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 § 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 7, 16, 18, 20 & 22 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Shin (KR100776138B1). Claim elements are presented in italics.
1. A curable composition, the curable composition comprising, based on the total weight thereof as 100 wt%: 15-50 wt% of an ethylene-vinyl acetate copolymer; 10-40 wt% of polyvinyl butyral; and 20-60 wt% of an epoxy resin, wherein the epoxy resin is a solid epoxy resin; and 0.5-5 wt% of a photoinitiator.
With respect to claim 1, the prior art of Shin teaches a curable composition [P. 8, ¶ 2], the curable composition comprising, based on the total weight thereof as 100 wt%: 15 wt% of an ethylene-vinyl acetate copolymer; 15 wt% of polyvinyl butyral; and 45 wt% of an epoxy resin, wherein the epoxy resin is a solid epoxy resin, as the 45 wt% of epoxy acrylate is taught as a hardening part for the dissolved solution parts; and 3.5 wt% of a thermoinitiator [P. 9, Example 1], which Shin teaches can alternately be a photoinitiator [P. 7, ¶ 3-4].
These composition ranges taught by Shin fall within and anticipate the claimed ranges of 15-50 wt% of an ethylene-vinyl acetate copolymer; 10-40 wt% of polyvinyl butyral; and 20-60 wt% of an epoxy resin; and 0.5-5 wt% of a photoinitiator.
7. The curable composition according to claim 1, wherein the epoxy resin is one or more selected from a group consisting of alicyclic epoxy resins or epoxidized polyolefins.
With respect to claim 7, Shin teaches the epoxy resin is an epoxy acrylate [P. 5, ¶ 1 P. 6, ¶ 3], which is classified as an alicyclic epoxy resin.
16. The curable composition according to claim 1, wherein the photoinitiator is a cationic photoinitiator.
With respect to claim 16, Shin teaches the photoinitiator can be a cationic photoinitiator, such as 4-benzoyl 4-methyl diphenyl sulfide [P. 7, ¶ 4].
18. The curable composition according to claim 1, wherein the curable composition further comprises one or more selected from a group consisting of electrically conductive agents, thermally conductive agents, flame retardants, and fillers.
With respect to claim 18, Shin teaches the curable composition further comprises electrically conductive particles applied as fillers [P. 8, ¶ 3].
20. A curable adhesive film, comprising the curable composition according to claim 1.
With respect to claim 20, Shin teaches a curable adhesive film [P. 8, ¶ 2-3] can be formed from the curable composition according to claim 1.
22. An adhesive tape, comprising: a curable adhesive film comprising the curable composition according to claim 1; and a release film.
With respect to claim 22, Shin teaches a curable adhesive film comprising the curable composition according to claim 1 and a release film [P. 9, ¶ 2].
Claim Rejections - 35 USC § 103
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.
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 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:
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 non-obviousness.
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 2, 11, 21 & 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR100776138B1). Claim elements are presented in italics.
2. The curable composition according to claim 1, wherein the ethylene-vinyl acetate copolymer comprises 70-90 wt% of vinyl acetate units based on the total weight of the ethylene-vinyl acetate copolymer as 100 wt%.
With respect to claim 2, the prior art of Shin teaches the ethylene-vinyl acetate copolymer comprises 20-80 wt% of vinyl acetate units based on the total weight of the ethylene-vinyl acetate copolymer as 100 wt% [P. 5, ¶ 4].
A prima facie case of obviousness exists that Shin teaches the weight % of vinyl acetate units for claim 2, as the Shin range partially overlaps the claimed range of 70-90 wt% of vinyl acetate units based on the total weight of the ethylene-vinyl acetate copolymer as 100 wt%. See MPEP 2144.05(I).
11. The curable composition according to claim 1, wherein the curable composition further comprises 0.3-5 wt% of a silane coupling agent.
With respect to claim 11, Shin teaches the curable composition further comprises 0.2-10 wt% of a silane coupling agent.
A prima facie case of obviousness exists that Shin teaches the weight % of a silane coupling agent of claim 11, as the Shin range of 0.2-10 wt% fully overlaps the claimed range of 0.3-5 wt%.
21. The curable adhesive film according to claim 20, wherein the thickness of the curable adhesive film is in the range of 0.05-0.5 mm.
With respect to claim 21, Shin teaches the thickness of the curable adhesive film is in the range of 10-50 µm, or 0.01-0.05 mm [P. 9, ¶ 2].
A prima facie case of obviousness exists that Shin teaches the claim 21 element of the curable adhesive film thickness, as the Shin film thickness of 0.01-0.05 mm overlaps at an endpoint with the claimed range of 0.05-0.5 mm.
23. The adhesive tape according to claim 22, wherein the release film is attached to two opposite sides of the curable adhesive film.
With respect to claim 23, Shin teaches the curable adhesive film is formed on a release film.
Shin is silent on attaching a release film to two opposite sides of the curable adhesive film.
However, it would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to place a release film on the second side of the adhesive tape to extend the useful shelf life of the adhesive tape. If the intended use of the adhesive tape was not for permanent application shortly after its manufacture, it would have been prima facie obvious to apply release film on both sides of the adhesive to place it in a storage condition to extend its useful life. The commonly used configuration of building a manufactured tape around a roller into a spiral configuration, (e.g., Scotch tape) would have the release tape contacting both sides of the adhesive, if the adhesive film did comprise a release film.
24. The adhesive tape according to claim 22, wherein the release film is attached to one side of the curable adhesive film, and a substrate layer is attached to an opposite side.
With respect to claim 24, Shin teaches the release film is attached to one side of the curable adhesive film [P. 9, ¶ 2].
Shin is silent on a substrate layer being attached to an opposite side.
However, it would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing that the adhesive tape comprising a release layer could be applied to a substrate, based on the product desired. If the intended use of the adhesive tape was as a means of applying a component (the substrate) to another surface, it would have been prima facie obvious to apply the adhesive and release film onto the component at manufacture. The commonly used configuration of placing a manufactured adhesive with a release film onto an article or substrate (e.g., a Command hook product comprising an attached adhesive with release film) would have been prima facie obvious to a person of ordinary skill in the art if this type of configuration were desired for the product.
25. The adhesive tape according to claim 24, wherein the substrate layer is selected from a group consisting of polymeric films, woven or nonwoven fabric layers, metal foils, foam layers, and combinations thereof.
With respect to claim 25, Shin teaches examples wherein the adhesive conductive tape can be applied to a tape carrier package [P. 2, ¶ 2; P. 10, ¶ 4], which is a molded polymeric sheet.
Shin does not explicitly teach a configuration of the adhesive layer with the tape carrier package on one side and the release layer on the opposite side; however, it would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing that if a TCP application was the intended use of the adhesive, the adhesive could be applied to the TCP with the release layer from manufacturing still intact during an intermediate application step.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR100776138B1), as set forth in the rejection of claim 1, in view of Holliday (US20230120156A1). Claim elements are presented in italics.
3. The curable composition according to claim 1, wherein the Mooney viscosity of the ethylene-vinyl acetate copolymer is in the range of 25-60 MU.
With respect to claim 3, Shin teaches it is preferable to use an ethylene-vinylacetate copolymer having a molecular weight in the range of about 1,000 to 1,000,000 [P. 5, ¶ 4]. Viscosity is generally known to increase as molecular weight increases, and Shin teaches a broad range (an order of magnitude) of MW values.
Shin is silent on a viscosity range of the curable composition.
However, in a related field of art, the prior art of Holliday teaches viscosity is an important adhesive characteristic. Holliday teaches the components forming an adhesive composition should be selected to form an acceptable viscosity range, wherein “the adhesive needs to have a high enough viscosity range to prevent sagging or excessive spreading of the bead of adhesive. Below this range the applied adhesive will unacceptably spread and run and above this range the adhesive may not apply evenly or at all” [0004]. The molecular weight, (and the viscosity) of the components of an adhesive solution are understood as a result-effective variable of the resulting adhesive’s application performance.
While Shin, in view of Holliday, is silent on a Mooney viscosity range of the adhesive composition, it would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to try an ethylene-vinylacetate copolymer with a Mooney viscosity range of 25-60 MU; it would be obvious to configure the EVA component in a viscosity range to predictably configure the composition to result in an adhesive that would apply evenly to the desired substrate / release layer, but would not unacceptably run or spread. The wide mid-range Shin MW teaching of 1,000 to 1,000,000 may teach a 25-60 MU Mooney viscosity, but it would be obvious to further modify the EVA MW, (and therefore, viscosity) as needed, based on the application performance of the resulting curable adhesive.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR100776138B1), as set forth in the rejection of claim 1, in view of Butvar B-76 Data Sheet (Eastman Technical Data Sheet of Butvar B-76, from 9/6/2024 IDS). Claim elements are presented in italics.
4. The curable composition according to claim 1, wherein the polymerization degree of the polyvinyl butyral is in the range of 300-1,000.
With respect to claim 4, Shin teaches an adhesive composition can comprise a carboxyl-modified polyvinyl butyral resin, “B-76” [P. 9, Example 1].
Shin is silent on the polymerization degree of the polyvinyl butyral.
However, the Butvar B-76 Data Sheet teaches the polyvinyl butyral B-76 resin has a molecular weight of 90,000-120,000. Using the MW of a single repeating unit of 140 g/mol, the Butvar B-76 Data Sheet teaches the polyvinyl butyral B-76 resin polymerization degree is in the range of 643-857, which lies fully in the claimed range of 300-1,000.
5. The curable composition according to claim 1, wherein the acetalization degree of the polyvinyl butyral is greater than 70%.
With respect to claim 5, Shin teaches an adhesive composition can comprise a carboxyl-modified polyvinyl butyral resin, “B-76” [P. 9, Example 1].
Shin is silent an acetalization degree of the polyvinyl butyral.
However, the Butvar B-76 Data Sheet teaches the polyvinyl butyral B-76 resin has a hydroxyl content of 11.5-13.5, which (when subtracted from 100%) teaches the acetalization degree of the polyvinyl butyral is 86.5-88.5.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR100776138B1), as set forth in the rejection of claim 1, in view of Chen (US20210102061A1). Claim elements are presented in italics.
8. The curable composition according to claim 1, wherein the epoxy equivalent of the epoxy resin is in the range of 150-600.
With respect to claim 8, as set forth in the rejection of claim 1, Shin teaches an epoxy resin.
Shin is silent on the epoxy equivalent range of the epoxy resin.
However, in a related field of art, the prior art of Chen teaches a curable composition can comprise EPON 828 epoxy resin, which has an epoxy equivalent range of 185-192 [Table 1], which fully falls within the claimed range of 150-600.
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to substitute the EPON 828 epoxy resin with an epoxy equivalent range of 185-192, taught by Chen, in place of the epoxy resin taught by Shin which is silent on an epoxy equivalent range; predictably resulting in a curable composition with a known epoxy resin type having a known and desirable epoxy equivalent range.
9. The curable composition according to claim 1, wherein the curable composition further comprises 5-30 wt% of a toughening agent.
With respect to claim 9, Shin is silent on a toughening agent in the curable composition.
However, Chen teaches a curable composition comprises a toughening agent [0009] at a 1-30 wt% [0075, 0080]. Chen teaches a toughening agent can increase toughness to provide a desired toughness.
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to use the toughening agent in the curable composition, taught by Chen, to improve the curable composition of Shin in the same way, by increasing the toughness to a desired value.
A prima facie case of obviousness exists that Shin, in view of Chen, teaches the claim 9 element of toughening agent % weight, as the toughening agent range of 1-30 wt% fully overlaps at an endpoint with the claimed range of 5-30 wt%.
10. The curable composition according to claim 9, wherein the toughening agent is a toughening resin with a core-shell structure.
With respect to claim 10, as set forth in the rejection of claim 9, Chen teaches the toughening agent can be a toughening resin with a core-shell structure [0009, 0075].
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR100776138B1), as set forth in the rejection of claim 1, in view of Wu (CN102952503A). Claim elements are presented in italics.
12. The curable composition according to claim 1, wherein the curable composition further comprises 0.3-8 wt% of a chain transfer agent.
With respect to claim 12, Shin is silent on the use of a chain transfer agent.
However, the prior art of Wu teaches a similar curable epoxy resin adhesive composition [0044] further comprising a chain transfer agent [0046-0049]. Wu teaches the chain transfer agent can aid in curing and comprise a hydroxyl group-containing compound comprising ether or ester derivatives [0047], with a preferred weight % of generally 0.3-8% [0049], which exactly matches the claimed range. Wu teaches outside of this preferred % range, issues such as slow curing, or too soft or crisp an adhesive can result [0049].
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to apply the known technique of adding a chain transfer agent to a curable composition, taught by Wu, to improve the curable composition of Shin in the same way, by aiding in the curing process to improve cure rate, and to provide desired properties of the adhesive.
13. The curable composition according to claim 12, wherein the chain transfer agent is a hydroxyl-containing compound.
With respect to claim 13, as set forth in the rejection of claim 12, Shin in view of Wu, teaches the chain transfer agent can comprise a hydroxyl group-containing compound comprising ether or ester derivatives.
14. The curable composition according to claim 13, wherein the hydroxyl-containing compound is selected from a group consisting of polyols and esters or ethers of polyols.
With respect to claim 14, as set forth in the rejection of claim 12, Shin in view of Wu, teaches the hydroxyl-containing compound comprising esters.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR100776138B1), as set forth in the rejection of claim 1, as set forth in the rejection of claim 16, in view of Arakawa (US20160215165A1). Claim elements are presented in italics.
17. The curable composition according to claim 16, wherein the cationic photoinitiator is one or more selected from a group consisting of diazonium salts, iodonium salts, sulfonium salts, antimonium salts, and iron arene salts.
With respect to claim 17, as set forth in the rejection of claim 16, Shin teaches the photoinitiator can be a cationic photoinitiator, such as 4-benzoyl 4-methyl diphenyl sulfide.
Shin is silent on the cationic photoinitiator being one or more selected from a group consisting of diazonium salts, iodonium salts, sulfonium salts, antimonium salts, and iron arene salts.
However, the prior art of Arakawa teaches a UV-curable epoxy resin composition could comprise one of a variety of different cationic photoinitiators, including diazonium salt [0066-0067].
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to substitute the diazonium salt photoinitiator taught by Arakawa, in place of the 4-benzoyl 4-methyl diphenyl sulfide initiator taught by Shin, to predictably provide the same result in curing the composition. There would be a reasonable expectation of success in this initiator modification, as both are cationic photoinitiators and both compatible with epoxy resins.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Shin (KR100776138B1), as set forth in the rejection of claim 1, in view of Haensel (DE3605003A1, from 9/6/2024 IDS). Claim elements are presented in italics.
19. The curable composition according to claim 1, wherein the curable composition is solvent-free.
With respect to claim 19, Shin teaches the curable composition uses toluene / MEK as solvents to aid in dissolving and blending components of the composition [P. 9, Example 1]. Shin teaches the solvents must be volatized off in order to form a dried film [P. 9, ¶ 2].
Shin is silent on blending the curable composition free of solvents.
However, the prior art of Haensel teaches a curable adhesive film comprising a similar EVA copolymer and epoxy resin composition [0005, 0040] can be blended without the use of a solvent [0003].
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to apply the technique of blending the epoxy resin adhesive composition without a solvent, taught by Haensel, to the similar composition of Shin which is ready for improvement, to predictably result in a similar epoxy resin adhesive composition adequately blended without the use of solvent or the need for removing the solvent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY C GROSSO whose telephone number is (571)270-1363. The examiner can normally be reached on M-F 8AM - 5PM.
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, Abbas Rashid can be reached on 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
GREGORY C. GROSSO
Examiner
Art Unit 1748
/GREGORY C. GROSSO/Examiner, Art Unit 1748
/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
Prosecution Insights