DETAILED ACTION
Applicant’s amendment submitted on March 5, 2026 (“amendment”) in response to the Office action mailed on December 9, 2025 (“previous OA”) have been fully considered.
In view of the amendment, new rejections under 35 USC 112(a) and 35 USC 112(b) are introduced.
In view of the amendment, the rejection of claims 7-10 under 35 USC 102/103 over Han et al. (US 20140295108 A1), as set forth in the previous OA is modified.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 7, this claim recites “the polycarboxylic acid compound (C) increases the rate of crosslinking between acid groups of the acrylic polymer (A) and the metal chelate compound (B)”. The specification fails to provide support for this claim recitation. Applicant has not pointed to and the examiner is not able to find support for the aforementioned claim recitation in the specification.
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 7-10 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.
As to claim 7, this claim recites “the polycarboxylic acid compound (C) increases the rate of crosslinking between acid groups of the acrylic polymer (A) and the metal chelate compound (B)”. It is unclear what is meant by “increase the rate of crosslinking” in view of the specification. Further, as to claim recitation “acidic groups of the acrylic polymer (A)”, the examiner respectfully submits that it is unclear what is meant by this recitation because claim does not first require that the acrylic polymer has acidic groups. The claim requires monomer (a1) having an acidic group (claim 1, lines 5-6).
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 7-10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Han et al. (US 20140295108 A1).
As to independent claim 7, Han teaches an adhesive composition (pressure sensitive adhesive composition) comprising an acrylic copolymer (abstract and 0024), a metal chelate compounds such as aluminum acetylacetonate and iron acetyl acetonate (0049), and organic acid stabilizer (polycarboxylic acid compound) such as malonic acid and succinic acid (0044). It is submitted that applicant and Han as set forth previously teach identical compounds as saturated dicarboxylic acids (see 0168 of US Patent Application Publication 20240228843 A1 of the present application disclosing malonic acid and succinic acid as examples of saturated dicarboxylic acids). As such, Han teaches polycarboxylic acid compound that is saturated dicarboxylic acid as claimed.
Further, as to claim 7, Han teaches that the acrylic polymer is a copolymer of a monomer mixture including a monomer having carboxyl group (monomer having acidic group) (0028, 0030, and Example 1 disclosing acrylic acid monomer). Further, Han teaches that the content of the monomer having acidic group is in the range of from 0.5-10 wt% per 100 wt% of the monomers used for preparing the acrylic copolymer (0034), which is within the claimed range of 0.01 to 20 mass%. Further, Han teaches 0.5 wt% of the monomer having acidic group per 100 wt% of the monomer mixture (see Example 1 at 0061), which is within the claimed range of 0.01 to 20 mass %.
Further, as to claim 7, Han teaches that the content of the polycarboxylic acid compound is in the range of from 0.1 to 5 parts by weight to 100 weight% of the acrylic copolymer (0045). The amount of the polycarboxylic acid compound disclosed by Han is within the claimed range of 0.010 parts by mass or more to 9.0 parts by mass or less per 100 parts by mass of the acrylic polymer as claimed.
Further, as to claim 7, Han teaches claimed invention except for the properties of (a) the polycarboxylic acid compound (C) increases the rate of crosslinking between acid groups of the acrylic polymer (A) and the metal chelate compound (B), and (b) the gel fraction rate P of toluene and ethyl acetate. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Further, products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01 (II). In the present situation, the adhesive composition of Han comprises acrylic polymer, metal chelate, and polycarboxylic acid as claimed (see the rejection of claim 7 above). Therefore, absent any factual evidence on the record, it is reasonable to presume that the adhesive composition of Han would inherently have the aforementioned properties (a) and (b). Alternatively, the aforementioned properties would obviously be present once the adhesive composition of Han is provided.
As to claim 8, Han discloses gel fraction rate of e.g. 78.8 % in ethyl acetate extraction (0086-0087 and Example 1 in Table 2).
As to claim 9, as set forth previously, the adhesive composition of Han comprises acrylic polymer, metal chelate, and polycarboxylic acid as claimed (see the rejection of claim 7 above). Therefore, absent any factual evidence on the record, it is reasonable to presume that the adhesive composition of Han would inherently have the claimed value of gel fraction rate P. Alternatively, the aforementioned gel fraction rate P would obviously be present once the adhesive composition of Han is provided.
As to claim 10, Han discloses an adhesive sheet comprising a substrate and the adhesive composition formed on the substrate (0064-0065 and 0056-0057, wherein the polarizer is a substrate).
Response to Arguments
Applicant's arguments submitted in the amendment have been fully considered but they are not persuasive.
With respect to the 35 USC 102/103 rejection based on Han et al. (US 20140295108 A1), applicant argues that the organic acid stabilizer of Han has a function of reducing the activity of the acrylic copolymer and the toluene diisocyanate based crosslinking agent in an adhesive composition before coating, and assuring storage stability by effectively inhibiting change in viscosity. Further, according to applicant, the organic acid stabilizer in Han is volatized from the adhesive composition after coating, whereby the efficiency of the crosslinking reaction is increased and the effects of, for example, reducing curing times are obtained. Applicant submits that contrary to Han, the polycarboxylic acid compound of the claimed invention increases the rate of the crosslinking reaction between acidic groups of the acrylic polymer and the metal chelate compound, thereby accelerating the crosslinking reaction. Pages 5-6 of the amendment.
The examiner respectfully disagrees. The examiner acknowledges that Han discloses that the organic acid stabilizer “may reduce the activity of the acrylic copolymer and the toluene diisocyanate-based-cross-linking agent in an adhesive composition” and that the organic acid stabilizer “can be volatized from the adhesive composition after coating” (0042-0043). However, the examiner submits that this disclosure in Han as pointed out by applicant does support applicant’s assertion that the polycarboxylic acid compound of Han cannot increase the rate of crosslinking between the acidic groups of the acrylic polymer and the metal chelate compound. Because, the disclosure in Han pointed out by applicant refers to the activity between the acrylic copolymer and the toluene diisocyanate crosslinking agent, whereas the claimed invention recites that the polycarboxylic acid compound increases the rate of crosslinking between acidic groups of the acrylic polymer and the metal chelate compound. Furthermore, Han does not positively require that the organic acid stabilizer volatize from the adhesive composition after coating (see Han at 0043 disclosing that the organic acid stabilizer “can be volatized from the adhesive composition after coating”). Moreover, even if the organic acid stabilizer of Han is volatized from the adhesive composition after coating, the organic acid stabilizer of Han is still present before coating of the adhesive composition. As such, applicant’s argument is not found persuasive.
Applicant submits that claim 7 requires polycarboxylic acid compound selected from saturated dicarboxylic acids, unsaturated dicarboxylic acids…and alicyclic polycarboxylic acid. According to applicant, although polycarboxylic acids are listed in the embodiments of Han, the organic acid stabilizers used in Examples are acetic acid and acrylic acid, both of which are monocarboxylic acids having only one carboxyl group. Page 6 of the amendment.
The examiner respectfully disagrees. First, the examiner submits that applicant has acknowledged on the record that Han does disclose polycarboxylic acids. Second, the examiner submits that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiment. See MPEP 2123 (II). Therefore, applicant’s argument is not found persuasive.
As to applicant’s arguments citing Comparative Examples 1 to 4 and Comparative Examples 1-3 in the specification (pages 6-7 of the amendment), the examiner respectfully submits following. Han teaches identical polycarboxylic acid compound, acrylic polymer, and metal chelate compound as claimed (see the rejection over Han as set forth previously). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Further, products of identical chemical composition cannot have mutually exclusive properties. See MPEP 2112.01 (II). Therefore, absent any factual evidence on the record, it is reasonable to presume that the polycarboxylic acid compound of Han would inherently increase the rate of crosslinking between acid groups of the acrylic polymer and the metal chelate compound. Further, as to applicant’s citing of Comparative Examples in the specification, the examiner submits that applicant has the burden of explaining the data. Applicant has stated that comparative examples show “reduced cross-linking completion and storage stability”. However, applicant has not explained what parameters listed in Table 3 of the specification support the aforementioned reduced crosslinking completion, and further how this parameter relates to the claimed increase rate of crosslinking. Accordingly, applicant’s argument is not found persuasive.
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 ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 March 25, 2026
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