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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 14, 2026 has been entered.
Response to Amendment
An amendment responsive to the final Office Action dated February 23, 2026 was submitted with the request for continued examination on May 14, 2026. Claims 24-27 were added. Claims 4, 16, 18 and 23 were previously canceled. Claims 1-3, 5-15, 17, 19-22 and 24-27 are currently pending.
Applicant’s arguments regarding the prior art rejections of claims 1-3, 5-15, 17 and 19-22 (¶¶ 10-37 of the Office Action) have been fully considered and are persuasive. Therefore, these rejections have been withdrawn. However, upon further consideration, new grounds of rejection of these claims have been made as detailed below. New claims 24-27 have also been addressed 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 1-3, 5-9, 13, 14, 19-22 and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Noda (U.S. Patent Application Publication No. 2024/0182764 A1, cited in previous Office Action) in view of either of Lin et al. (U.S. Patent Application Publication No. 2019/0330504 A1) or Yamamoto et al. (Japanese Patent Publication No. JP 2004-339285 A, machine language translation provided and cited below).
Regarding claim 1, Noda ‘764 discloses an adhesive (Abstract of Noda, adhesive precursor composition) comprising: a crosslinked polymeric matrix ([0045] of Noda, composition is crosslinked product of polyfunctional acrylate oligomers and acrylate monomers and is therefore polymeric) formed by the copolymerisation of: a urethane acrylate polymeric material that has two or more acrylate end groups ([0020] of Noda, adhesive includes a polyfunctional acrylate oligomer such as a urethane acrylate oligomer; [0024] of Noda, suitable urethane acrylates include polymers with two or more acrylate end groups); and a polymeric or oligomeric crosslinker material having two or more acrylate end groups ([0045] of Noda, adhesive precursor composition includes a reactive diluent which facilitates termination and crosslinking of the polyfunctional acrylate; reaction would necessarily be a copolymerization of the two reactants; [0046] of Noda, suitable reactive diluents include hexanediol diacrylate and trimethylol propane triacrylate which compounds have at least two acrylate end groups; since 1,6-hexanediol diacrylate is disclosed by the applicant as a suitable “polymeric or oligomeric crosslinker material”, this terminology is being construed broadly as a crosslinker for polymeric or oligomeric materials and therefore encompasses diacrylate compounds including 1,6-hexanediol diacrylate).
Noda does not specifically disclose that the adhesive compositions are random block copolymers. Moreover, Noda discloses reacting the urethane acrylate oligomer with the reactive diluent but does not specifically disclose that the resulting copolymer is a random block copolymer. Noda, however, discloses polymerizing using a free radical initiator ([0058] of Noda). The resulting copolymer would necessarily be a random block copolymer since the terminal acrylate groups on the urethane acrylate polymer would necessarily randomly react with terminal acrylate groups on other urethane acrylate polymer molecules or with terminal acrylate groups on the crosslinker/reactive diluent.
Noda does not disclose that the adhesive compositions are photothermal compositions which comprise a photothermal agent, wherein the photothermal agent is dispersed within the crosslinked polymeric matrix. Noda, however, discloses that the adhesive is a reversible or temporary adhesive wherein heat is used to facilitate debonding of the adhesive ([0065] of Noda). Lin discloses an adhesive for temporary bonding comprising a polymer and a light absorbing material (Abstract of Lin). According to Lin, the content of the light absorbing material in the adhesive is 2 to 50 wt% ([0023] of Lin). Yamamoto similarly discloses a pressure sensitive adhesive composition exhibiting removability which comprises an adhesive and a photothermal conversion material (Abstract of Yamamoto). Yamamoto also discloses that the adhesive can be a (meth)acrylic polymer ([0018] of Yamamoto), that the photothermal conversion material can be dissolved in the adhesive to form a uniform dispersion ([0010] of Yamamoto) and that the content of the pressure-sensitive adhesive in the composition is 10 to 99.9 % by mass ([0027] of Yamamoto). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to incorporate from about 2 to 50 wt% or 0.1 to 90 wt% of a light absorber in the adhesive composition of Noda since Lin and Yamamoto each establish that it was known to include light absorbers in such amounts in photothermal adhesive compositions ([0023] of Lin; [0027] of Yamamoto). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable. Lin and Yamamoto each clearly teach a light absorber content range (i.e., 2 to 50 wt% and 0.1 to 90 wt%) that overlap with that recited in claim 1 (i.e., 1 to 5 wt%) which would render the claimed range obvious to one of ordinary skill in the art. Moreover, 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) (See MPEP 2144.05(I)).
Regarding claim 2, Noda and either of Lin or Yamamoto suggest that the photothermal agent is capable of absorbing light for heat generation to bring about adhesive release through thermal expansion and/or ablation. Moreover, Noda discloses achieving adhesive release through thermal expansion and either of Lin or Yamamoto provide motivation to incorporate a photothermal agent into the adhesive to generate heat upon exposure to radiation (see analysis of claim 1 above).
Regarding claim 3, Lin discloses that the photothermal agent is selected from one of more of the group consisting of a UV-absorbing photothermal agent, a multiwalled carbon nanotube (MWCNT), a single walled carbon nanotube (SWCNT), an MXene, a graphite, a graphene oxide, a liquid metal, and a carbon black ([0038] of Lin, light absorber can be carbon black; claim only requires one of the recited materials).
Regarding claim 5, Noda discloses that the urethane acrylate polymeric material that has two or more acrylate end groups is an aliphatic acrylate polymeric material that has two acrylate end groups ([0024] of Noda).
Regarding claims 6 and 7, Noda discloses that the aliphatic acrylate polymeric material has formula II as recited in claims 6 or 7 ([0033] of Noda, aliphatic acrylate urethane material can be CN9004, CN9002 or CN3211 which have the recited structure).
Regarding claim 8, Noda does not specifically disclose that the urethane acrylate polymeric material that has two or more acrylate end groups has a number average molecular weight of greater than 20,000 Daltons. Noda, however, discloses that the polyfunctional acrylate oligomer (i.e., the urethane acrylate oligomer) can have a number average molecular weight of 2,000 to 70,000 ([0023] of Noda). Noda therefore clearly teaches a urethane acrylate number average molecular weight (Mn) range (i.e., >20,000 Da) that overlaps with that recited in claim 4 (i.e., 2,000 to 70,000) which would render the claimed range obvious to one of ordinary skill in the art. Moreover, 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) (See MPEP 2144.05(I)).
Regarding claim 9, Noda discloses that the polymeric or oligomeric crosslinker material having two or more acrylate end groups is selected from one or more of 1,6-hexanediol diacrylate, tetra(ethylene glycol) diacrylate, poly(trimethylolpropane triacrylate-co-ethylene dimethacrylate), poly(ethyleneglycol) diacrylate (PEGDA), poly(caprolactone) dimethacrylate and poly(propylene glycol) dimethacrylate ([0046] of Noda, reactive diluent can be hexanediol diacrylate; claim only requires one of the recited crosslinker compounds).
Regarding claim 13, Noda does no specifically disclose that the polymeric or oligomeric crosslinker material having two or more acrylate end groups is present in an amount of from 5 to 30 wt% relative to the total weight of the crosslinked polymeric matrix. Noda, however, discloses that the amount of reactive diluent is between 10 and 35 wt% of the adhesive precursor composition ([0048] of Noda). Noda therefore clearly teaches a wt% reactive diluent/crosslinker range (i.e., 10 to 35 wt%) that overlaps with that recited in claim 13 (i.e., 5 to 30 wt%) which would render the claimed range obvious to one of ordinary skill in the art. Moreover, 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) (See MPEP 2144.05(I)).
Regarding claim 14, Noda discloses that the photothermal adhesive is provided in the form of a film and/or the photothermal adhesive is transparent (FIG. 1, [0013] of Noda, adhesive composition #100 provided as a thin layer or film; claim only requires one of the recited characteristics).
Regarding claim 19, Noda and either of Lin or Yamamoto suggest a method comprising: (i) adhering an object to be placed to a film of a photothermal adhesive ([0064] of Noda, adhesive applied to surface of first substrate), where the photothermal adhesive is as described in Claim 1 (see analysis of claim 1 above) to form an adhered object ([0064] of Noda, second substrate contacted with adhesive on first substrate and curing the adhesive to temporarily bond substrates together); and (ii) releasing the object from the film of photothermal adhesive, thereby causing thermal expansion or ablation of the film to effect release of the adhered object ([0064] of Noda, cured adhesive heated to cause thermal expansion to facilitate debonding).
Noda does not specifically disclose applying light from a light source to the film to cause thermal expansion. Noda, however, discloses that the adhesive is a reversible or temporary adhesive wherein heat is used to facilitate debonding of the adhesive ([0065] of Noda). Lin and Yamamoto each disclose an adhesive comprising a polymer and a light absorbing agent which absorbs light and converts the light to heat energy (i.e., a photothermal agent) (Abstract of Lin; Abstract, [0018] of Yamamoto). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to add a photothermal agent to the composition of Noda and to apply light (i.e., radiant energy) to the adhesive to generate the heat required for debonding. One of skill in the art would have been motivated to do so in order to facilitate debonding as taught by Lin and Yamamoto (Abstract of Lin; [0013] of Yamamoto).
Noda also does not specifically disclose (ii) placing the adhered object at a desired site prior to debonding or that the method is a method of picking and placing an object. Noda, however, discloses that the method may further include conducting an industrial operation on the first or second substrates (e.g., etching, grinding, polishing or coating) after curing the adhesive precursor and before debonding ([0067] of Noda). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to transfer the adhered substrates to a desired site (e.g., an etching or coating apparatus) for conducting the further industrial operation. One of skill in the art would have been motivated to do so in order to facilitate carrying out the additional industrial operation as taught by Noda ([0067] of Noda).
Regarding claim 20, Lin and Yamamoto each disclose that the light source is an IR laser light source having a wavelength of from 500 to 1,080 nm or a laser having a wavelength of less than 500 nm ([0080] of Lin, laser wavelength of 355 nm used for debonding adhesive composition; [0015] of Yamamoto, near IR laser having wavelength of 800-850 or 900 to 1100 nm used for debonding; claim only requires one of the recited light sources), and Lin discloses that the photothermal agent is selected from one of more of the group consisting of a multiwalled carbon nanotube (MWCNT), a single walled carbon nanotube (SWCNT), an MXene, a graphite, a graphene oxide, a liquid metal, and a carbon black ([0077] of Lin, light absorbing material used in adhesive composition is carbon black; claim only requires one of the recited materials).
Regarding claim 21, neither Lin nor Yamamoto specifically disclose the IR laser light source having a wavelength of from 500 to 1,080 nm or the laser having a wavelength of less than 500 nm has a pulse energy of from greater than 0 to 500 µJ. Lin and Yamamoto, however, each disclose that the amount of laser irradiation energy applied to the adhesive is absorbed by the light absorbing agent and converted into heat energy to trigger debonding ([0073] of Lin; [0015] of Yamamoto). Lin and Yamamoto therefore each establish that the amount of laser energy applied to the bonded substrate is a variable which achieves a recognized result (i.e., generating thermal energy for debonding). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to optimize the amount of laser energy applied in the modified method, including providing a laser pulse energy of from greater than 0 to 500 µJ as recited in claim 21. Moreover, as set forth in the MPEP, once a parameter is recognized as a result-effective variable, i.e., a variable which achieves a recognized result, the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977) (MPEP §2144.05 II B).
Regarding claim 22, Lin discloses that the light source is an UV light source having a wavelength of from 10 to 400 nm or a laser having a wavelength of less than 400 nm ([0080] of Lin, laser wavelength of 355 nm used for debonding adhesive composition), provided that the photothermal agent is a UV-absorbing photothermal agent ([0077] of Lin, adhesive compositions use carbon black as a light absorbing material; carbon black necessarily absorbs UV light since debonding is achieved using 355 nm wavelength laser).
Regarding claim 24, Noda ‘764 discloses an adhesive (Abstract of Noda, adhesive precursor composition) comprising: a crosslinked polymeric matrix ([0045] of Noda, composition is crosslinked product of polyfunctional acrylate oligomers and acrylate monomers and is therefore polymeric) formed by the copolymerisation of: a urethane acrylate polymeric material that has two or more acrylate end groups ([0020] of Noda, adhesive includes a polyfunctional acrylate oligomer such as a urethane acrylate oligomer; [0024] of Noda, suitable urethane acrylates include polymers with two or more acrylate end groups); and a polymeric or oligomeric crosslinker material having two or more acrylate end groups ([0045] of Noda, adhesive precursor composition includes a reactive diluent which facilitates termination and crosslinking of the polyfunctional acrylate; reaction would necessarily be a copolymerization of the two reactants; [0046] of Noda, suitable reactive diluents include hexanediol diacrylate and trimethylol propane triacrylate which compounds have at least two acrylate end groups).
Noda does not specifically disclose that the adhesive compositions are random block copolymers. Moreover, Noda discloses reacting the urethane acrylate oligomer with the reactive diluent but does not specifically disclose that the resulting copolymer is a random block copolymer. Noda, however, discloses polymerizing using a free radical initiator ([0058] of Noda). The resulting copolymer would necessarily be a random block copolymer since the terminal acrylate groups on the urethane acrylate polymer would necessarily randomly react with terminal acrylate groups on other urethane acrylate polymer molecules or with terminal acrylate groups on the crosslinker/reactive diluent.
Noda also does not disclose that the adhesive compositions are photothermal compositions which comprise a photothermal agent, wherein the photothermal agent is dispersed within the crosslinked polymeric matrix. Noda, however, discloses that the adhesive is a reversible or temporary adhesive wherein heat is used to facilitate debonding of the adhesive ([0065] of Noda). Lin discloses an adhesive for temporary bonding comprising a polymer and a light absorbing material (Abstract of Lin). According to Lin, the content of the light absorbing material in the adhesive is 2 to 50 wt% ([0023] of Lin). Yamamoto similarly discloses a pressure sensitive adhesive composition exhibiting removability which comprises an adhesive and a photothermal conversion material (Abstract of Yamamoto). Yamamoto also discloses that the adhesive can be a (meth)acrylic polymer ([0018] of Yamamoto), that the photothermal conversion material can be dissolved in the adhesive to form a uniform dispersion ([0010] of Yamamoto) and that the content of the pressure-sensitive adhesive in the composition is 10 to 99.9 % by mass ([0027] of Yamamoto). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to incorporate from about 2 to 50 wt% or 0.1 to 90 wt% of a light absorber in the adhesive composition of Noda since Lin and Yamamoto each establish that it was known to include light absorbers in such amounts in photothermal adhesive compositions ([0023] of Lin; [0027] of Yamamoto). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable. Lin and Yamamoto each clearly teach a light absorber content range (i.e., 2 to 50 wt% and 0.1 to 90 wt%) that overlap with that recited in claim 1 (i.e., 1 to 5 wt%) which would render the claimed range obvious to one of ordinary skill in the art. Moreover, 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) (See MPEP 2144.05(I)).
Noda also does not disclose that the adhesive is configured for use in picking up and depositing an object. Noda, however, discloses that the adhesive is a reversible or temporary adhesive wherein heat is used to facilitate debonding of the adhesive ([0065] of Noda). Moreover, Noda discloses temporarily bonding substrates together using the adhesive composition and thereafter heating the temporary adhesive to facilitate debonding (FIGS. 4A-4D, [0065] of Noda). Since the adhesive composition of Noda is capable of temporarily bonding and then debonding substrates, the adhesive composition would necessarily be configured for use in picking up (i.e., via temporary bonding) and depositing (i.e., debonding) an object.
Regarding claims 25-27, Noda does not specifically disclose that the photothermal adhesive is suitable for repeatedly picking up and depositing the object as recited in claim 25, that the object to be deposited is in the micrometer or millimetre scale as recited in claim 26 or that there is minimal or no residue left on the object after being picked up and deposited as recited in claim 27. Noda, however, discloses that laminate articles require some force to remove in the cured and expanded state ([0074] of Noda). Accordingly, the adhesive of Noda would have some tack even after curing, particularly in the unexpanded state. Since the cured an unexpanded adhesive of Noda would have some tack, the adhesive would necessarily be suitable for repeatedly picking up and depositing an object, particularly where the object to be deposited is in the micrometer or millimetre scale. In addition, since the adhesive has already been cured, there would be “minimal” residue left after debonding an object using the cured adhesive of Noda.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Noda in view of either of Lin or Yamamoto as applied to claim 1 above and further in view of Zhang (Chinese Patent Publication No. CN 109929504 A, cited in IDS submitted April 3, 2024, machine language translation provided in previous Office Action and cited below).
Regarding claim 9, Noda discloses that the polymeric or oligomeric crosslinker material having two or more acrylate end groups can be 1,6-hexanediol diacrylate ([0046] of Noda) but does not specifically disclose that the crosslinker material can be tetra(ethylene glycol) diacrylate, poly(trimethylolpropane triacrylate-co-ethylene dimethacrylate), poly(ethyleneglycol) diacrylate (PEGDA), poly(caprolactone) dimethacrylate and poly(propylene glycol) dimethacrylate. Zhang, however, discloses a urethane acrylate adhesive comprising a urethane acrylate oligomer and a high molecular weight acrylate monomer (Abstract of Zhang). According to Zhang, the acrylate monomer can be polyethylene glycol diacrylate or polypropylene glycol dimethacrylate ([0013] of Zhang). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use polyethylene glycol diacrylate or polypropylene glycol dimethacrylate as the crosslinker in the modified adhesive formulations since Zhang establishes that it was known to use these compounds as crosslinkers in urethane acrylate adhesives. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Regarding claim 10, Zhang discloses that the polymeric or oligomeric crosslinker material having two or more acrylate end groups is poly(ethyleneglycol) diacrylate (PEGDA) ([0013] of Zhang).
Regarding claims 11 and 12, Zhang does not specifically disclose that the polymeric or oligomeric crosslinker material having two or more acrylate end groups has a number average molecular weight of from 200 to 1,000 Daltons as recited in claim 11 or that the polymeric or oligomeric crosslinker material having two or more acrylate end groups has a number average molecular weight of from 250 to 750 Daltons, such as from 400 to 600 Daltons as recited in claim 12. Zhang, however, discloses that the acrylate monomer has a number average molecular weight greater than 500 ([0012] of Zhang). Zhang therefore clearly teaches a acrylate monomer/crosslinker number average molecular weight (Mn) range (i.e., >500 Da) that overlaps with that recited in claims 11 and 12 (i.e., 200 to 1,000 Daltons or 250 to 750 Daltons) which would render the claimed ranges obvious to one of ordinary skill in the art. Moreover, 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) (See MPEP 2144.05(I)).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Noda in view of either of Lin or Yamamoto and further in view of Bonardi et al. (“Thermal Initiators as Additives for Photopolymerization of Methacrylates upon Blue Light”, Coatings, 10, 478, May 15, 2020, cited in previous Office Action).
Regarding claim 15, Noda discloses a method of forming a photothermal adhesive according to Claim 1, the method comprising the steps of: (a) providing a mixture comprising: a urethane acrylate polymeric material that has two or more acrylate end groups ([0020] of Noda); a polymeric or oligomeric crosslinker material having two or more acrylate end groups ([0045] of Noda); and a radical initiator ([0060] of Noda, thermal initiators such as azo, peroxide, persulfate and redox initiators may be incorporated into the adhesive).
Noda does not specifically disclose the mixture comprises a photothermal agent. Noda, however, discloses that the adhesive is a reversible or temporary adhesive wherein heat is used to facilitate debonding of the adhesive ([0065] of Noda). Lin discloses an adhesive for temporary bonding comprising a polymer and a light absorbing material (Abstract of Lin). Yamamoto similarly discloses a pressure sensitive adhesive composition exhibiting removability which comprises an adhesive and a photothermal conversion material (Abstract of Yamamoto). Yamamoto also discloses that the adhesive can be a (meth)acrylic polymer ([0018] of Yamamoto) and that the photothermal conversion material can be dissolved in the adhesive to form a uniform dispersion ([0010] of Yamamoto). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to mix a light absorber/photothermal conversion material in the adhesive composition of Noda since Lin and Yamamoto each establish that it was known to include such materials in adhesive compositions for temporary/reversible bonding ([0023] of Lin; [0027] of Yamamoto). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Noda also does not specifically disclose (b) heating the mixture at a temperature of from 50 to 100 °C for a period of time to provide the photothermal adhesive. Noda, however, discloses that thermal initiators such as azo, peroxide, persulfate and redox initiators may be incorporated into the adhesive ([0060] of Noda) in addition to the photoinitiators ([0057] of Noda). Bonardi discloses the free radical polymerization of acrylate polymers wherein photopolymerization is used in the presence of a thermal initiator (Abstract of Bonardi). According to Bonardi, the exothermic reaction of the photopolymerization process decomposes the thermal initiator resulting in enhanced polymerization rates (Abstract of Bonardi). Also according to Bonardi, the resin was heated during photopolymerization to a temperature of 90 °C to decompose the thermal initiator (pg. 6, 1st full ¶ of Bonardi). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to heat the mixture in the modified process to 90 °C to decompose the thermal initiator in the modified mixture. One of skill in the art would have been motivated to do so in order to decompose the thermal initiator as taught by Bonardi (pg. 6, 1st full ¶ of Bonardi).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Noda in view of either of Lin or Yamamoto and further in view of Bonardi as applied to claim 15 above and further in view of Studer et al. (“Overcoming oxygen inhibition in UV-curing of acrylate coatings by carbon dioxide inerting, Part I”, Prog. In Org. Coat., 48, pp. 92-100, June 2003, cited in previous Office Action).
Regarding claim 17, Noda does not disclose that the polymerisation occurs in a vessel without exposure to the ambient atmospheric conditions. Studer, however, discloses that molecular oxygen inhibits the photoinitiated polymerization of acrylate resins and that this effect can be eliminated by conducting polymerization in an inert atmosphere (Abstract of Studer). Studer also discloses conducting the reaction in a cell to allow polymerization to occur in a controlled atmosphere (pg. 93, right column of Studer). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to carry out the polymerization reaction in the modified process using a cell (i.e., a vessel) flushed with an inert gas. One of skill in the art would have been motivated to do so in order to allow polymerization to occur in an inert atmosphere thereby eliminating the inhibiting effects of molecular oxygen as taught by Studer (Abstract of Studer).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
The applicant asserts that the claimed adhesive is formed by the block copolymerization of a urethane acrylate polymeric material and a polymeric or oligomeric crosslinking material and can therefore be distinguished over the adhesive of Noda which is formed by polymerizing an acrylate oligomer and a reactive diluent comprising a diacrylate monomer (pp. 7-9 of the amendment). The polyfunctional acrylate oligomer of Noda, however, has a number average molecular weight of 2,000-70,000 ([0023] of Noda) which overlaps that of the claimed polymeric material (i.e., greater than 20,000 Daltons) (see claim 8). In addition, the claimed polymeric or oligomeric crosslinker can be 1,6-hexanediol diacrylate (which is disclosed by Noda as a reactive diluent) or tetra(ethylene glycol) diacrylate (see claim 9), neither of which compounds could be considered oligomers. Since 1,6-hexanediol diacrylate is disclosed by the applicant as a suitable “polymeric or oligomeric crosslinker material”, this terminology in the claims is being construed broadly to encompass diacrylate compounds including 1,6-hexanediol diacrylate and tetra(ethylene glycol) diacrylate which are not technically oligomeric. It is also noted that Chang provides motivation to use polyethylene glycol diacrylate which is an oligomer as a reactive diluent in the adhesive composition of Noda (see rejection of claim 10 above).
The applicant also asserts that Noda is for single use only (i.e., that the adhesive bond is formed in situ) and that the adhesive of Noda would not be capable of holding a substrate directly (pg. 9, last full ¶ of the amendment). Noda, however, discloses that laminate articles require some force to remove in the cured and expanded state ([0074] of Noda). Accordingly, the adhesive of Noda would have some tack even after curing, particularly in the unexpanded state. Since the cured and unexpanded adhesive of Noda would have some tack, the adhesive would necessarily be suitable for repeatedly picking up and depositing an object, particularly where the object to be deposited is in the micrometer or millimetre scale. In addition, since the adhesive has already been cured, there would be “minimal” residue left after debonding an object using the cured adhesive of Noda.
The applicant also asserts that it is not clear that a skilled person would consider combining Yang with Noda to arrive at the claimed invention comprising a phtothermal agent dispersed or mixed in the polymeric material since Yang relies on separate photoconversion and adhesive layers (pp. 10-11 of the amendment). The Office Action, however, is now relying upon either of Lin or Yamamoto instead of Yang to address this limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746
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