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 .
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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 05 December 2025. A preliminary amendment was filed on 21 June 2024 amending claims 1, 3, 7, 10, 13-16, adding claim 18, and canceling claims 4, 11, and 17. Claims 1-3, 5-10, 12-16 and 18 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02 October 2024, 13 January 2025, 26 February 2025, 17 April 2025, and 02 September 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-3, 5, 6, 14-16, and 18 in the reply filed on 21 January 2026 is acknowledged. Claims 7-10 and 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The abstract of the disclosure is objected to because it includes the implied phrase “This application provides…”. Correction is recommended. See MPEP § 608.01(b), guideline (C).
Drawings
The drawings received on 21 June 2024 are acceptable.
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.
Claims 1-3, 5, 6, 14-16, and 18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 1, 14, 16, and 18, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claims 1, 14, 16, and 18 each recite the broad recitation “a mass fraction of the alkyl acrylate soft monomer in the prepolymer is greater than or equal to 60 wt%”, and the claims also recite " which is the narrower statement of the range/limitation.
Claims 1, 14, 16, and 18 also recite “a mass fraction of the acrylate polar monomer in the prepolymer is less than 30 wt%” as well as “and the mass fraction of the acrylate polar monomer in the prepolymer ranges from 10 wt% to 25 wt%.” which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Clarity is needed.
Claim 3 recites that the R2 group is “independently selected from substituted or unsubstituted C1-C10 alkyl groups”, but this should instead refer to alkylene groups due to the presence of the R3 group.
Regarding claim 5, the claim refers to “two types of alkyl acrylate soft monomers” and “one type of alkyl acrylate soft monomer”. The addition of the word “type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. MPEP § 2173.05(b)(III)(E). The Examiner suggests referring to “two different alkyl acrylate soft monomers, one of which is selected from butyl acrylate,…”.
Although claim 12 is withdrawn, the Examiner notes that claim 12 also includes this indefinite language.
Claims 2, 3, 5, 6, 14-16 and 18 depend on or refer to one or more of the above claims and thus incorporate the above-described indefinite subject matter.
Claim Rejections - 35 USC § 102
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 1-3 and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xia (U.S. Pub. 2013/0323521).
Regarding claim 1, Xia discloses an adhesive composition that includes an alkyl (meth)acrylate ester in which the alkyl group has 4 to 18 carbon atoms and a copolymerizable monomer, see abstract and p. 1, [0007]. Example 1 at p. 7, [0056] of the reference combines 55 parts by weight of 2-ethylhexyl acrylate, 25 parts of isobornyl acrylate, 20 parts of 2-hydroxyethyl acrylate, and minor amounts of photoinitiator and other additives. This is 80 parts of the claimed alkyl acrylate soft monomers and 20 parts of the claimed acrylate polar monomer as claimed. See also Table 1 on p. 9.
Example 4 uses 75 parts by weight of 2-ethylhexyl acrylate, 10 parts of 2-hydroxyethyl acrylate, and 15 parts of N,N-dimethyl acrylamide for a total of 75 parts of alkyl acrylate soft monomer and 25 parts of acrylate polar monomers as claimed. See p. 8, [0059] and Table 1.
The mixtures are partially polymerized under a nitrogen-rich atmosphere to provide a syrup which is then coated and cured between release liners, see p. 6, [0056] and p. 8, [0059]. Thus the adhesive film is prepared by crosslinking of a prepolymer as claimed.
These examples anticipate the claimed invention.
Regarding claim 2, 2-ethylhexyl acrylate, when polymerized, forms an alkyl acrylate soft monomer meeting Formula I as claimed in which R1 is a C8 alkyl group and n1 is greater than 0.
Regarding claim 3, 2-hydroxyethyl acrylate when polymerized, forms an acrylate polar monomer meeting Formula II as claimed in which R2 is a C2 alkylene group, R2 is a hydroxyl group, and n2 is greater than 0.
Regarding claims 14 and 16, Xia discloses an adhesive composition that includes an alkyl (meth)acrylate ester in which the alkyl group has 4 to 18 carbon atoms and a copolymerizable monomer, see abstract and p. 1, [0007]. Example 1 at p. 7, [0056] of the reference combines 55 parts by weight of 2-ethylhexyl acrylate, 25 parts of isobornyl acrylate, 20 parts of 2-hydroxyethyl acrylate, and minor amounts of photoinitiator and other additives. This is 80 parts of the claimed alkyl acrylate soft monomers and 20 parts of the claimed acrylate polar monomer as claimed. See also Table 1 on p. 9.
Example 4 uses 75 parts by weight of 2-ethylhexyl acrylate, 10 parts of 2-hydroxyethyl acrylate, and 15 parts of N,N-dimethyl acrylamide for a total of 75 parts of alkyl acrylate soft monomer and 25 parts of acrylate polar monomers as claimed. See p. 8, [0059] and Table 1.
The mixtures are partially polymerized under a nitrogen-rich atmosphere to provide a syrup which is then coated and cured between release liners, see p. 6, [0056] and p. 8, [0059]. Thus the adhesive film is prepared by crosslinking of a prepolymer as claimed. The release liners read on the claimed first and second assemblies.
Xia also teaches laminating a printed lens and a second display substate, see p. 2, [0017]. These also read on the claimed first and second assemblies of claim 14 and also the electronic device comprising the claimed first and second assemblies as in claim 16.
Regarding claim 15, Xia discloses that the adhesive has a low shear storage modulus G’ at 25 °C lamination temperature of less than 105 Pascal (100,000 Pa) when measured at 1 Hz frequency. This overlaps the shear storage modulus range of feature (1).
Xia also discloses that the adhesive has a thickness of preferably 50 to 175 micrometers, see p. 6, [0044], which is within the thickness range of feature (6).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 5 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Xia (U.S. Pub. 2013/0323521).
Regarding claim 5, Xia discloses an adhesive composition that includes an alkyl (meth)acrylate ester in which the alkyl group has 4 to 18 carbon atoms and a copolymerizable monomer, see abstract and p. 1, [0007]. Example 4 uses 75 parts by weight of 2-ethylhexyl acrylate, 10 parts of 2-hydroxyethyl acrylate, and 15 parts of N,N-dimethyl acrylamide for a total of 75 parts of alkyl acrylate soft monomer and 25 parts of acrylate polar monomers as claimed. See p. 8, [0059] and Table 1.
However, other preferred monomers are contemplated including butyl acrylate, see p. 2-3, [0019] as well as p. 4, [0026]. The total amount of alkyl acrylate monomers is from 60-95 parts by weight out of a total of 100 parts of monomers comprising the acrylic co-prepolymer, see p. 3, [0020]. Xia also teaches using a combination of these monomers, see the examples in Table 1 and more generally at p. 2-3, [0019]. Thus it would have been obvious to have used butyl acrylate in the claimed amount along with 2-ethylhexyl acrylate or another suitable alkyl acrylate monomer to arrive at a total amount of suitable alkyl acrylate monomers to arrive at the claimed invention.
The mixtures are partially polymerized under a nitrogen-rich atmosphere to provide a syrup which is then coated and cured between release liners, see p. 6, [0056] and p. 8, [0059]. Thus the adhesive film is prepared by crosslinking of a prepolymer as claimed.
Regarding claim 18, the composite assembly is claimed be prepared by a series of operations which are method limitations and do not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Xia also discloses a composite assembly as claimed.
In particular, Xia discloses an adhesive composition that includes an alkyl (meth)acrylate ester in which the alkyl group has 4 to 18 carbon atoms and a copolymerizable monomer, see abstract and p. 1, [0007]. Example 1 at p. 7, [0056] of the reference combines 55 parts by weight of 2-ethylhexyl acrylate, 25 parts of isobornyl acrylate, 20 parts of 2-hydroxyethyl acrylate, and minor amounts of photoinitiator and other additives. This is 80 parts of the claimed alkyl acrylate soft monomers and 20 parts of the claimed acrylate polar monomer as claimed. See also Table 1 on p. 9.
Example 4 uses 75 parts by weight of 2-ethylhexyl acrylate, 10 parts of 2-hydroxyethyl acrylate, and 15 parts of N,N-dimethyl acrylamide for a total of 75 parts of alkyl acrylate soft monomer and 25 parts of acrylate polar monomers as claimed. See p. 8, [0059] and Table 1.
The mixtures are partially polymerized under a nitrogen-rich atmosphere to provide a syrup which is then coated and cured between release liners, see p. 6, [0056] and p. 8, [0059]. Thus the adhesive film is prepared by crosslinking of a prepolymer as claimed. The release liners read on the claimed first and second assemblies.
Xia also teaches laminating a printed lens and a second display substate, see p. 2, [0017]. These also read on the claimed first and second assemblies.
Furthermore, Xia teaches forming the prepolymer in a nitrogen atmosphere reading on an inert gas as claimed. Note that nitrogen is considered an inert gas in the present specification, see p. 6, [0033] of the original disclosure. Xia also teaches adding either a thermal initiator or a photoinitiator, and exposing the prepolymer to either heat or UV light, respectively, to initiate and later complete curing of the adhesive. See p. 2, [0016]. A solvent may also be included, see p. 4, [0031]. The monomer amounts disclosed in the examples of the reference are within the claimed ranges as described above, see Examples 1 and 4 in Table 1.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Xia (U.S. Pub. 2013/0323521) in view of WO 2019/088752 A1. Lee (U.S. Pub. 2021/0079269) was relied upon as the translation of WO ‘752.
Regarding claim 6, Xia discloses an adhesive composition that includes an alkyl (meth)acrylate ester in which the alkyl group has 4 to 18 carbon atoms and a copolymerizable monomer, see abstract and p. 1, [0007]. Example 1 at p. 7, [0056] of the reference combines 55 parts by weight of 2-ethylhexyl acrylate, 25 parts of isobornyl acrylate, 20 parts of 2-hydroxyethyl acrylate, and minor amounts of photoinitiator and other additives. This is 80 parts of the claimed alkyl acrylate soft monomers and 20 parts of the claimed acrylate polar monomer as claimed. See also Table 1 on p. 9.
Example 4 uses 75 parts by weight of 2-ethylhexyl acrylate, 10 parts of 2-hydroxyethyl acrylate, and 15 parts of N,N-dimethyl acrylamide for a total of 75 parts of alkyl acrylate soft monomer and 25 parts of acrylate polar monomers as claimed. See p. 8, [0059] and Table 1.
The mixtures are partially polymerized under a nitrogen-rich atmosphere to provide a syrup which is then coated and cured between release liners, see p. 6, [0056] and p. 8, [0059]. Thus the adhesive film is prepared by crosslinking of a prepolymer as claimed.
Xia does not specify that the prepolymer has a molecular weight of at least 600,000 Da as claimed.
Lee describes a multilayer adhesive tape used with optical components such as polarizing plates, optical compensation films, and other components for a liquid crystal display (LCD), see p. 1, [0002]. The adhesive includes a cured product of a low molecular weight acrylic prepolymer and a high molecular weight acrylic prepolymer, in which the high molecular weight prepolymer has a molecular weight in the range of 100,000 to 1,500,000 g/mol, see p. 2, [0035] describing the molecular weight range and p. 4, [0070] describing the acrylic components of the high molecular weight prepolymer. Crosslinking takes place to connect the low- and high-molecular weight prepolymers, see p. 3, [0052]
Xia and Lee are analogous because they each disclose crosslinking of acrylic prepolymers to form an adhesive layer used in electronic display devices, thus they are similar in composition and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to have used a high molecular weight acrylic prepolymer as taught in Lee in the adhesive formulation of Xia to arrive at the claimed invention, as Lee teaches that the high molecular weight prepolymer provides excellent adhesive properties and controllable durability to the layer, see p. 2, [0038-0041]. In particular, the high molecular weight prepolymer contributes to reliability at high temperature and/or high humidity conditions, see p. 2, [0041].
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Behling (U.S. Pub. 2018/0291240) teaches an assembly for a flexible device which includes an acrylic pressure-sensitive adhesive layer between two flexible substrates. The adhesive uses a combination of alkyl (meth)acrylate and functional-group containing alkyl (meth)acrylate monomers reacted to form a prepolymer that is then applied to release liners and further crosslinked to form the resulting polymer. The reference is cumulative.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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, Curtis Mayes can be reached on (571) 272-1234. 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.
/Scott R. Walshon/ Primary Examiner, Art Unit 1759
Prosecution Insights