to a previous restriction requirement.
The previous 103 rejection over Hua et al. (CN 112920754 as listed on IDS dated May 22, 2024) in view of Fujita et al. (JP 2002167520) is withdrawn.
Claim 2 is cancelled due to Applicant’s amendments.
Claims 1 and 3-6 are pending.
This Office Action is FINAL.
Claim Analysis
Summary of Claim 1:
A waterproof adhesive suitable for a flexible circuit board, wherein the waterproof adhesive comprises:
a first agent, comprising a pressure sensitive adhesive and a polymer water-absorbing expansion material; and
a second agent, comprising a hardening agent and an end-capping reagent,
and wherein the polymer water-absorbing expansion material is selected from a group consisting of hydrogenated cellulose, aquatic alginate and combinations thereof.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Hua et al. (CN 112920754 as listed on IDS dated May 22, 2024) in view of Koide (WO 2018047649 A1).
The examiner refers to the English translation of Hua et al. provided by the Applicant.
The examiner refers to the English translation of Fujita et al. provided in this Office Action.
The examiner refers
Regarding claim 1 and 2, Hua et al. teach Example 1 a composition comprising an Agent A comprising an acrylic resin polymer, rosin resin, liquid terpene resin, thereby reading on the pressure sensitive adhesive (a machine translation of Agent A is provided below).
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Hua et al. also teach in Example 1 an Agent B comprising a blocked isocyanate and a block amine curing agent, thereby reading on the second agent comprising a hardening agent and an end-capping reagent respectively. Hua et al. further teaches Agent A and B are mixed together to form an adhesive [0039-0048].
Hua et al. do not teach a polymer water-absorbing expansion material is present in the first agent.
Koide teaches a pressure-sensitive adhesive comprising a polymer and an ionic compound such as sodium alginate (claim 8, [0182]). Sodium alginate is formed from alginic acid which is well known to be derived from algae and thereby reads on an aquatic alginate as recited in the instant claim. Hua et al. is also concerned with a pressure sensitive adhesive [0011]. Therefore, it would have been obvious to add the sodium alginate of Koide to the adhesive of Hua et al. since sodium alginate is a well known additive in the pressure sensitive adhesive industry.
Regarding claim 3, Hua et al. teach Example 1 comprises diethylene glycol ethyl ether acetate as the solvent, thereby rendering the claim obvious.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hua et al. (CN 112920754 as listed on IDS dated May 22, 2024) in view of Fujita et al. (JP 2002167520) and in further view of Nakagawa et al. (US 20150183922).
The adhesive of claim 1 is incorporated herein by reference.
Regarding claim 4, Hua et al. do not teach the adhesive comprises the solvent as recited in the instant claim.
Nakagawa et al. teach a polyisocyanate composition used as a curing agent (claim 6). Nakagawa et al. teach solvents such as diethylene glycol mono ethyl ether and ethylene glycol monobutyl ether acetate [0244], thereby reading on the solvent of instant claim 4. Therefore, diethylene glycol mono ethyl ether and ethylene glycol monobutyl ether acetate are equivalents and the examiner notes that the substitution of equivalents (i.e., diethylene glycol mono ethyl ether and ethylene glycol monobutyl ether acetate) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore, it is prima facie obvious that diethylene glycol mono ethyl ether and ethylene glycol monobutyl ether acetate are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (MPEP § 2144.06).
Regarding claim 5, Hua et al. is silent on the HLB value of the solvent as recited in the instant claim.
However, Nakagawa et al. teach cyclohexane may also be used as a solvent [0224]. Cyclohexane has an HLB value of 15 as evidenced by the article provided (“An Expansion of HLB to include Silicone Surfactants 3D HLB”, page 5), thereby lying within the claimed range. Therefore, diethylene glycol mono ethyl ether and cyclohexane are equivalents and the examiner notes that the substitution of equivalents (i.e., diethylene glycol mono ethyl ether and cyclohexane) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore, it is prima facie obvious that diethylene glycol mono ethyl ether and hexane are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (MPEP § 2144.06).
Regarding claim 6, Hua et al. teach the end capping agent is a blocked isocyanate, thereby reading on the instant claim.
Hua et al. is silent on the hardening agent as recited in the instant claim.
Nakagawa et al. teach amines such as isophoronediamine [0291-0298] and polyisocyanates such as diphenylmethane diisocyanate can be used [0112-0118], thereby reading on a cycloaliphatic amine and a polyphenylmethane diisocyanate. Nakagawa et al. offer the motivation that the polyisocyanate composition provides excellent physical properties such as durability and heat resistance [0273]. Hua et al. is also concerned about performance stability at different temperatures [0011]. Therefore, it would have been obvious to one of ordinary skill in the art to use the hardening agent of Nakagawa et al. with the adhesive of Hua et al. with reasonable expectation that the physical properties of the adhesive would improve.
Response to Arguments
Applicant’s arguments, see pages 4-5, filed March 12, 2026, with respect to the rejection(s) of claim(s) 1-6 under 35 USC have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Hua et al. (CN 112920754 as listed on IDS dated May 22, 2024) in view of Koide (WO 2018047649 A1).
Applicant states “Fujita merely teaches the usage of starch-based resins as water absorbing resins, but fails to teach or suggest the usage of hydrogenated cellulose or aquatic alginate as polymer water-absorbing expansion material.”
The examiner agrees and directs attention to the new grounds of rejection made in view of over Hua et al. (CN 112920754 as listed on IDS dated May 22, 2024) in view of Koide (WO 2018047649 A1), wherein Koide teaches sodium alginate as an additive to a pressure sensitive adhesive. Sodium alginate is formed from alginic acid which is well known to be derived from algae and thereby reads on an aquatic alginate as recited in the instant claim. Hua et al. is also concerned with a pressure sensitive adhesive [0011]. Therefore, it would have been obvious to add the sodium alginate of Koide to the adhesive of Hua et al. since sodium alginate is a well known additive in the pressure sensitive adhesive industry.
Applicant states “it is inadequate to derive the conclusion that Nakagawa teaches a solvent that has a substantially identical structure and the HLB value 8-18 is expected.”
The examiner agrees and directs attention to the rejection of claim 5 made over Nakagawa, wherein Nakagawa et al. teach cyclohexane may also be used as a solvent [0224]. Cyclohexane has an HLB value of 15 and thereby lies within the claimed range. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Nakagawa et al.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/
Examiner, Art Unit 1763
/CATHERINE S BRANCH/
Primary Examiner, Art Unit 1763
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