DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 14 in the amendments filed 5/26/2026.
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) and Species (A) in the reply filed on 5/26/2026 is acknowledged. The traversal is on the ground(s) that the amended claims, which provide for an adhesive system comprising a primer composition in tandem with the adhesive film, no longer lacks unity of invention over Ogawa. This is not found persuasive given that the adhesive system only recites the inclusion of the recited primer composition, and thus Ogawa need not teach the portions of the specification cited by the Applicant as said portions are not included in the claim language; for example, that the recited primer composition improves adhesion between the adhesive film and a substrate. Ogawa also discloses a primer treatment (para 0079).
Further, while not conceding the merits of the Applicant’s arguments against the Ogawa reference, attention is respectfully directed to the prior art rejections set forth below over the primary Terada reference, which teaches or renders obvious all the limitations of the presently claimed as recited in at least currently amended claim 1.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/26/2026.
Claim Objections
Claim 7 is objected to because of the following informalities: please amend the claim to recite that microspheres or glass bubbles comprise the adhesive film versus the adhesive system. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: please amend the claim to recite that second (meth)acrylate polymer comprises the adhesive film versus the adhesive system. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 5, the present thickness range is only supported by the specification as originally filed for the recited adhesive film and not the adhesive system.
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.
Claim 13 is 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.
Regarding claim 13, it is unclear from the claim limitations, and in light of the specification (see, for example, page 18 line 32 to page 9, line 4) if the recited primed substrate surface is referring back to, or further limiting, the primer composition of current claim 1, or if the recited primed substrate surface comprises a primer in addition to the priming composition of current claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 2, the recitation that the (meth)acrylic acid monomer is present at greater than 15 weight percent, which provides for the range to extend beyond 40 weight percent, does not further limit 15 to 40 weight percent of current claim 1.
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.
Claim(s) 1-2, 5-6, 8-11, 13 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terada et al. (US 2013/0244020 A1).
Regarding claim(s) 1, Terada teaches a pressure-sensitive adhesive (PSA) layer (adhesive film) formed from a bubble-containing thermally conductive resin composition comprising an acrylic polymer (first (meth)acrylate copolymer) comprising an alkyl (meth)acrylate as a main monomer (para 0015, 0022-0025). The alkyl (meth)acrylate is selected from, inter alia, 2-ethylhexyl acrylate (branched alkyl (meth)acrylate) in an amount of 60 to 99 weight% (at least 55 weight percent) (para 0026-0029).
The acrylic polymer also comprises polar group-containing monomers and polyfunctional monomers as copolymerizable monomers towards improved cohesion and adhesion (para 0030), the former of which is selected from, inter alia, (meth)acrylic acid monomer units in an amount of 1 to 30 weight%, which overlaps that presently claimed (15 to 40 weight percent), towards a balance of PSA properties and high shearing force; and the latter of which is selected from, inter alia, hexanediol (meth)acrylate (crosslinking monomer having more than one (meth)acrylate group) in an amount of 0.01 to 2 weight%, which overlaps that presently claimed (0.1 to 5 weight percent), towards a balance of PSA properties and cohesion (para 0031-0034).
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).
The PSA layer is provided on a substrate (adhesive system), which is comprises a surface treated with a primer coating (primer composition) (para 0100). The presently claimed/disclosed invention permits the further (meth)acrylate copolymer to be present at 0 percent by weight (i.e., not more than 5 percent by weight). See also page 8, line 27 to page 9, line 2 of the specification as originally filed, which discloses that the adhesive is “free” of the further (meth)acrylate.
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 the polar group-containing monomers and polyfunctional monomers as copolymerizable monomers in the presently claimed proportions towards a balance of PSA properties and high shearing force as required by the prior art’s intended application as in the present invention.
Regarding claim(s) 2, as noted above, Terada teaches the acrylic polymer comprises the (meth)acrylic acid monomer units in an amount that overlaps that presently claimed (greater than 15 weight percent).
Regarding claim 5, Terada teaches that the PSA layer thickness is 300 to 1000 mm (0.3 to 1 mm) (par a0093).
Regarding claim(s) 6, as noted above, Terada teaches that the PSA is a bubble-containing thermally conductive resin composition comprises bubbles (foam) (para 0053-0054).
Regarding claims 8-9, Terada teaches that the bubble-containing thermally conductive resin composition comprises two or more acrylic polymers (para 0025). As noted above, Terada also instructs that the polar group-containing monomers and polyfunctional monomers comprise the acrylic polymers and the PSA towards the balance of PSA properties and high shearing force.
Indeed, it would have been obvious to one skilled in the art before the effective filing date of the present invention to provide the PSA layer of Terada with two or more acrylic polymers in the presently claimed proportions (65 to 99 weight percent, 1 to 35 weight precent), and each comprising the polar group-containing monomers and polyfunctional monomers in the presently claimed proportions, based the balance of PSA properties and high shearing force required of the prior art’s intended application as in the present invention.
Regarding claims 10-11, Terada does not explicitly disclose a PSA film comprising two layers of PSA layers adjacent to each other (current claim 10), or three PSA layer in a skin-core-skin multilayer adhesive structure (current claim 11).
However, Terada does instruct that the bubble-containing thermally conductive resin layer, when used a PSA layer comprises multiple layers (para 0093 and 0095). Terada also teaches that the PSA sheet comprises substrate-less PSA sheets comprising only a PSA layer (para 0082).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention, and as suggested via Terada, to employ a two layer PSA adhesive film comprising two layers of the bubble-containing thermally conductive resin, which thereby provides first and second adhesive layers comprising the presently claimed first (meth)acrylate polymer as in the present invention; or a three layer PSA film comprising three layers of the bubble-containing thermally conductive resin, which thereby provides a core layer comprising the presently claimed first (meth)acrylate polymer as in the present invention.
Alternatively, for example,
Terada teaches the double-sided PSA sheet (14) of Fig. 2(a) comprising substrate (5) with PSA layers (6) on opposing surfaces of substrate (5), and wherein all of the layers (5) and (6) comprise the bubble-containing thermally conductive resin composition, and thus all of the layers (5) and (6) comprise the presently claimed first (meth)acrylate copolymer. Thus, within a reasonable interpretation of the scope of the claimed invention, the PSA sheet (14) teaches the presently claimed adhesive film (given the two PSA layers (6)) with the “core” comprising the first (meth)acrylate copolymer, regardless of whether the substrate (5) is adhesive or not.
Regarding claim 13, the recitation in the claims that the adhesive film adheres to a primed substrate surface when applied without the use of heat or radiation 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/compositional 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 Terada discloses an adhesive film as presently claimed, it is clear that the adhesive film of Terada would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Regarding claim(s) 18, as noted above, the alkyl (meth)acrylate is selected from, inter alia, 2-ethylhexyl acrylate.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terada et al. (US 2013/0244020 A1) in view of Ogawa et al. (US 20130274361 A1).
Regarding claim 4, while Terada does not disclose a storage modulus for the PSA layer, Terada does instruct the skilled artisan that the polar group-containing monomer is directed towards adjusting the shearing force of said PSA layer (para 0032). Terada also teaches that the content of the bubbles in the bubble-containing thermally conductive resin composition is directed towards adjusting the shearing force (para 0054).
The Examiner notes that the shear force is the force on a material causing it to deform parallel to its surface while the storage modulus is a measure of the material’s ability to store such an applied force.
In addition, Ogawa teaches a PSA comprising a 100% modulus of 20 to 200 N/cm2 (i.e., 0.2 to 2 MPa) (abstract), which overlaps that presently claimed (more than 0.5 megapascals), and which is adjusted via the inclusion of bubbles (para 0047, 0052) towards a balance of hardness and followability (para 0051).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjusting the storage modulus of the PSA layer of Terada to that presently claimed, and under the presently claimed conditions, towards a balance of hardness and followability as required by the prior art’s intended application as in the present invention.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terada et al. (US 2013/0244020 A1) in view of Levens (US 4223067).
Regarding claim 7, as noted above in the rejection of current claim 1 and 6, Terada teaches that the PSA is a bubble-containing thermally conductive resin composition comprises bubbles, but is silent to the bubbles comprising 2 to 12 weight precent of polymeric microspheres of glass bubbles. However, even though Terada discloses the content of the bubbles in terms of volume% rather than weight percent, the reference does instruct that the bubbles are included in a volume% based on the balance of adhesion, unevenness followability and shearing force (para 0054).
In addition, Levens teaches a PSA layer comprising an acrylic polymer and glass microbubbles that allows the PSA layer to conform and adhered to rough and uneven surfaces (abstract).
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to select glass bubbles for the bubbles of the Terada invention for the reasons disclosed in Terada as in the present invention.
Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terada et al. (US 2013/0244020 A1) in view of Kalgutkar et al. (US 2019/0225843 A1).
Regarding claims 15-17, as noted above, Terada teaches that the PSA layer is provided on a substrate surface treated with a primer coating towards increasing the adhesiveness between the substrate and the PSA, which said substrate is formed from, inter alia, olefin polymers, polyamides, PET, etc. (para 0097). Terada is silent to the primer coating comprising a polyamide.
However, Kalgutkar teaches an article (2000) comprising, in order, PSA layer (2000), primer layer (2111) and substrate (2100) (para 0098-0099; Fig. 2); which said primer layer is, inter alia, polyamide (para 0082), which said PSA layer comprises one or more (meth)acrylic polymers comprising alkyl (meth)acrylates and (meth)acrylic acid (para 0088-0089). The substrate (2100) of Kalgutkar is selected from, inter alia, polyolefins, PET, nylon, etc. (para 0070).
The Applicant is respectfully reminded that,
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
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 a polyamide primer for the primer coating of Terada as in the present invention.
Further, given that the laminate of Terada/Kalgutkar teaches a PSA layer/primer coating formed from the same components as presently claimed, it reasonable to conclude that the PSA layer of the cited prior art would not react with the primer coating to form covalent bonds.
Conclusion
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.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 6/8/2026
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