DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 2 and 7 in the amendments filed 4/15/2026.
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 .
Information Disclosure Statement
The IDS filed 1/28/2026 cited references identical to that of the IDS filed 1/27/2026, except for Citation No. 1, which was included to correct an error present in the IDS filed 1/27/2026. Thus, the other citations contained therein were not further considered as they are duplicates of the same citations from the IDS filed 1/27/2026.
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
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3-6 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (US 2017/0218231 A1) in view of Takarada et al. (US 2011/0111220 A1), in light of the evidence provided by Matsumura et al. (US 7863182 B2), Satake et al. (US 5814685) and the Aldrich Data Sheet.
Regarding claim 1, Suzuki teaches a pressure-sensitive adhesive (PSA) sheet comprising a radiation curable acrylic-PSA layer (active energy ray-curable PSA layer) comprising an acrylic polymer (PSA comprising a base polymer) and a multifunctional acrylic oligomer (para 0025), which said multifunctional acrylic oligomer contains two or more (meth)acryloyl groups (para 0068), which provide the oligomer with active energy ray-curability (resin A is an active energy ray-curable resin).
Table 1 of Suzuki demonstrates that the multifunctional acrylic oligomers of the inventive examples comprise glass transition temperatures (Tg) of 12 and 75 ℃ (0 ℃ or higher) (para 0135). Suzuki also teaches that the weight-average molecular weight (Mw) of the oligomer is 400 to 10000, which overlaps that presently claimed (Mw = 3000 or higher), towards pre-cured workability and post-cured hardness (para 0074). As set forth in MPEP 2144.05, in the case where the claimed range “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).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the oligomer of Suzuki with the presently claimed Mw towards the PSA demonstrating the pre-cured workability and post-cured hardness required of the prior art’s intended application as in the present invention.
Suzuki does not specify that the gel fraction of the PSA prior to curing is 70% or higher, but Suzuki does instruct the skilled artisan that the gel fraction of the PSA before curing (precuring gel fraction) is 50% or more (para 0109), which overlaps that presently claimed (70% or higher).
In addition, Takarada teaches that the gel fraction of PSA is selected based on the hardness/softness required of the PSA layer (para 0048).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA of Suzuki with the presently claimed pre-cured gel fraction based on the hardness/softness required of the prior art’s intended application prior to curing as in the present invention.
Regarding claim 3, as noted above, Suzuki teaches that the multifunctional acrylic oligomer contains two or more (meth)acryloyl groups (i.e., an acrylic resin).
Regarding claim 4, Suzuki teaches that the multifunctional acrylic oligomer is present at 0.05 to 40 parts by mass per 100 parts by mass of the acrylic polymer towards a balance of adhesiveness, post-curing hardness, bonding reliability and handleability (para 0077).
While the proportions of the acrylic oligomer of Suzuki are presented parts by mass while the proportions presently claimed are given % by weight, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the multifunctional acrylic oligomer in the presently claimed proportions (1 to 70 % by weight) based on the balance of adhesiveness, post-curing hardness, bonding reliability and handleability required of the prior art’s intended application as in the present invention.
Regarding claim 5, the PSA composition comprises a photoinitiator (para 0021).
Regarding claim 6, the Young’s modulus of the PSA layer before curing (i.e., 30 to 200 kPa) and that after curing (i.e., 500 to 10000 kPa) provide a ratio of approximately 333 to 2.5 (E2/E1 ≥ 1.1) (abstract).
Regarding claim 8, the PSA layer has a thickness of 10 to 80 mm (para 0101).
Regarding claim 9, as noted above, Suzuki teaches that the PSA comprises an acrylic polymer.
Regarding claim 10, Suzuki does not specify a Tg for the disclosed acrylic polymer, but Suzuki does teach that the acrylic polymer comprises (meth)acrylic alkyl esters such as, inter alia, 2-ethylhexyl acrylate (2EHA, Tg = -50 ℃) at 50 to 90 mass % of the acrylic polymer (para 0042-0043);
hydroxyl-containing (meth)acrylic esters such as, inter alia, 2-hydroxyethyl acrylate (HEA, Tg = -25 ℃) at 1 to 30 mass % (0045-0047);
and nitrogen-containing monomers such as, inter alia, n-vinyl pyrrolidone (NVP, Tg = 54 ℃) at 1 to 30 mass % of the acrylic polymer (para 0048-0058);
and other monomers at less than 0.01 % mass (para 0062).
Tg values provided by Matsumura (see column 16, lines 31-32) and the Aldrich Data Sheet. The Examiner notes that the mass % for each of the monomers comprising the acrylic polymer, and their respective Tg values, provides for the acrylic polymer to demonstrate a Tg of below 30 ℃ as given by the fox equation (see column 4, lines 5-19 of Satake).
Response to Arguments
Applicant's arguments, see the claim amendments and the remarks filed 4/15/2026, with respect to the rejection of claims 1-10 over Suzuki under 35 U.S.C. 102(a)(1) as set forth in paragraph 3 of the action mailed 12/17/2025. have been fully considered but they are not persuasive.
The Applicant has amended the claims to further require that the recited gel fraction was obtained prior to curing. Thus, the Examiner’s response will address the Applicant’s arguments in regards to the updated rejection of the claimed invention as set forth above. The Applicant’s attention is respectfully directed to said updated rejection, wherein it is noted that the cited Suzuki invention, in tandem with the analogous Takarada disclosure, teaches or renders obvious all the limitation of the presently claimed invention, to include a PSA layer demonstrating a pre-curing gel fraction of 70% or higher. See paragraph 0109, wherein Suzuki teaches that the gel fraction before curing is 50% or more, which is identical to the conditions (i.e., pre-curing) employed towards the presently recited gel fraction as presently argued.
In regards to the Applicant’s arguments against the examples of Suzuki, and the lack therein of embodiments demonstrating a pre-curing gel fraction of 70% or more, the Applicant is respectfully reminded that the “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” (In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967)). Indeed, the body of the Suzuki disclosure, in tandem with Takarada, instruct and motivate the skilled artisan towards the presently claimed pre-curing gel fraction. Furthermore, Suzuki provides no instruction against (no teaching away) a gel fraction before curing outside that presently claimed.
Conclusion
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 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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 4/27/2026
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