DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the addition of new claim 15 in the amendments filed 7/16/2026.
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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 7/16/2026, with respect to the rejection of claim 7 under 35 U.S.C. 112(b) as set forth in paragraph 7 of the action mailed 3/18/2026, have been fully considered and are persuasive. The rejection of claim 7 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 7/16/2026, with respect to the double-patenting rejection of claims 1, 3-7 and 13 over claims 1-2, 4-5, 7-8, 11 and 13 of copending Application No. 14/171199 as set forth in paragraph 11 of the action mailed 3/18/2026, have been fully considered and are persuasive. The rejection of claims 1-2, 4-5, 7-8, 11 and 13 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 7/16/2026, with respect to the double-patenting rejection of claims 1, 3-4 and 6-14 over claims 1-11 of copending Application No. 18/697248 as set forth in paragraph 12 of the action mailed 3/18/2026, have been fully considered and are persuasive. The rejection of claims 1, 3-4 and 6-14 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 7/16/2026, with respect to the double-patenting rejection of claims 1, 3-4 and 7-14 over claims 1-11 of copending Application No. 18/696986 as set forth in paragraph 12 of the action mailed 3/18/2026, have been fully considered and are persuasive. The rejection of claims 1, 3-4 and 7-14 has been withdrawn.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 § 103
Claim(s) 1-8, 10 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagata et al. (US 2014/0147668 A1).
Regarding claim 1-2 and 15, Yamagata teaches a PSA composition comprising 100 parts by weight of polymer (A) (first polymer, base polymer), 0.05 to 3 parts by weight of (meth)acrylic polymer (B) (second polymer), and 0.005 to part by weight of an ionic compound (C) (para 0043); which said ionic compound (C) is an ionic liquid (para 0019). Yamagata also teaches that the glass transition temperature (Tg) of the (meth)acrylic polymer (B) 90 to 280 ℃ (para 0118) with the inventive examples demonstrating Tg values ranging from 59 to 130 ℃ (para 0232; Table 2), which identical to that presently claimed (Tg of 40 to 180 ℃).
Yamagata does not disclose a difference in an HSP value between the polymers (A) and (B), but Yamagata does teach that the polymer (A) is easily compatible with the polymer (B) towards transparency (para 0046), which said compatibility is presently disclosed as analogous to said HSP value difference (see para 0099 of the specification as originally filed).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the HSP value difference of the polymer (A) and the polymer (B) of Yamagata to that presently claimed (DHSP = 0 to 3, DHSP = 0 to 2.5, current claim 2; DHSP = 0 to 2, current claim 15) for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards the PSA composition of Yamagata demonstrating the degree of polymeric compatibility and transparency as required by the prior art’s intended application as in the present invention.
Regarding claims 3 and 10, as noted above, Yamagata teaches that (meth)acrylic polymer (B) (i.e. a tackifier second polymer) is present at 0.05 to 3 parts by weight per 100 parts by weight of polymer (A), which overlaps that presently claimed (1 to 50 parts by weight, current claim 3; and 1 to 50 parts by weight, current claim 10), towards a balance of transparency and peeling (para 0179).
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 (meth)acrylic polymer (B) in the presently claimed proportions towards the PSA of Yamagata demonstrating a balance of transparency and peeling as in the present invention.
Regarding claims 4-5, Yamagata teaches that the ionic liquid comprises, inter alia, 1-butyl-3-methylpyridinium and bis(fluorosulfonyl)imide (para 0154).
Regarding claim 6, while Yamagata does not disclose the ionic liquid in an amount identical to that presently claimed (0.5 to 30 parts by mass), Yamagata teaches that the ionic liquid is provided towards an antistatic property (para 0124).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the proportions of the disclosed ionic liquid to the presently claimed amount for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards the PSA composition of Yamagata demonstrating the degree of antistatic properties as required by the prior art’s intended application as in the present invention.
Regarding claim 7, Yamagata teaches that the polymer (A) is an acrylic polymer (para 0046) comprising a copolymerizable monomer such, inter alia, carboxyl group-containing monomers (para 0054).
Regarding claim 8, Yamagata teaches that polymer (B) is a tackifier (para 0103).
Regarding claim 12, the recitation in the claims that the PSA composition is used “for electrical bonding” 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 Yamagata discloses a PSA composition as presently claimed, it is clear that the PSA composition of Yamagata would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Regarding claims 13-14, Yamagata teaches a surface protective sheet towards protecting an optical film, and comprising a PSA sheet comprising a PSA layer formed from the PSA composition of a substrate (para 0033-0037). The surface protective sheet adheres (bonded body) to an ITO conductive film (conductive material) (para 0024).
Claim(s) 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagata et al. (US 2014/0147668 A1) in view of Oshita et al. (US 2011/0230609 A1).
Regarding claims 9 and 11, Yamagata teaches that the polymer (B) serves as a tackifier as noted above, but does not disclose a softening point, or a terpene-based or rosin-based tackifier.
However, Yamagata does disclose that the PSA composition further comprises arbitrary components common in the field of PSAs such as, inter alia, tackifying resins (para 0180).
In addition, Oshita teaches an adhesive composition for an optical film comprising an acrylic polymer and an ionic liquid antistatic agent (para 0035-0036, 0044, 0121-0137), and further comprising conventional tackifier resins towards adjusting the tack, adhesive strength and retention, which said adhesive strength is provided via a tackifier comprising a softening point of 50 to 150 ℃ and selected from, inter alia, terpene and rosin resins (para 0154-0157).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ terpene and/or rosin resins in addition to the polymer (B) as additional second polymer having the presently claimed softening point towards the PSA composition of Yamagata demonstrating the tack, adhesive strength and retention as required of the prior art’s intended application as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 7/16/2026, with respect to the rejections of claims 1, 4-5, 7-8 and 12-14 over Yamagata et al. under 35 U.S.C. 102(a)(1); claims 2-3, 6 and 10 over Yamagata et al. under 35 U.S.C. 103; and claims 9 and 11 over Yamagata et al. in view of Oshita et al. under 35 U.S.C. 103 as set forth in paragraphs 5 and 8-9 of the action mailed 3/18/2026, have been fully considered but they are not persuasive.
In regards to the previous rejection of claims 1, 4-5, 7-8 and 12-14, the Examiner notes that, subject to the present claim amendments, the rejection under 35 U.S.C. 102(a)(1) are withdrawn. The Examiner also respectfully directs the Applicant’s attention 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, to include the difference in HSP values (DHSP) between polymer (A) (i.e., the presently claimed first base polymer) and the (meth)acrylic polymer (B) (i.e., the presently claimed second polymer).
Turning now to the Applicant’s arguments, the Examiner submits that, analogous to the instant disclosure cited by the Applicant (para 0099), Yamagata specifies that polymers (A) and (B) are “easily compatible...” towards “...high transparency” (para 0046). While not specifically disclosed, one skilled in the art would recognize this compatibility as indicative (indeed, required) of low DHSP values, and adjusting the DHSP between polymers (A) and (B) to the presently claimed range would have been an obvious and recognizable adjustable parameter based on the compatibility, and the attendant transparency, required of the prior art’s intended application.
In support of the Examiner’s position, attention is respectfully directed to the disclosure of US 2021/0032504 A1 to Tabata et al., wherein it is noted that the HSP value is a measure of the compatibility between two polymers towards transparency in adhesive compositions. Put another way, HSP in an index indicating how much one substance (polymer (A)) can be dissolved in another substance (polymer (B)), which demonstrates similar polarity between the two polymers (see para 0075-0084 therein).
It is noted that Yamagata is directed to adhesives demonstrating high transparency (see also, for example, para 0014). It is also noted that both polymers (A) and (B) are (meth)acrylic-based polymers comprising polar monomers (see, for example, para 0049, 0053, 0113-0114). Indeed, while Yamagata initially states that polymer (A) is not particularly limited, Yamagata does disclose an in-depth disclosure of the components of a (meth)acrylic polymer (a) as said polymer (A) (see para 0049-0102).
It is further noted that PSAs of Yamagata are intended to be used in optics, which would conspicuously be concerned with transparency. Therefore, the Examiner respectfully re-asserts that, while Yamagata does not specify a DHSP value range for polymer (A) and (B), it would have been obvious to one skilled in the art that the PSA composition of Yamagata would comprise polymers (A) and (B) with the DHSP value relationship based on the degree of transparency required of the PSAs intended application as in the present invention.
In response to the Applicant’s allegations that the prior art rejections impermissibly relied on the Applicant’s own specification, the Examiner directs the Applicant’s attention to MPEP 804 where it is disclosed that
“the specification can always be used as a dictionary to learn the meaning of a term in a
patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those
portions of the specification which provide support for the patent claims may also be
examined and considered when addressing the issue of whether a claim in an application
defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d
438,164 USPQ 619,622 (CCPA 1970).
(Examiner’s emphasis).
Also, MPEP 2145(A)(A) provides that,
“Applicants may argue that the examiner’s conclusion of obviousness is based on
improper hindsight reasoning. However, "[a]ny judgment on obviousness is in a sense
necessarily a reconstruction based on hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill in the art at the time
the claimed invention was made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392,
1395, 170 USPQ 209, 212 (CCPA 1971).
(Examiner’s emphasis).
Indeed, as demonstrated via the Tabata, one skilled in the art would have recognized that, while not specified, Yamagata’s PSA compositions would necessarily have required low DHSP value towards attaining the required transparency, and without the assistance of the present disclosure.
Moreover, as instructed in Tabata, adjusting the DHSP values can be determined via the adjustment of various aspects of the PSAs compositional elements (e.g., dispersive, polar H-bonding forces) (para 0078-0086). Therefore, while Yamagata does not disclose the DHSP values of the disclosed polymers, as noted above, one skilled in the art would understand that adjusting the DHSP value between the two polymers of the PSA composition of Yamagata would result in said PSA demonstrating the effective transparency as required by the prior art’s intended application. That is, while Yamagata does not specify the DHSP value as a result-effective variable, Yamagata does require transparency, and thus one of ordinary skill would understand that disclosed polymers (A) and (B) would require low DHSP values between them.
MPEP 2123(I) instructs that
“The use of patents as references is not limited to what the patentees describe as their
own inventions or to the problems with which they are concerned. They are part of the
literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33,
216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009,
158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
(Examiner’s emphasis).
The Examiner respectfully contends that the Applicant’s assertion that the presently claimed invention achieves unexpectedly superior moisture and heat stability is not persuasive. In this spirit, the Applicant is reminded that
As set forth in MPEP 716.02(d), whether unexpected results are the result of
unexpectedly improved results or a property not taught by the prior art, “objective
evidence of nonobviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In other words, the showing of unexpected results must
be reviewed to see if the results occurred over the entire claimed range, In re Clemens,
622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of the DHSP value of 0 to 3, while the data in Table 1 demonstrates values only ranging from 0.1 to 1.9. The Examiner acknowledges that the presently claimed Tg range for the second polymer is commensurate in scope with the data from said Table 1.
However, it is significant to note that first and second polymers presently claimed present a much broader scope that the acrylic-based compounds in all the inventive examples. Indeed, the Applicant’s call into question Yamagata’s disclosure allowing for other polymers other than the acrylic-based polymer. Current claim 7 also provides for the first polymer to comprise non-acrylic-based polymers.
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 9/8/2026
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