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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-5 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2020/0056072 A1, “Lu”).
With respect to claims 1, 4-6, 10-11, and 14-15, Lu discloses a pressure sensitive adhesive composition comprising a polyurethane polymer that is the reaction product of a polyisocyanate component and polyol component ([0001]). The pressure sensitive adhesive composition is formed into a layer ([0094]). The polyisocyanate component comprises polyfunctional isocyanate compounds ([0047]). The polyol has a total solubility parameter of 10-14 ([0019]), which overlaps the presently claimed range. The polyurethane is further made from a compound comprising one or more hydroxy groups and one or more ethylenically unsaturated groups, including hydroxyethyl acrylate ([0045]), corresponding to the claimed (meth)acrylate-containing alcohol having at least one (meth)acrylate group and at least one alcohol group. The polyurethane further comprises multi-(meth)acrylate crosslinkers (i.e., a multifunctional (meth)acrylate oligomer) ([0070]) and a photoinitiator ([0082]). Lu further discloses the composition is cured with UV radiation ([0082]) and is applied to substrates including glass ([0096], [0107]). The pressure sensitive adhesive has a peel value of 0.5-20 N/dm (0.05-2.0 N/cm) after being applied to glass ([0107]), which overlaps the presently claimed range.
Regarding a peel adhesion of the pressure sensitive adhesive to glass decreasing by at least 20% after being exposed to light radiation, while there may be no explicit disclosure from Lu regarding a peel adhesion of the pressure sensitive adhesive to glass decreasing by at least 20% after being exposed to light radiation, given that Lu discloses an otherwise identical pressure sensitive adhesive made from otherwise identical components as that presently claimed, it is clear the peel adhesion of the pressure sensitive adhesive to glass of Lu would necessarily inherently decrease by at least 20% after being exposed to light radiation, absent evidence to the contrary. As set forth in MPEP 2112.01 II, “Products 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 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 103.
In light of the overlap between the claimed pressure sensitive adhesive and that taught by Lu, it would have been obvious to one of ordinary skill in the art to use a pressure sensitive adhesive that is both taught by Lu and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 2, while there may be no explicit disclosure from Lu regarding wherein when the pressure sensitive adhesive is laminated to glass, the pressure sensitive adhesive has a peel adhesion to the glass of about 3 N/cm or more prior to being exposed to light radiation, given that Lu discloses an otherwise identical pressure sensitive adhesive made from otherwise identical components as that presently claimed, it is clear the peel adhesion of the pressure sensitive adhesive to glass of Lu would necessarily inherently be about 3 N/cm or more prior to being exposed to light radiation, absent evidence to the contrary. As set forth in MPEP 2112.01 II, “Products 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 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 103.
With respect to claim 3, while there may be no explicit disclosure from Lu regarding wherein when the pressure sensitive adhesive is laminated to glass, the pressure sensitive adhesive has a peel adhesion to the glass of about 5 N/cm or more prior to being exposed to light radiation, given that Lu discloses an otherwise identical pressure sensitive adhesive made from otherwise identical components as that presently claimed, it is clear the peel adhesion of the pressure sensitive adhesive to glass of Lu would necessarily inherently be about 5 N/cm or more prior to being exposed to light radiation, absent evidence to the contrary. As set forth in MPEP 2112.01 II, “Products 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 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 103.
With respect to claims 7-8 and 13, Lu discloses the pressure sensitive adhesive exhibits a haze of less than 1% ([0039]).
With respect to claim 9, because the (meth)acrylate crosslinker is a multi-(meth)acrylate crosslinker ([0070]), the (meth)acrylate crosslinker is inherently a reactive oligomer as presently claimed.
With respect to claim 12, Lu discloses the adhesive composition is transparent ([0103]).
With respect to claim 17, Lu discloses a pressure sensitive adhesive composition comprising a polyurethane polymer that is the reaction product of a polyisocyanate component and polyol component ([0001]). The pressure sensitive adhesive composition is formed into a layer ([0094]). The polyisocyanate component comprises polyfunctional isocyanate compounds ([0047]). The polyol has a total solubility parameter of 10-14 ([0019]), which overlaps the presently claimed range. The polyurethane is further made from a compound comprising one or more hydroxy groups and one or more ethylenically unsaturated groups, including hydroxyethyl acrylate ([0045]), corresponding to the claimed (meth)acrylate-containing alcohol having at least one (meth)acrylate group and at least one alcohol group. The polyurethane further comprises multi-(meth)acrylate crosslinkers (i.e., a multifunctional (meth)acrylate oligomer) ([0070]) and a photoinitiator ([0082]). Lu further discloses the composition is cured with UV radiation ([0082]) and is applied to substrates including glass ([0096], [0107]). The pressure sensitive adhesive has a peel value of 0.5-20 N/dm (0.05-2.0 N/cm) after being applied to glass ([0107]), which overlaps the presently claimed range. The pressure sensitive adhesive is applied to substrates and is used to bond substrates ([0096-0097]). The substrates include polymeric films ([0096]), which inherently have at least one major surface, and substrates made from glass ([0107], [0121]), which would also inherently have at least one major surface.
In light of the overlap between the claimed pressure sensitive adhesive and that taught by Lu, it would have been obvious to one of ordinary skill in the art to use a pressure sensitive adhesive that is both taught by Lu and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 18, Lu discloses the pressure sensitive adhesive is transparent (i.e., is optically clear) ([0089], [0103]).
With respect to claim 19, while there may be no explicit disclosure from Lu regarding a peel adhesion of the pressure sensitive adhesive to glass decreasing by at least 20% after being exposed to light radiation, given that Lu discloses an otherwise identical pressure sensitive adhesive made from otherwise identical components as that presently claimed, it is clear the peel adhesion of the pressure sensitive adhesive to glass of Lu would necessarily inherently decrease by at least 20% after being exposed to light radiation, absent evidence to the contrary. As set forth in MPEP 2112.01 II, “Products 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 (Fed. Cir. 1990), and in accordance with MPEP 2112, the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejections of claims under 35 U.S.C. 103.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2020/0056072 A1, “Lu”) as applied to claim 11 above, and further in view of Urs (US 2015/0376448 A1).
With respect to claim 16, while Lu discloses the use of a polyol as set forth in the above rejection of claim 11, Lu does not disclose wherein the polyol component has a urethane backbone.
Urs teaches a polyurethane made from a polyisocyanate and a urethane polyol having a urethane backbone in order to extend the molecular weight of the polyurethane ([0088], [0141]).
Lu and Urs are analogous inventions in the field of polyurethanes made from polyols and polyisocyanates.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyol of Lu to include the urethane polyol taught by Urs in order to provide a urethane having desired extended molecular weight (Urs, [0088], [0141]).
Response to Arguments
Applicant's arguments filed 15 June 2026 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections over Lu, Applicant argues the present invention is drawn to a pressure sensitive adhesive that crosslinks and has peel adhesion that decreases, obtained by having a pressure sensitive adhesive that has a polyurethane polymer with reactive (meth)acrylate functionality, a poly(meth)acrylate oligomer, and a photoinitiator. Applicant argues Lu discloses a pressure sensitive adhesive made of only polyurethane, which does not crosslink, and that the polymer that forms the pressure sensitive adhesive can be crosslinked, but the crosslinking occurs when the polymer is prepared and not after the pressure sensitive adhesive is prepared; Applicant points to the examples of Lu for support. Applicant further argues the presently claimed pressure sensitive adhesive is made by a different process and points to the examples of the instant specification for support. Applicant lastly argues Urs does not remedy the alleged deficiencies of Lu. The examiner disagrees.
In response to Applicant’s arguments, it is unclear why Applicant argues Lu does not disclose a pressure sensitive adhesive that has a (meth)acrylate functional polyurethane, a poly(meth)acrylate oligomer, and a photoinitiator. Lu discloses a pressure sensitive adhesive composition comprising a polyurethane polymer that is the reaction product of a polyisocyanate component and polyol component ([0001]) and a hydroxyethyl acrylate ([0045]). The polyol has a total solubility parameter of 10-14 ([0019]), which overlaps the presently claimed range. The hydroxyethyl acrylate corresponds to the claimed (meth)acrylate-containing alcohol having at least one (meth)acrylate group and at least one alcohol group. The polyurethane further comprises multi-(meth)acrylate crosslinkers (i.e., a multifunctional (meth)acrylate oligomer) ([0070]) and a photoinitiator ([0082]). While the examples of Lu may disclose just a polyurethane, this is not Lu’s only disclosure. “Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735, 739 (CCPA 1967). The fact remains the Lu discloses the claimed polyurethane polymer made from the claimed components, the claimed oligomer comprising a multifunctional (meth)acrylate, and the claimed photoinitiator.
Further, it is unclear why Applicant argues the pressure sensitive adhesive of Lu does not crosslink given that Lu discloses the use of a crosslinking agent ([0070]) and thus the pressure sensitive adhesive of Lu is crosslinked.
Additionally, in response to Applicant’s argument that Lu does not have a crosslinked pressure sensitive adhesive, it is noted that the features upon which applicant relies (i.e., being crosslinked) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regardless, Lu discloses the use of a crosslinking agent ([0070]) and thus the pressure sensitive adhesive is crosslinked.
In response to Applicant’s argument that the pressure sensitive adhesive of Lu is made by a different process than the pressure sensitive adhesive of the present claims, this is not persuasive because the present claims are drawn to an article and not a method. It is irrelevant how Lu makes its pressure sensitive adhesive because the present claims are drawn to a product and not a method.
In response to Applicant’s argument that Urs does not remedy the alleged deficiencies of Lu, this is not found persuasive because Lu does not have the alleged deficiencies for the reasons set forth above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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, Callie E Shosho can be reached at (571) 272-1123. 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.
/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
Prosecution Insights