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 § 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.
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 - 3, 5 - 8, 11, 12 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi et al (US 2012/0034447) in view of Inoue et al (US 2009/0104450).
With regards to claim 1, Higuchi teaches an acrylic press-sensitive adhesive tape (Abstract, paragraph 34) comprising:
A base polymer (paragraph 43)
A material having a radically polymerizable functional group (paragraph 47)
A thermal polymerization initiator that generates a radical (paragraphs 78 and 82)
A nonionic surfactant (paragraphs 99, 149 and 155) where the content of the nonionic surfactant is disclosed as 0.01 to 2 parts by mass per 100 parts of the base polymer (paragraph 156). While Higuchi does not explicitly say that the range of the surfactant is 0.1 to 10 parts by mass per 100 parts by mass of the base polymer, since the claimed ranges “overlap or lie inside ranged 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 the recitation of "wherein a content of the thermal polymerization initiator is 1.2 to 10 parts by mass with respect to 100 parts by mass of all components excluding the thermal polymerization initiator," Higuchi states "The amount of the thermal polymerization initiator used is not particularly limited, if it is in the range traditionally usable as thermal polymerization initiators" (paragraph 82). Higuchi is silent as to what such range might be.
Inoue teaches a pressure-sensitive adhesive composition that includes 100 parts by weight of a (meth)acrylic polymer comprising 45 to 99.99% by weight of an alkyl (meth)acrylate monomer (i.e., a radically polymerizable functional group) and 0.01 to 2 parts by weight of a peroxide as a crosslinking agent (Abstract). Inoue teaches the use of polymerization initiator preferably from about 0.005 to 1 part by weight (paragraph 62). Inoue further teaches that the peroxide used as polymerization initiator may be used for the crosslinking reaction also (paragraph 72). Thus, Inoue teaches the range of polymerization initiator, when it is a peroxide, to be up to 2 parts by weight, such range overlapping and thus rendering the disclosed range obvious.
It would have been obvious to one of ordinary skill in the art the time of effective filing of the claims of the invention to modify the composition of Higuchi to include up to 2 parts by weight of the thermal polymerization initiator, when such initiator is a peroxide, as taught in Inoue, for the advantage taught in Inoue of using such peroxide for both a polymerization initiator and crosslinking agent.
With regards to claim 2, the teachings of Higuchi and Inoue are presented above. Additionally, Higuchi teaches that the thermal polymerization initiator contains at least one of a peroxide and an azo-based compound (paragraph 82).
With regards to claim 3, the teachings of Higuchi and Inoue are presented above. Additionally, Inoue teaches that peroxides have one-minute half-life temperatures falling within the recited range of 100°C to 150°C (paragraph 69).
With regards to claim 5, the teachings of Higuchi and Inoue are presented above. Additionally, Higuchi teaches that the material having a radically polymerizable functional group is at least one of a polymer having a radically polymerizable functional group and a monomer having a radically polymerizable functional group (paragraphs 47 – 76).
With regards to claim 6, the teachings of Higuchi and Inoue are presented above. Additionally, Higuchi teaches that the radically polymerizable functional group is a (meth)acryloyl group (paragraph 51).
With regards to claim 7, the teachings of Higuchi and Inoue are presented above. Additionally, Higuchi teaches that the polymer having a radically polymerizable functional group is contained as a base polymer (paragraph 46).
With regards to claim 8, the teachings of Higuchi and Inoue are presented above. Additionally, Higuchi teaches that the base polymer is an acrylic polymer (paragraphs 45 – 47).
With regards to claim 11, the teachings of Higuchi and Inoue are presented above. Additionally, Higuchi teaches an acrylic press-sensitive adhesive tape, i.e., a narrow sheet (Abstract, paragraph 34) having a pressure-sensitive adhesive layer (paragraphs 43 - 44) made from the adhesive composition having an acrylic monomer as the principal monomer component (paragraph 45).
With regards to claim 12, the teachings of Higuchi and Inoue are presented above. Additionally, Higuchi teaches a peeling method for peeling the pressure sensitive adhesive tape (i.e., narrow sheet) which is bonded to an adherend, includes subjecting the adherend to which the pressure-sensitive adhesive sheet is bonded to a heat treatment at 100° to 250°C for a period of 5 to 15 minutes (by hot air drier) (paragraph 31), such range overlapping and thus rendering obvious the recited range of 160°C to 250°C for 3 minutes to 5 hours, and then peeling the adherend and the pressure-sensitive adhesive sheet at an interface therebetween (see examples at paragraphs 232 - 239). Regarding the recitation of "without a prior heat treatment at 100°C or higher," the examples at paragraphs 232 - 239 teach bonding of the adhesive sheet under pressure to a polycarbonate plate, and then three peel tests: (1) an initial peel adhesive strength test; (2) a peel test after storage at 80°C for 2 months; and (3) a peel test after heat expansion treatment. Thus, Higuchi does not teach any prior heat treatment at 100°C or higher.
With regards to claim 15, the teachings of Higuchi and Inoue are presented above. Additionally, Higuchi teaches that where a post-heating peeling force of a pressure-sensitive adhesive sheet prepared from the pressure-sensitive adhesive composition is 50% or less of an initial peeling force of the pressure-sensitive adhesive sheet (paragraph 27).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi et al (US 2012/0034447) in view of Inoue et al (US 2009/0104450) as applied to claim 1 above, and further in view of Jun et al (Japanese Patent 2021095526).
With regards to claim 4, the teachings of Higuchi and Inoue are presented above. Inoue states that the half life of the peroxide is an indicator of how fast the peroxide can be decomposed and refers to the time required for the amount of the peroxide to reach one half of its original value (paragraph 70). Higuchi and Inoue fail to explicitly disclose that the thermal polymerization initiator has a 10-hour half-life temperature of 60°C to 100°C.
Jun discloses a removable pressure-sensitive adhesive composition and sheet (paragraph 1), in the same field of endeavor as Higuchi and Inoue, where the polymerization initiator (C) being preferably an organic peroxide that preferably has a high half-life temperature, such as a 10-hour half-life temperature of 80°C (paragraph 52).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have the thermal polymerization initiator have a 10-hour half-life temperature of 60°C to 100°C, as suggested by Jun, in Higuchi’s composition as modified by Inoue. The rationale being that, as stated by Jun, it is preferred in the viewpoint of storage stability (paragraph 52).
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi et al (US 2012/0034447) in view of Inoue et al (US 2009/0104450) as applied to claim 1 above, and further in view of Niwa et al (US 2011/0159195).
With regards to claim 13, the teachings of Higuchi and Inoue are presented above. Higuchi and Inoue fail to explicitly disclose that the content of the nonionic surfactant is 5 to 10 parts by mass per 100 parts by mass of the base polymer.
Niwa discloses an acrylic pressure-sensitive adhesive composition (Abstract), in the same field of endeavor as Higuchi and Inoue, where Niwa teaches that the content of the nonionic surfactant is 0.2 to 10 parts by mass per 100 parts byparts by mass of the base polymer (paragraph 92), overlapping with the claimed range of 5 to 10 parts by mass per 100 parts by mass of the base polymer.
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have the content of the nonionic surfactant be 5 to 10 parts by mass per 100 parts by mass of the base polymer, as suggested by Niwa, in Higuchi’s composition as modified by Inoue. The rationale being that, as stated by Niwa, it is a preferred from the viewpoint of efficiency (paragraph 102).
With regards to claim 14, the teachings of Higuchi and Inoue are presented above. Higuchi and Inoue fail to explicitly disclose what specifically the nonionic surfactant is.
Niwa discloses an acrylic pressure-sensitive adhesive composition (Abstract), in the same field of endeavor as Higuchi and Inoue, where Niwa discloses that the nonionic surfactant is at least one selected from the group consisting of a polyoxyethylene alkyl ether, a polyoxyethylene alkylphenyl ether, a sorbitan fatty acid ester, a polyoxyethylene glyceryl ether fatty acid ester, and a polyoxyethylene-polyoxypropylene block copolymer (paragraph 92).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have selected a nonionic surfactant from the group consisting of a polyoxyethylene alkyl ether, a polyoxyethylene alkylphenyl ether, a sorbitan fatty acid ester, a polyoxyethylene glyceryl ether fatty acid ester, and a polyoxyethylene-polyoxypropylene block copolymer, as suggested by Niwa, in Higuchi’s composition as modified by Inoue. The rationale being that, as stated by Niwa, it is a preferred from the viewpoint of efficiency (paragraph 102).
Response to Arguments
14. Applicant's arguments filed February 5, 2026 have been fully considered but they are not persuasive. Applicant argues that the prior art made of record does not teach or suggest the amendment where the amount of nonionic surfactant is 0.1 to 10 parts by mass per 100 parts by mass of the base polymer. The Examiner respectfully disagrees since the prior art states that the amount of nonionic surfactant can be between 0.01 to 2 parts by mass per 100 parts by mass of the base polymer. While the range in the prior art is not the same as the claimed range, both of them overlap, which, according to section 2144.05 of the MPEP, a prima facie case of obviousness exists.
Conclusion
15. 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.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHEL RIVERA/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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