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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-3 and 12, in the reply filed on 20 November 2025 is acknowledged.
Claims 4, 5, and 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 November 2025.
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.
Claims 1-3 and 12 are 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.
Specifically, claim 1 contains the term “photo initiator 184”. It is unclear as to what the term “photo initiator 184” is supposed to be as there is no teaching, definition, or indication as to what encompasses “photo initiator 184”. It is the Examiner’s position that the “photo initiator 184” is intended to be Irgacure® 184 or Omnirad® 184 or CHLUMINIT® 184. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. Presumably, in the present case, the trademark/trade name is used to identify/describe 1-hydroxycyclohexyl phenyl ketone and, accordingly, the identification/description is indefinite.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-3 and 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yokoi et al. (US Serial No. 2018/0185964) teaches an acrylic temporary-adhesive comprising a (meth)acrylic copolymer having a hydroxyl group [0064], an isocyanate curing agent [0066], a radiation curable compound such as pentaerythritol triacrylate [0067], a compound having 1 or 2 photopolymerizable carbon-carbon double bonds such as 2-hydroxy-3-phenoxypropyl acrylate [0111], and a photoinitiator such as alpha-hydroxycyclohexyl phenyl ketone [0074]. Yokoi et al. fails to teach said compounds in the amounts required by the instant application and fails to teach the use of a solvent in the required amount of 50%.
Ha et al. (US Serial No. 2012/0059127) teaches an acrylic adhesive composition comprising an acrylic copolymer having at least one hydroxyl group [0030], an isocyanate curing agent [0090], and ethyl acetate solvent [0102]. Ha et al. fails to teach 6-9% pentaerythritol triacrylate, 3-5% 2-hydroxyl-3-phenoxy propane acrylate, 2-3% of “photo initiator 184”, and fails to teach 50% of the ethyl acetate solvent.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767