DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the addition of new claim 12 in the amendments file 7/16/82026.
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 remarks filed 7/16/2026 and the Interview Summary mailed 6/25/2026, with respect to the objection to the specification as set forth in paragraph 2 of the action mailed 3/18/2026, have been fully considered and are persuasive. The objection to the specification has been withdrawn.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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamagata et al. (US 2014/0147668 A1) in view of Yoshida et al. (US 2016/0312073 A1).
Regarding claims 1-4, 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 on a substrate (para 0034-0037), said PSA composition comprising 100 parts by weight of a polyester polymer (A) (polymer), 0.05 to 3 parts by weight of (meth)acrylic polymer (B), and 0.005 to 1 part by mass of an ionic compound (C) per 100 parts mass, which overlaps that presently claimed (0.5 to 30 parts by weight), towards a balance of cohesive force and the suppression of electrostatic potential (para 0043, 0179); which said ionic compound (C) is an ionic liquid (para 0019).
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 ionic liquid (C) in the presently claimed proportions towards the PSA composition demonstrating the balance of cohesive force and the suppression of electrostatic potential as in the present invention.
Yamagata also teaches that the PSA composition comprises arbitrary components such as, inter alia, a tackifying resin (tackifiers) (para 0180), but is silent to said tackifying resins comprising:
a product of the acid value in units of mgKOH/g multiplied by the parts by weight content (per 100 parts by weight of the polymer) of less than 1,200 (current claim 1);
a softening point of 100 ℃ or higher (current claim 2);
in content of 5 to 50 parts by weight per 100 parts by weight of the polymer (A) (current claim 3);
and comprising terpene- or rosin-based tackifying resins (current claim 4).
However, Yoshida teaches a PSA tape (para 0089) for surface protection (para 0086) comprising a PSA composition comprising terpene and/or rosin resin tackifier(s) comprising an acid value of 8 or less and a softening point of 80 to 170 ℃ (para 0056-0058), the latter of which overlaps that presently claimed (100 ℃ or higher); wherein said acid value provides durability (para 0062) and wherein said softening point provides improved adhesive and cohesive strength (para 0063). The acid value of Yoshida was determined with the same standard via JIS K0070 (0123-0124) as presently disclosed (para 0083 of the originally filed specification), and would thus yield the acid value in units of mgKOH/g.
Yoshida also teaches that tackifier is present at 20 to 100 parts by weight per 100 parts by of the polymer, which overlaps that presently claimed (5 to 50 parts by weight), towards improved adhesive and cohesive strength (para 0064). The Examiner notes that the product of the upper limit of the acid value of 8 and the parts by weight range of 20 to 100 for the disclosed tackifier is 160 to 800 which is less than 1,200.
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 resin tackifiers in the PSA compositions of Yamagata in the presently proportions, and comprising a softening point identical to that presently claimed and an acid value demonstrating the presently claimed product with said proportions, based on the durability, adhesion and cohesion properties required of the prior art’s intended application as in the present invention.
Regarding claim 5, Yamagata teaches that the ionic liquid comprises, inter alia, 1-butyl-3-methylpyridinium and a bis(fluorosulfonyl)imide anion (para 0154).
Regarding claim 6, Yamagata teaches that the polymer (A) is a polyester polymer (para 0046) comprising a copolymerizable monomer such, inter alia, carboxyl group-containing monomers (para 0054).
Regarding claims 7-8, as noted above, Yamagata/Yoshida teaches that the PSA composition comprises 0.05 to 3 parts by weight of (meth)acrylic polymer (B) (second polymer), which overlaps that presently claimed (1 to 50 parts by weight), towards a balance of transparency and peeling (para 0179); and a glass transition temperature (Tg) of 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 ℃).
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 claim 9, 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/Yoshida discloses a PSA composition as presently claimed, it is clear that the PSA composition of Yamagata/Yoshida would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Regarding claims 10-11, as noted above, Yamagata/Yoshida teaches a surface protective sheet towards protecting an optical film, and comprising a PSA sheet comprising a PSA layer formed from the PSA composition on a substrate. The surface protective sheet adheres (bonded body) to an ITO conductive film (conductive material) (para 0024).
Claim(s) 1-6, 9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soejima et al. (US 2012/0237764 A1) in view of Yoshida et al. (US 2016/0312073 A1).
Regarding claims 1 and 12, Soejima teaches a PSA tape comprising a substrate and PSA layer on the substrate, which said PSA layer (PSA composition) comprises a polymer and an ionic liquid in an amount of 0.01 to 10 parts by weight per 100 parts by weight of the polymer, which overlaps that presently claimed, towards a balance of sufficient antistatic effect, reduced adherend contamination and the prevention of fraction defect (abstract, 0037); and further comprises a conventional tackifier(s) such as, inter alia, rosin- and terpene-based resins (current claim 4) (para 0063-0064).
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 ionic liquid in the presently claimed proportions towards the PSA composition demonstrating the balance of sufficient antistatic effect, reduced adherend contamination and the prevention of fraction defect as in the present invention.
Soejima is silent to said tackifiers comprising:
a product of the acid value in units of mgKOH/g multiplied by the parts by weight content (per 100 parts by weight of the polymer) of less than 1,200 (current claim 1);
a softening point of 100 ℃ or higher (current claim 2);
in content of 5 to 50 parts by weight per 100 parts by weight of the polymer (A) (current claim 3).
However, the inventive Example 1 does teach that the tackifiers (e.g., rosin phenols) are included in an amount in the vicinity of 15 parts by weight per 100 parts by weight of the polymer (para 0118), which is identical to that presently claimed.
In addition, Yoshida teaches a PSA tape (para 0089) for surface protection (para 0086) comprising a PSA composition comprising terpene and/or rosin resin tackifier(s) comprising an acid value of 8 or less and a softening point of 80 to 170 ℃ (para 0056-0058), the latter of which overlaps that presently claimed (100 ℃ or higher); wherein said acid value provides durability (para 0062) and wherein said softening point provides improved adhesive and cohesive strength (para 0063). The acid value of Yoshida was determined with the same standard via JIS K0070 (0123-0124) as presently disclosed (para 0083 of the originally filed specification), and would thus yield the acid value in units of mgKOH/g.
Yoshida also teaches that tackifier is present at 20 to 100 parts by weight per 100 parts by of the polymer, which overlaps that presently claimed (5 to 50 parts by weight), towards improved adhesive and cohesive strength (para 0064). The Examiner notes that the product of the upper limit of the acid value of 8 and the parts by weight range of 20 to 100 for the disclosed tackifier is 160 to 800 which is less than 1,200.
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 resin tackifiers in the PSA compositions of Soejima in the presently proportions, and comprising a softening point identical to that presently claimed and an acid value demonstrating the presently claimed product with said proportions, based on the durability, adhesion and cohesion properties required of the prior art’s intended application as in the present invention.
Regarding claim 5, Soejima teaches that the ionic liquid comprises, inter alia, bis(trifluoromethanesulfonyl)imide (para 0095).
Regarding claim 6, Soejima teaches that the polymer is an acrylic copolymer (para 0045) (para 0095).
Regarding claim 9, 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 Soejima/Yoshida discloses a PSA composition as presently claimed, it is clear that the PSA composition of Soejima/Yoshida would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soejima et al. (US 2012/0237764 A1) in view of Yoshida et al. (US 2016/0312073 A1).
Regarding claims 10-11, as noted above, Soejima/Yoshida teaches the PSA tape (PSA sheet) comprising a substrate and PSA layer on the substrate (bonded body), which said substrate is a metal-based foil (conductive material) (para 0023).
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 7/16/2026, with respect to the rejection of claims 1-11 over Yamagata et al. in view of Yoshida et al. under 35 U.S.C. 103 as set forth in paragraph 5 of the action mailed 3/18/2026, have been fully considered but they are not persuasive.
In response to the Applicant’s assertions against the totality of the Yoshida invention, and
the alleged “teaching away” of Yoshida, the Examiner respectfully reminds that Applicant that
the "test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference... Rather, the test is what
the combined teachings of the references would have suggested to those of ordinary skill
in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that
"combining the teachings of references does not involve an ability to combine their
specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
In this spirit, Yoshida, which is conspicuously directed to PSA compositions, is analogous to the primary Yamagata invention, and instructs one skilled in the art as to the advantages of employing the disclosed tackifiers in the PSA compositions of Yamagata (e.g., durability, adhesion and cohesion). The Examiner submits that tackifiers employed in a PSA composition, and thus their proportions, would have further been an obvious selection based on, for example, the tack required of the specific prior art application.
It is the Examiner’s position that one skilled in the art would recognize said advantages without being impeded in combining the specific tackifiers (and their properties and proportions) based on the differences between the two inventions; for example, a polyester base polymer versus an acrylate-based polymer, or additional elements such as the hydrolysis-resistance agent(s) of Yoshida. Indeed, the Examiner submits that one skilled in the art would not feel compelled to include all the elements of Yoshida’s invention into that of Yamagata, and thus Yoshida does not teach away from the presently claimed invention.
While Yamagata teaches away from the disclosed ionic liquid present in proportions above the upper limit of 1 part by mass, the proportional range of the ionic liquid in Yamagata overlaps that presently claimed. The Examiner also contends that there is no requirement that either Yamagata or Yoshida recognize a nexus or specified synergy between the ionic liquid and the acid value/content of the tackifier in order to render obvious the claimed invention. As set forth above, Yoshida demonstrates ranges for the acid value and the content of the disclosed tackifier, and the advantages therefrom, which provide an overlaps with the presently recited product between these two properties.
Also, given that the two references teach identical components as that presently claimed, it is reasonable to conclude that tackifier of the prior art would “trap” the ionic liquid of the prior art. In addition, the Applicant is respectfully reminded that,
“[T]he discovery of a previously unappreciated property of a prior art composition, or of
a scientific explanation for the prior art’s functioning, does not render the old
composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use,
new function or unknown property which is inherently present in the prior art does not
necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,
433 (CCPA 1977).
The Examiner further disagrees with the Applicant that the presently claimed invention provides a “factual and legally sufficient” persuasive argument against the obviousness of the presently claimed invention. The Applicant is respectfully 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).
In this regards, the Applicant has not provided data to show that the results do in fact occur over the entire claimed range of the ionic liquid, which ranges from 0.5 to 30 parts by mass in at least current claim 1, but is represented in the data at a singular value of only 0.4 parts by mass. Thus, it is unclear if the alleged results would be obtained for ionic proportions at or near the presently claimed lower and upper limits of 0.5 and 30 parts by mass, respectively; or even interim to 4 parts by mass and said upper and lower limits. Similarly, the scope of the claimed product of less than 1,200 is not adequately represented in the data, which demonstrates a lower limit of 30 and an upper limit of 900.
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 replying 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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