DETAILED ACTION
This communication responds to the application filed May 9, 2024, and the Response to Restriction Requirement and amended claim set filed January 2, 2026. Claims 1-12 and 14-19 are currently pending.
Non-elected claims 9-12 and 14-19 are WITHDRAWN.
Elected claims 1-8 are REJECTED for the reasons set forth below.
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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8, in the reply filed on January 2 is acknowledged. The traversal is on the grounds that, as amended, all Groups contain a common technical feature, and that the common feature is special because it is not taught by US 2017/0198170. This is not found persuasive because the common feature is indeed not special. As discussed below, the common feature is known in the art.
The requirement is still deemed proper and is therefore made FINAL.
Priority
This application is the national stage entry of PCT/IB2022/060480, filed October 31, 2022, which claims priority to US 63/264,047, filed November 15, 2021.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasaki et al. (US 2020/0095475).
Regarding claim 1, Sasaki teaches a pressure sensitive adhesive comprising a copolymer including 2-ethylhexylacrylate and hydroxyethyl acrylate monomers, 2-isocyanatoethyl methacrylate, and a polyisocyanate crosslinker. (Ex. 1, para. [0093].)
Regarding claims 2 and 8, the copolymer is modified by the 2-isocyanatoethyl methacrylate via reaction with the hydroxy groups of the copolymer, thereby forming a modified copolymer containing unsaturated pendant groups. (See para. [0093].)
Regarding claims 3-7, Sasaki is silent as to the recited properties. However, “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).) Given that the pressure sensitive adhesive of Sasaki is substantially identical to the claimed pressure sensitive adhesive, it is reasonable to infer that it should possess the same properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Clapper (US 2017/0198170).
Regarding claims 1 and 3, Clapper teaches optically clear pressure sensitive adhesives comprising a copolymer including 2-ethylhexyl acrylate, 2-ethylhexyl methacrylate, and hydroxypropyl acrylate monomers and isocyanatoethyl methacrylate. (Table 11, Exs. 17-19.)
The difference between Examples 17-19 of Clapper and claim 1 is that Examples 17-19 do not include a multifunctional crosslinker. However, Clapper more generally teaches that crosslinking additives may be added to the pressure sensitive adhesives to increase cohesive strength of the PSA. (para. [0031].) Crosslinking additives include multifunctional additives such as multifunctional aziridine, isocyanate, and epoxy. (Id.)
Regarding claims 2 and 8, the copolymer is modified by the 2-isocyanatoethyl methacrylate via reaction with the hydroxy groups of the copolymer, thereby forming a modified copolymer containing unsaturated pendant groups.
Regarding claims 4-7, Clapper is silent as to the recited properties. However, “[p]roducts of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).) Given that the pressure sensitive adhesive of Sasaki is substantially identical to the claimed pressure sensitive adhesive, it is reasonable to infer that it should possess the same properties. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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