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 .
Response to Amendment
Applicant’s arguments, see the amendments to the specification and the remarks filed 6/18/2026, with respect to the objection to the specification as set forth in paragraph 4 of the action mailed 3/25/2026, have been fully considered and are persuasive. The objection to the specification has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/18/2026, with respect to the rejection of claim 1 under 35 U.S.C. 112(b) as set forth in paragraph 6 of the action mailed 3/25/2026, have been fully considered and are persuasive. The rejection of claim 1 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/18/2026, with respect to the rejection of claims 2 and 4-5 under 35 U.S.C. 112(b) as set forth in paragraph 7 of the action mailed 3/25/2026, have been fully considered and are persuasive. The rejection of claims 2 and 4-5 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/18/2026, with respect to the rejection of claim 3 under 35 U.S.C. 112(b) as set forth in paragraph 8 of the action mailed 3/25/2026, have been fully considered and are persuasive. The rejection of claim 3 has been withdrawn.
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 § 112
Claim 1 and claims 2 and 4-5 and claim 3 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 1 and claims 2 and 4-5 and claim 3, the claim recite “…both low-Tg (meth)acrylic acid alkyl ester monomers…and a carboxyl group-containing monomer…” and then later in the claim recites “…a low-Tg (meth)acrylic acid alkyl ester monomer comprising 5 or more alkyl carbon atoms and a low-Tg (meth)acrylic acid alkyl ester monomer comprising less than 5 alkyl carbon atoms. The claims recites that the original low-Tg (meth)acrylic acid alkyl ester monomers (plural monomers) has a Tg of 20 ℃ or less, but the low-Tg (meth)acrylic acid alkyl ester monomer comprising 5 or more alkyl carbon atoms and the low-Tg (meth)acrylic acid alkyl ester monomer comprising less than 5 alkyl carbon atoms are both introduced with the “a” article in a manner suggesting that they are not further limiting the originally recited low-Tg (meth)acrylic acid alkyl ester monomers (plural monomers) having a Tg of 20 ℃ or less.
In addition, neither of the low-Tg (meth)acrylic acid alkyl ester monomers comprising 5 or more alkyl carbon atoms and less than 5 alkyl carbon atoms are further identified with the respective Tg ranges as was the original low-Tg (meth)acrylic acid alkyl ester monomers (plural monomers) has a Tg of 20 ℃ or less.
Thus, it is unclear from the claim limitations what is, and is not, being claimed as it is 1) unclear if the “both” limitation is referring to the low-Tg (meth)acrylic acid alkyl ester monomers and the carboxyl group-containing monomer; or if the “both” limitation is referring to the later-recited low-Tg (meth)acrylic acid alkyl ester monomer comprising 5 or more alkyl carbon atoms and the low-Tg (meth)acrylic acid alkyl ester monomer comprising less than 5 alkyl carbon atoms.
Claim Rejections - 35 USC § 103
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 and Aizawa et al. (US 2019/0194497 A1), both of which demonstrate the 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) at least one selected from the group consisting of a (meth)acrylate having a C1 to C3 alkyl group, t-butyl (meth)acrylate, a cyclic structure-containing monomer, and a C2 to C10 vinyl ester monomer;
(a2) at least one selected from a (meth)acrylate having a C4 to C24 alkyl group other than t-butyl (meth)acrylate;
(a3) a terminal carboxyl group-containing monomer given by formula (1);
(a4) a (meth)acrylic acid;
and may include (a5) a hydroxyl group-containing monomer and (a6) other polymerizable monomer (para 0028-0029). The Examiner notes that the (a4) (meth)acrylic acid, as well as monomer (a3), teach a carboxyl group-containing monomer.
The (a2) (meth)acrylates are present in an amount of 55 to 97 wt.% and comprises:
(a2-1) a (meth)acrylate having a C4 to C7 alkyl group such as, inter alia, n-butyl acrylate, which has four (4) alkyl carbon atoms (less than 5 carbon atoms) and a Tg = -54 ℃ (Tg of 20 ℃ or less), which provides a balance of adequate holding force and adhesiveness to lower polarity adherends;
and (a2-2) a (meth)acrylate having a C8 to C24 alkyl group such as, 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), and which provides lower polarity and lower Tg;
which said (a2-1) and (a2-2) are present in respective proportions of 1/99 to 85/15, which respectively overlaps that presently claimed (10 mass% or less, 30 mass% or more), towards a balance of holding force and adhesion to low polarity adherends (para 0037-0043), both of which teach constituent monomers including low-Tg (meth)acrylic acid alkyl ester monomers.
The (a1) cyclic structure-containing monomer is selected from, inter alia, dicyclopentanyl (meth)acrylate, which respectively demonstrate Tg values of 120 ℃ for dicyclopentanyl acrylate and 175 ℃ for dicyclopentanyl methacrylate as evidenced via Aizawa (see para 0045 therein); and both of which teach an alicyclic group-containing (meth)acrylic acid ester having 5 or more carbon atoms in the alicyclic group and a Tg of -20 or more.
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 (a2-1) monomer and the (a2-2) monomer(s) in the proportions presently claimed towards the adhesive composition of Ikebata demonstrating the balance of polarity, Tg, holding force and adhesiveness to lower polarity adherends as required by the prior art’s intended application 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 (not more than 10 parts by mass), 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 based on the degree of tack required of the prior art’s intended application 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.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 6/18/2026, with respect to the rejections of claims 2 and 5 over Ikebata et al. under 35 U.S.C. 103; claim 4 over Ikebata et al. in view of Jeong et al. under 35 U.S.C. 103; claim 1 over Ikebata et al. under 35 U.S.C. 103; claim 3 over Ikebata et al. under 35 U.S.C. 103 as set forth in paragraphs 11-14 of the action mailed 3/25/2026, have been fully considered but they are not persuasive.
It is respectfully noted that the Examiner is interpreting that the “both” requirement in the claim language reciting “…copolymerization of constituent monomers including both low-Tg (meth)acrylic acid alkyl ester monomers…and a carboxyl group-containing monomer…” is referring to the low-Tg (meth)acrylic acid alkyl ester monomers and the carboxyl group-containing monomer, and that the low-Tg (meth)acrylic acid alkyl ester monomer comprising 5 or more alkyl carbon atoms and the low-Tg (meth)acrylic acid alkyl ester monomer comprising less than 5 alkyl carbon atoms are further limiting the low-Tg (meth)acrylic acid alkyl ester monomers (plural monomers) having a Tg of 20 ℃ or less.
Thus, as recited, the base polymer of claim 1, claim 2 and claim 3 requires four monomers:
the low-Tg (meth)acrylic acid alkyl ester monomer comprising 5 or more alkyl carbon atoms and having a Tg of 20 ℃ or less;
the low-Tg (meth)acrylic acid alkyl ester monomer comprising less than 5 alkyl carbon atoms and having a Tg of 20 ℃ or less;
the carboxyl group-containing monomer; and,
one of, but not both of, the newly recited (meth)acrylic acid alkyl ester monomer comprising 5 or more alkyl carbon atoms and having a Tg of 20 ℃ or more, or a (meth)acrylic acid alkyl ester monomer comprising an alicyclic group of 5 or more carbon atoms and having a Tg of -20 ℃ or more. Indeed, all four of these monomers are required of the presently claimed invention as recited in at last current claims 1-3.
In the first full paragraph on page 23 of the remarks, the Applicant’s arguments appear to suggest that the “both” requirement is intended to recite that the “third monomer” is the recited carboxyl group-containing monomer, or that the “third monomer” is one of the monomers newly amended (i.e., hereinafter as a third monomer, see Limitation A)). It is noted that the carboxyl group-containing monomer does not appear in “limitation A). However, in the Applicant’s discussion of Examples 18-19, it appears that the “third monomer” is one of the amended monomers as represented in the presently disclosed data as IBOA (i.e., the claimed (meth)acrylic alkyl ester having a Tg of 20 ℃ or more) or FA-513M (i.e., the claimed alicyclic(meth)acrylic alkyl ester).
Examples 2 and 13 presently disclosed teach a base polymer formed 2-ethylhexyl acrylate (2-EHA), isobornyl acrylate (IBOA) and acrylic acid (AA), with each respectively representing the claimed the low-Tg (meth)acrylic acid alkyl ester monomer comprising 5 or more alkyl carbon atoms, the (meth)acrylic acid alkyl ester monomer comprising 5 or more carbon atoms and having a Tg of 20 ℃ or more, and the carboxyl group-containing monomer.
However, said Examples 2 and 13 do not provide a fourth monomer; in this case, the low-Tg (meth)acrylic acid alkyl ester monomer comprising less than 5 alkyl carbon atoms (e.g., butyl acrylate). In fact, Examples 1-10 and 24-43 are all identically limited. Examples 11-19 and 23 also do not demonstrate the low-Tg (meth)acrylic acid alkyl ester monomer comprising less than 5 alkyl carbon atoms (e.g., butyl acrylate).
Examples 20-22 employ the low-Tg (meth)acrylic acid alkyl ester monomer comprising less than 5 alkyl carbon atoms (in this case butyl acrylate), but do not include the presently claimed, and thus required, (meth)acrylic acid alkyl ester monomer comprising an alicyclic group of 5 or more carbon atoms and having a Tg of -20 ℃ or more such as the dicyclopentanyl methacrylate (FA-531M); or the (meth)acrylic acid alkyl ester monomer comprising an alkyl group of 5 or more carbon atoms and having a Tg of 20 ℃ or more such as the IBOA.
Thus, it is unclear from the disclosed data if the presently claimed invention as recited in each of independent claim 1-3 would demonstrate the critical low heat shrinkage and terminal peeling properties versus adhesives outside the scope of said presently claimed invention as recited in each of independent claim 1-3. The Applicant’s attention is respectfully directed to the prior art rejections set forth above, wherein it is noted that the cited prior art teaches or renders obvious all the limitations of the presently claimed invention of current claims 1-5.
Turning now to the Applicant’s arguments against the epoxy and isocyanate crosslinkers disclosed in Ikebata, 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)). Also, Ikebata not only teaches both epoxy and isocyanate crosslinkers, but instructs one skilled in the art as to what each crosslinker advantageously provides an adhesive composition in which they are included. See the prior art rejections set forth above in this matter.
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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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 8/1/2026
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