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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 27, 2026 has been entered.
Claims 7-11 are withdrawn with traverse due to a previous restriction requirement.
Claim 2-5 are cancelled due to Applicant’s amendments.
Claims 1 and 6 are pending.
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 and 6 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 solvent is selected from a group composed of ethylene glycol monobutyl ether acetate, polyvinyl alcohol, acrylic acid, isopropanol, ethyl acetate and combinations thereof” and “a hydrophilic-lipophilic balance (HLB) value of the solvent is 8-18”, which causes confusion. The examiner notes that in the response to arguments filed March 12, 2026, the applicant states “ethylene glycol monobutyl ether acetate has an HLB value range from 3 to 6… polyvinyl alcohol has an HLB value greater than 18”, which are both outside the claimed range of 8-18 and are therefore inconsistent with the Markush group.
Claim 6 is rejected for being dependent on claim 1.
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,
wherein the first agent comprises a solvent,
wherein the solvent is selected from a group composed of ethylene glycol monobutyl ether acetate, polyvinyl alcohol, acrylic acid, isopropanol, ethyl acetate and combinations thereof, and
wherein a hydrophilic-lipophilic balance (HLB) value of the solvent is 8-18.
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 and 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 Koide (WO 2018047649 A1) and Nakagawa et al. (US 20150183922) as evidenced by Li et al. (CN 101422432).
The examiner refers to the English translation of Hua et al. provided by the Applicant.
The examiner refers to the English translation of Li et al. provided in this Office Action.
Regarding claim 1, 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.
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 ethyl acetate [0244], thereby reading on the solvent of the instant claim. Li et al. teaches ethyl acetate has HLB values close to Tween-80 [0014], which has an HLB of 15. As such, ethyl acetate would also have an HLB of 15 as evidenced by Li et al., thereby lying within the claimed range. Therefore, diethylene glycol mono ethyl ether and ethyl acetate are equivalents and the examiner notes that the substitution of equivalents (i.e., diethylene glycol mono ethyl ether and ethyl 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 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. in view of Koide and Nakagawa 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 July 27, 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) and Nakagawa et al. (US 20150183922) as evidenced by Li et al. (CN 101422432).
Applicant states “even though Nakagawa teaches that cyclohexane may also be used as a solvent (paragraph [0224]), it is inadequate to derive the conclusion of a prima facie case of obviousness merely based on cyclohexane”.
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 Nakagawa et al. teach ethyl acetate as a solvent. Li et al. teaches ethyl acetate has HLB values close to Tween-80 [0014], which has an HLB of 15. As such, ethyl acetate would also have an HLB of 15 as evidenced by Li et al., thereby lying within the claimed range. Therefore, diethylene glycol mono ethyl ether and ethyl acetate are equivalents and the examiner notes that the substitution of equivalents (i.e., diethylene glycol mono ethyl ether and ethyl 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).
Conclusion
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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