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
This office action is in response to the Amendment filed November 26, 2025 wherein claim 1 was amended. Claims 3 and 7-8 have been canceled. Claims 1-2, 4-6 and 9-11 are pending and considered below.
Claim Rejections - 35 USC § 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable as obvious over the teachings of Soejima et al., JP2016065209 (hereafter Soejima), made of record by Applicant and discussed with reference to the translation provided by Applicant.
Regarding claim 1, Soejima teaches a pressure-sensitive adhesive sheet made from a pressure-sensitive adhesive layer 10 (Fig. 1; para [0011] and para [0059]).
The pressure sensitive adhesive of Soejima is an acrylic pressure sensitive adhesive (paras [0063]-[0065]), that includes a base polymer, identified as an acrylic polymer that is a homopolymer or copolymer, and further includes as monomer component, one or more alkyl(meth)acrylates (para 0063]).
A pressure sensitive adhesive composition of Soejima that includes the acrylic polymer may further include an antistatic material (paras [0023] and [0059] and [0099]). The antistatic material may be an ionic liquid (paras [0025]-[0036]).
The adhesive composition of Soejima may further include a tackifier (paras [0073]-[0075]), Soejima teaching that the tackifier may include a rosin-based tackifier resin, e.g. unmodified rosin, or terpene-based tackifier resins (para [0073]). Unmodified rosins are understood to have a very low hydroxyl value as rosin consists of resin acids and not alcohols, rendering obvious the newly recited range of "80 mg KOH/g or less." Also, at para [0074] of Soejima, a specific example of a commercially available tackifier is "TAMANOL 901" manufactured by Arakawa Chemical Industries, Ltd, is known to have a hydroxyl value of 1 mg-KOH/g or more and less than 20 mg-KOH/g (as evidentiary support, see Horiguchi et al., US 2012/055700 at para [0068]), such range falling within the newly recited range of "80 mg KOH/g or less."
Regarding the new recitation of "a content of the tackifier is 5 to 30 parts by mass with respect to 100 parts by mass of the polymer," this recitation is a narrowing of the range formerly recited in claim 3 (now canceled) of "5 to 50 part by mass with respect to 100 parts by mass of the polymer." Soejima teaches the amount of tackifier relative to 100 parts by weight of the base polymer is "1 part by weight to 80 parts by weight" and particularly preferably "10 parts by weight to 40 parts by weight" (para [0075]), the particularly preferred range closely overlapping the newly recited range. In the case where the claimed ranges "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); MPEP 2144.05.
Regarding claim 2, the commercially available tackifier TAMANOL 901 described at para [0074] of Soejima, has a softening point of 130°C (see attached Arakawa Technical Data Sheet for "TAMANOL 901" published 2005/7/13 at "3. TYPICAL PROPERTIES"), a value that falls within the recited range of "100°C or higher."
Regarding claim 4, the commercially available tackifier TAMANOL 901 described at para [0074] of Soejima is a rosin-based tackifying resin (see the attached Arakawa Technical Data Sheet for "TAMANOL 901" published 2005/7/13 at "1. INTRODUCTION," describing Tamanol 901 as a rosin phenolic resin) .
Regarding claim 5, Soejima teaches examples wherein an anion of the ionic liquid comprises a bis(trifluoromethanesulfonyl)imide anion (para [0036]).
Regarding claim 6, please see the rejection of claim 1 above and the Soejima teaching that its base polymer is an acrylic polymer.
Regarding claim 9, this claim is explicitly directed to a product, a pressure sensitive adhesive composition. The recitation of "which is used for electrical debonding" is a statement of intended use which does not further limit the structure of the composition. Thus, the statement of future use is given no patentable weight.
Regarding claim 10, see the rejection of claim 1 above and the Soejima teaching of a pressure sensitive sheet including a pressure sensitive adhesive layer 10 at Fig. 1, para [0011] and also see claim 1 of Soejima.
Regarding claim 11, Soejima teaches bonding its pressure-sensitive adhesive sheet to an electronic component at paras [0106]-0107]), thus forming a bonded body. The electric component may be an inductor, resistor, or a transparent electrode (para [0106]), all of which are understood as electrically conductive materials.
Response to Arguments
Applicant's arguments filed November 26, 2025 have been fully considered but they are not persuasive.
Applicant's arguments directed to the YS POLYSTAR S145 tackifier discussed in Soejima are moot as this particular tackifier is no longer being used to support the rejection of claim 1. Please see the rejection of claim 1 above, discussing "TAMANOL 901," a tackifier taught by Soejima that has the recited hydroxyl value of 80 mg KOH/g or less.
The examiner finds unpersuasive Applicant's argument that Soejima does not disclose any specific content range for its tackifiers that directly corresponds to the recited "5 to 30 parts by mass" limitation. An obvious rejection does not require that a range "directly" correspond to a recited range. Rather, the requirement for a prima facie case of obviousness is that the claimed ranges "overlap or lie inside ranges disclosed by the prior art." 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); MPEP 2144.05. Thus, in this instance, the examiner as met the burden of showing a prima facie case of obviousness.
Applicant's argument that generally refers to Table 1 and Table 2 of the present application and then states the conclusion that these tables demonstrate that the claimed tackifier hydroxyl value of 80 mg KOH/g or less and content of 5 to 30 parts by mass "is critical to achieving unexpected results," falls short of the required showing for criticality. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960); MPEP 716.01(d). Table 1 is understood to compare examples using tackifiers having a hydroxyl value of 0 to 140 (Examples 1-9) with comparative examples having tackifiers with hydroxyl values of 160 and 200 (Comparative Examples 1 and 2). All of the examples 1-9 are understood as having an acceptable initial adhesive force and acceptable electrical peel force (identified by a "o"), while Comparative Examples 1 and 2 have an unacceptable electrical peel force (identified by an "x"). Applicant's conclusory statement provides no support for finding, for example, that Example 4, that uses a tackifier at 15 parts by mass having a hydroxyl value of 60 mg KOH/g (within the new range), illustrates unexpected results over Example 6, that includes a tackifier at 15 parts by mass having a hydroxyl value of 100 mg KOH/g (outside of the new range). Table 2 is understood to teach Examples 10 to 24 having acceptable initial adhesive force and acceptable electrical peel force, some of which include tackifiers having a hydroxyl value outside of the newly recited range. Thus, Applicant has failed to overcome the finding of prima facie obviousness.
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 CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746