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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 9 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it reads as a “use” claim. MPEP 2173.05(q) holds that "use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101.
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 9 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. The claim is a “use” claim with no real method steps provided and MPEP 2173.05(q) states that Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b).
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.
Claim(s) 1, 2, 4-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over 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]). Soejima also 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. 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."
Soejima generally discloses the claimed components and ranges within lie within the claimed ranges. Choosing from within these suitable choices set forth by Soejima would have been a matter of obviousness, particularly given the known suitability. In addition, the examiner notes that the courts have held that 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 previously 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.
Claim(s) 1, 2, 4-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ogino et al. (WO 2017187800). For purposes of citations, US equivalent (2021/0179893) is used.
Regarding claim 1, Ogino discloses a pressure sensitive adhesive sheet that is used to provide bonding that is reversible with the application of voltage ([0018], [0082]). Ogino further discloses that the adhesive comprises an ionic liquid ([0018]), a polymer ([0083]), and a tackifier ([0055]), whereby a useful tackifier is SUMILITERESIN PR-12603 ([0159]). The foregoing commercially available tackifier has a KOH value of below 20, thus overlapping with the claimed range. Ogino further discloses that the pressure sensitive adhesive can be used upon a conductive substrate ([0081]), which reads on the claimed bonded body with conductive substrate. As for the further claimed conductive material in the adhesive, the examiner notes that this fails to exclude the prior art form consideration as such for two reasons – (1) there is no quantification and most things have some degree of conductivity even if some are lower than others, and (2) because Ogino specifically provides the use of electrolytes, metal salts, anions, cations and other ionic additives that naturally provide conduction ([0084]) to the adhesive.
The teachings of Ogino appear to nearly anticipate the claims with the exception of the overlapping ranges; however, the courts have held 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 claims 2 and 4, Ogino discloses the use of tackifiers, generally ([0055]). Ogino, further discloses that a suitable choice is SUMILITERESIN PR-12603 ([0159]). That particular resin is a rosin-based tackifying resin with a softening point of 130 degrees Centigrade.
Regarding claim 5, Ogino discloses an anion of (CF3SO2)2N which reads on the claimed bis(trifluoromethanesulfonyl)imide anion ([0084]).
Regarding claim 6, Ogino discloses that suitable choices for the polymer in the pressure sensitive adhesive include urethanes, polyesters and acrylics ([0049]).
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.
Response to Arguments
The Applicant's arguments filed 09/10/2026 have been fully considered but they are not persuasive.
The applicant argues that the prior art of record does not teach the presently claimed electrically debondable construction.
The examiner has fully considered this argument but respectfully disagrees for two primary reasons.
First, the present claims are drawn to a product, not a method. As such, the claims are differentiated solely based on structure, not the method by which the product is used. In this present situation, Soejima meets the claimed structural requirements. First, Soejima has an ionic liquid that is expected to provide conduction, and Soejima also provides the same general polymer and tackifier (as set forth above) – as such the expectation is that the application of a strong enough voltage would be expected to disrupt the system as the ionic liquid provides conductive means. Further, there is no quantification as to the voltage other than to say voltage “can be used” to debond. Additionally, the claims are not specified in a way to preclude voltage-based inductive heating to effect bond disruption, and we know via the claims that voltage is required to disrupt the bond (at a least a capability) and we know via Soejima, that heat can disrupt bonds. Under BRI, the current claims fail to exclude the teachings of Soejima as voltage based inductive heating meets the present construction.
Second, newly supplied Ogino explicitly discloses using voltage to disrupt bonding in a PSA system comprising a polymer, tackifier and ionic liquid.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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