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 .
Election/Restrictions
Applicant's election with traverse of Groups I, claims 1-5, in the reply filed on 2/25/2026 is acknowledged. The traversal is on the ground(s) that that there is no undue burden on the Examiner to examiner all the claims. This is not found persuasive for the reasons set forth in paragraphs 2-4 of the action mailed 2/19/2026.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/25/2026.
Specification
The disclosure is objected to because of the following informalities: Significant portions of Tables 1-4 are ineligible.
Appropriate correction is required.
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.
Claim 1 is 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.
Regarding claim 1, it is unclear if the recited constituent monomers also include the carboxyl group-containing monomer, or just the recited low-Tg (meth)acrylic acid alkyl ester monomers.
Claims 2 and 4-5 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.
Regarding claim 2, it is unclear if the recited constituent monomers also include the carboxyl group-containing monomer, or just the recited low-Tg (meth)acrylic acid alkyl ester monomers.
Regarding claim 2, the recitation at the end of the claim reciting “…and an adhesive tape containing a tackifier resin in an amount of more than 10 parts by mass relative to 100 parts by mass of an acrylic polymer is indefinite for the following reason:
1) it is unclear if the “adhesive tape for fixing an electronic equipment” is excluded from the adhesive tape under the recited proviso;
2) it is unclear if the adhesive tape is the same adhesive tape previously recited in the claim, or if the adhesive tape is in addition to the adhesive tape previously recited in the claim;
3) it is unclear whether the “acrylic polymer” is further limiting the cross-linked polymer and/or the base polymer previously recited in the claim, or if the “acrylic polymer” is in addition to the cross-linked polymer and/or or the base polymer previously recited in the claim (the previously recited polymers do indeed comprise (meth)acrylic acid alkyl ester monomers, and are thus acrylic polymers).
Claim 3 is 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.
Regarding claim 3, it is unclear if the recited constituent monomers also include the carboxyl group-containing monomer, or just the recited low-Tg (meth)acrylic acid alkyl ester monomers.
Regarding claim 3, it is unclear what is intended via the recitation of “holding winding.
Regarding claim 3, the recitation at the end of the claim reciting “…and an adhesive tape containing a tackifier resin in an amount of more than 10 parts by mass relative to 100 parts by mass of an acrylic polymer is indefinite for the following reason:
1) it is unclear if the adhesive tape for holding winding is excluded from the adhesive tape under the recited proviso;
2) it is unclear if the adhesive tape is the same adhesive tape previously recited in the claim, or if the adhesive tape is in addition to the adhesive tape previously recited in the claim;
3) it is unclear whether the “acrylic polymer” is further limiting the cross-linked polymer and/or or the base polymer previously recited in the claim, or if the “acrylic polymer” is in addition to the cross-linked polymer and/or or the base polymer previously recited in the claim (the previously recited polymers do indeed comprise (meth)acrylic acid alkyl ester monomers, and are thus acrylic polymers).
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) 2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikebata et al. (US 2020/0002579 A1) and in light of the evidence provided by the Aldrich Data Sheet, which is provided to demonstrate glass transition temperatures (Tg) as cited below.
Regarding claim 2, Ikebata teaches an adhesive composition (adhesive agent composition) comprising an acrylic resin (A) (base polymer) (para 0027) comprising (a1) a (meth)acrylate having a C1 to C3 alkyl group, (a2) a (meth)acrylate having a C4 to C24 alkyl group, (a3) a terminal carboxyl group-containing monomer, and (a4) (meth)acrylic acid (carboxyl group-containing monomer) (para 0028-0029), which said (a1) and (a2) (meth)acrylates teach constituent monomers including low-Tg (meth)acrylic acid alkyl ester monomers.
Ikebata also teaches that;
the (a1) C1 to C3 (meth)acrylate is, inter alia, ethyl acrylate, which has two (2) alkyl carbon atoms (less than 5 carbon atoms) and a Tg = -24 ℃ (Tg of 20 ℃ or less), and is present in an amount of 2 to 15 wt.%, which overlaps that presently claimed (10 mass% or less), towards a balance of holding force and adhesion to low polarity adherends (para 0031-0034); and that,
the (a2) C4 to C24 (meth)acrylate comprises (a2-1) a (meth)acrylate having a C4 to C7 alkyl group and (a2-2) a (meth)acrylate having a C8 to C24 alkyl group in respective proportions of 1/99 to 85/15 towards a balance of holding force and adhesion to low polarity adherends (para 0040-0041).
The (a2-1) monomer is, inter alia, hexyl methacrylate, which has six (6) alkyl carbon atoms (5 carbon atoms or more) and a Tg = -5 ℃ (Tg of 20 ℃ or less), and the (a2-2) monomer is, inter alia, 2-ethylhexyl acrylate, which has eight (8) alkyl carbon atoms (5 carbon atoms or more) and a Tg = -50 ℃ (Tg of 20 ℃ or less). The monomers (a2) are present in an amount of 55 to 97 wt.% (30 mass% or more) towards a balance of holding force and adhesion to low polarity adherends (para 0037-0043).
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).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
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 (a1) monomer and the (a2) monomer(s) in the proportions presently claimed towards the adhesive composition of Ikebata demonstrating the balance of holding force and adhesion to low polarity adherends as in the present invention.
Ikebata continues to teach that the adhesive composition comprises crosslinking agents (B) (cross-linked polymer) comprising an epoxy crosslinking agent towards a balance of adhesiveness and holding force, and an isocyanate crosslinking agent towards long-lasting stability in high temperature/humidity environment and adhesiveness and moist heat resistance (para 0076-0078).
The epoxy crosslinking agent is present at, inter alia, 0.02 to 0.05 parts by weight (amount ME is 0.01 to 0.10 parts by mass) per 100 parts by weight of the acrylic resin (A) (para 0088); and the isocyanate crosslinking agent is present at, inter alia, 0.3 to 0.9 parts by weight (amount MI is 0.10 parts by mass or more) per 100 parts by weight of the acrylic resin (A) (para 0089). The upper limit of 0.05 parts by weight for the epoxy crosslinking agent and the lower limit of 0.3 parts by weight for the isocyanate crosslinking agent guarantee a ratio of MI/ME ˃ 1.
Ikebata further teaches that the adhesive composition comprises a tackifier (C) in an amount of 1 to 50 parts by weight per 100 parts by weight of the acrylic resin (A), which overlaps that presently claimed (10 parts by mass or more), towards excellent physical properties (para 0090-0096).
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 tackifier (C) in the proportions presently claimed towards the adhesive composition of Ikebata demonstrating improved physical properties (e.g. tack) as in the present invention.
Moreover, Ikebata teaches an adhesive tape comprising an adhesive agent layer formed via crosslinking the adhesive composition and applying the adhesive agent layer on the surface of a substrate (base material) (para 0101-0103). While Ikebata does not specifically exclude the disclosed adhesive tape from providing (i.e., stacked) the adhesive agent layer 0.5 mm or more inside the edges of the substrate on one more sides of said substrate, Ikebata does not require such a layered arrangement.
In addition, applying the adhesive agent layer of Ikebata on the substrate in manner other than that excluded by the presently claimed proviso would have been well within the knowledge available to the skilled artisan before the effective filing date of the present invention based on the physical/layering requirements of the prior art’s intended application as in the present invention.
Lastly, the recitation in the claims that the adhesive is used “for fixing an electronic component or electronic-component constituent material to be subjected to a heat treatment at 80 ℃ or more” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Ikebata discloses an adhesive tape as presently claimed, it is clear that the adhesive tape of Ikebata would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Regarding claim 5, Ikebata teaches that the weight average molecular weight (Mw) of the acrylic resin (A) is 300,000 to 1,500,000 (para 0068).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikebata et al. (US 2020/0002579 A1) in view of Jeong et al. (US 2011/0143135 A1).
Regarding claim 4, Ikebata does not specify a gel fraction.
However, Jeong teaches an adhesive composition comprising a (meth)acrylate copolymer and having a gel fraction of 85% or more (para 0016), which overlaps that presently claimed (60 to 90%), towards superior peel strength (para 0051) and high elasticity (para 0066).
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 adhesive composition of Ikebata with the presently claimed gel fraction towards said composition demonstrating superior peel strength (para 0051) and high elasticity based on the adhesion and elastic properties required of the prior art’s intended application as in the present invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikebata et al. (US 2020/0002579 A1).
Regarding claim 1, Ikebata teaches an adhesive composition as in the rejection of current claim 2 as set forth above, which is equally applicable to the presently claimed invention.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ikebata et al. (US 2020/0002579 A1).
Regarding claim 3, Ikebata teaches an adhesive composition as in the rejection of current claim 2 as set forth above, which is equally applicable to the presently claimed invention.
In addition, the recitation in the claims that the adhesive is used “for holding winding of a capacitor element” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Ikebata discloses an adhesive tape as presently claimed, it is clear that the adhesive tape of Ikebata would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A 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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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 3/20/2026