DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 8 in the amendments filed 8/25/2026.
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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 8/25/2026, with respect to the objections to claims 1, 6 and 8 as set forth in paragraphs 4-6 of the action mailed 6/3/2026, have been fully considered and are persuasive. The objections to claims 1, 6 and 8 have been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 8/25/2026, with respect to the rejection of claims 1-12 under 35 U.S.C. 112(b) as set forth in paragraph 8 of the action mailed 6/3/2026, have been fully considered and are persuasive. The rejection of claims 1-12 has have been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1-7 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (US 2020/0017722 A1) in view of Asano (US 2023/0295476 A1) and in further view of Takarada et al. (US 2011/0111220 A1) and Kikuchi et al. (US 2019/0047264 A1), and in light of the evidence provided via Satake et al. (US 5814685).
Regarding claim(s) 1-7 and 11-12, Uchida teaches a double-sided pressure-sensitive adhesive (PSA) sheet (adhesive sheet) that is capable of being used for adhesion of two component member of a flexible display device (current claim 11) (para 0001). The double-sided PSA sheet has no substrate (adhesive layer), and is formed via a PSA composition comprising a (meth)acrylate ester (co)polymer (A) (para 0025), crosslinking agent (B) (photocurable compound (B)) and photoinitiator (C) (photopolymerization initiator (C)) (para 0027-0028). The PSA layer is formed on a release film (current claim 12) (para 0226).
Uchida also teaches that the (meth)acrylate ester (co)polymer (A) comprises:
an alkyl (meth)acrylate having 4 to 18 carbon atoms in a side chain such as, inter alia, a
combination of n-butyl acrylate (alkyl (meth)acrylate (a1), linear alkyl group with 4 carbon atoms) and 2-ethylhexyl acrylate (para 0101-0105, 0112), and is present at 30 to 90 % by mass of the copolymer (para 0134);
a copolymerizable monomer (B) such as 2-hydroxyethyl (meth)acrylate (polar group-containing monomer (a3), current claim 2) (para 0114), and is present at 0 to 30 % by mass of the copolymer (para 0136); and,
has a mass average molecular weight (Mw) of 100,000 to 1,500,000 (para 0144), which overlaps that presently claimed (600,000 to1,500,000, current claim 3). The Examiner notes that 2-ethylhexyl acrylate is identical to that presently disclosed as representative for the presently claimed (meth)acrylate (a2) having glass transition temperature (Tg) lower than the Tg of alkyl (meth)acrylate (a1).
Uchida does not specify that the n-butyl acrylate is present at 20 to 60 mass%, or the presently claimed mass ratio (W(a2)/W(a1) = 0.3 to 3.0) of the 2-ethylhexyl acrylate to the n-butyl acrylate, but Uchida does teach that the (meth)acrylate copolymer has a Tg of -50 to -20 ℃ (abstract, para 0128) towards the prevention of “buckling” (para 0086) and adequate flexing durability (para 0184). Uchida does not specify teach the presently claimed storage shearing elastic modulus of 800 kPa or less at -20 ℃, or 500 kPa or less at -20 ℃ (current claim 6),
Uchida also teaches that alkyl (meth)acrylates having a tertiary carbon atom (e.g., 2-ethylhexl acrylate) provide for adjusting the modulus (G’) (para 0110) as does the selection of the photoinitiator (C) (para 0168). Uchida further instructs that the modulus (G’) and the whitening resistance (e.g., the haze) benefit from including the copolymerizable monomer (B) (e.g., 2-hydroxyethyl (meth)acrylate) (para 0131).
Uchida further discusses the storage shear elastic modulus (G’) as dependent on the temperature towards improving the flexing resistance (para 0023, 0072); and the prevention of “buckling” due to the Tg and (G’) being too high at a particular temperature (para 0086) and the prevention of “flowing” due to the (G’) being too low at a particular temperature (para 0087). The Examiner notes that it is established in the art that the Tg of a polymer is determined from the Tg values of the monomeric components comprising said polymer, and their respective proportions, as evidenced via Satake (see column 4, lines 4-19 therein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the n-butyl acrylate in the presently claimed mass% and the presently claimed mass ratio of the 2-ethylhexl acrylate to the n-butyl acrylate - and to further provide the PSA layer with the presently claimed modulus (G’) - based on the Tg of the copolymer (A), the prevention of “buckling” and “flowing,” and the flexing durability required of the prior art’s intended application as in the present invention.
Uchida continues to teach that the crosslinking agent (B) comprises, inter alia, bisphenol A polyethoxy di(meth)acrylate (para 0158), with the polyethoxy portion providing a polyalkylene oxide skeleton (current claim 4).
Uchida is silent to the PSA sheet further comprising a silane coupling agent (D) (current claim 5), but Uchida does instruct that the PSA further comprises known additives (para 0178).
In addition, Asano teaches an adhesive composition for image display device (title) comprising an acrylic resin (A) (para 0083), cross-linkable monomer (C) (para 0104) and a silane coupling agent towards a balance of adequate adhesion, transparency and moisture-and-heat resistance under high-temperature and high-humidity (para 0119-0121).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA of Uchida with a silane coupling agent towards said PSA demonstrating the balance of adequate adhesion, transparency and moisture-and-heat resistance under high-temperature and high-humidity as required of the prior art’s intended application as in the present invention.
Uchida is silent to the PSA sheet having a gel fraction of 30 to 95 mass% (current claim 7).
However, Takarada teaches an optical-use PSA sheet (title) comprising a PSA layer having a gel fraction of 30 to 80% by weight towards a balance of flexibility and hardness (para 0048).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA of Uchida demonstrating the presently claimed gel fraction based on the balance of flexibility and hardness as required of the prior art’s intended application as in the present invention.
Uchida is silent to the PSA sheet demonstrating the presently claimed oil-resistant adhesion rate under the presently recited conditions.
However, as noted previously, Uchida teaches that the PSA (meth)acrylate copolymer comprises of a preponderance of n-butyl and 2-ethyhexyl acrylates. It is significant to note that n-butyl and 2-ethyhexyl acrylates provide acrylate polymers with oil resistance as disclosed in Kikuchi (see para 0357 therein). The Applicant is also respectfully reminded that,
Where the claimed and prior art products are identical or substantially identical in
structure or composition, a prima facie case of either anticipation or obviousness has
been established. "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, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Thus, given that the combination of the cited prior art teaches all the limitations of the presently claimed adhesive sheet, including identical components in identical proportions, it is reasonable to conclude that the PSA sheet of the prior art would demonstrate the presently claimed oil-resistant adhesion rate under the claimed conditions.
Regarding claims 9-10, while Uchida does not specify that the PSA sheet is transparent, with a light transmittance of not less than 80% and a haze not greater than 5%, Uchida is conspicuously directed to the employing the PSA sheet in optical components (para 0233), which one skilled in the art would recognize as requiring optical properties such as transparency and minimal haze.
Indeed, 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 optical properties of the PSA sheet of Uchida to those presently claimed based on said properties required of the prior art’s intended application as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 8/25/2026, with respect to the rejections of claims 1-4, 6 and 9-12 over Uchida et al. under 35 U.S.C. 103; claim 5 over Uchida et al. in view of Asano et al. under 35 U.S.C. 103; claim 7 over Uchida et al. in view of Takarada et al. under 35 U.S.C. 103; and claim 8 over Uchida et al. in view of Asano et al. and in further view of Takarada et al. and Kikuchi et al. under 35 U.S.C. 103 as set forth in paragraphs 11-14 of the action mailed 6/3/2026, have been fully considered but they are not persuasive.
For convenience, the Examiner respectfully provides the specifics of the Decisions cited by the Applicant:
From MPEP 2112, In re Oelrich, 666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981). Also, "[a]n invitation to investigate is not an inherent disclosure" where a prior art reference "discloses no more than a broad genus of potential applications of its discoveries."
and,
In PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 112 USPQ2d 1945 (Fed. Cir. 2014), the Federal Circuit remanded a decision to the district court because the record did not present sufficient evidence to prove inherency in the context of obviousness. The district court concluded the pharmacokinetic parameters of a claim are inherent properties of the obvious formulation. The Federal Circuit stated that while "inherency may support a missing claim limitation in an obviousness analysis", "the use of inherency, a doctrine originally rooted in anticipation, must be carefully circumscribed in the context of obviousness." Id. at 1194-95, 112 USPQ2d at 1952. "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952.
The Examiner also respectfully notes additional Decisions in MPEP 2112 germane to the Applicant’s arguments:
"In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original).
and,
Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements." (emphasis in original).
In response, the Examiner respectfully reminds the Applicant that,
MPEP 2123(I) instructs that “The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
In this spirit, and as postured previously and currently, the prior art rejection conspicuously demonstrates the obviousness of providing the copolymer (A) of Uchida with the presently claimed proportions of the n-butyl acrylate and the 3-ethylhexyl acrylate based on at least providing the copolymer (A) with a specific Tg value. Also, it is established in the art that the merits of such a proportional selection would have been an obvious choice to one skilled in the art in ostensible recognition that a specific Tg value for a polymer comprising a PSA composition/layer would be based on the specific properties required and/or desired by the PSA composition/layer of Uchida (See, for example, column 8, lines 58 to column 9, line 8 of US 7070051 B2 to Kanner et al.). Indeed, the rejection does provide a “particular adhesive sheet” comprising the n-butyl acrylate and the 2-ethylhexyl acrylate in the presently claimed ratio, the presently claimed storage shear elastic modulus, and the motivations towards the same, as would be understood by the skilled artisan.
Continuing, the Examiner respectfully reminds the Applicant that the Office does not have the ability to conducts tests, or accrue data, on the compositions disclosed in prior art references. Further, as stated in the previous and current prior art rejections, the combination of the cited prior art teaches all the compositional elements, and their respective proportions, as recited in the presently claimed invention. Thus, the Examiner submits that the PSA layer of the cited prior art would demonstrate the presently claimed oil-resistance adhesion rate (as determined under the recited conditions), and that the rationale towards the Examiner’s position is in accordance with the PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc. Decision stating that "[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Examiner’s emphasis.
The Examiner further asserts that 1) no statement or implication was set forth in the prior art rejections of record suggesting that the claim limitations in dispute were “intended use;” and 2) the inclusion of Kikuchi’s instruction to the skilled artisan in regards to the oil-resistance provided by the monomeric components of the cited copolymer was not intended to solely, and in and or itself, teach or render obvious the oil-resistant adhesion rate, but was further cited - in tandem with the remainder of the cited prior art disclosures and with the knowledge available to the skilled artisan - towards necessitating that the claimed rate limitations would have been demonstrated by the inventive PSA composition/layer of the prior art.
The Examiner respectfully notes that the position of the disputed rejections was not attempting to rebut or ignore the Decision of In re Oelrich, in attempting to provide "[a]n invitation to investigate is not an inherent disclosure, but was instead a submission that the disclosures of the prior art references provide a “...basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original) as the recited oil-resistant adhesion rate would be a direct result of the cited prior arts’ compositional and proportional elements. Original and Examiner’s emphasis.
Again, the Examiner’s Position is in accordance with PAR Pharmaceutical, Inc. stating that “inherency may support a missing claim limitation in an obviousness analysis" as long as "the use of inherency, a doctrine originally rooted in anticipation, must be carefully circumscribed in the context of obviousness." Examiner’s emphasis.
Turning now to Kikuchi, the Examiner respectfully reiterates that Kikuchi was employed solely to demonstrate that the n-butyl and 2-ethylhexyl acrylates are established as providing oil-resistance to polymers of which they comprise regardless of the end-application in which said polymers are employed such as adhesives or acrylic-type rubbers. The Examiner also respectfully submits that 1) the Applicant’s characterization that Kikuchi discloses “numerous” monomers in regards to providing the oil-resistance is overstated as Kikuchi only discloses seven (7) such monomers, to include the n-butyl and 2-ethylhexyl acrylates; and 2), Kikuchi does explicitly instruct that n-butyl and 2-ethylhexyl acrylates provide oil-resistance to acrylic polymers.
Further, it is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA). In this spirit, Kikuchi was only employed as noted above, whereas the cited prior art references as whole provide disclosures that extend the lone teachings of Kikuchi towards the oil-resistance of acrylic polymer employed in PSA compositions/layers and the obviousness of the oil-resistant adhesion rate presently claimed.
Turning now to the data presently disclosed, the Examiner respectfully reminds the Applicant that,
As set forth in MPEP 716.02(d), whether unexpected results are the result of
unexpectedly improved results or a property not taught by the prior art, “objective
evidence of nonobviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In other words, the showing of unexpected results must
be reviewed to see if the results occurred over the entire claimed range, In re Clemens,
622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed range of the alkyl (meth)acrylate (a1) (disclosed as butyl acrylate) given that at least claim 1 provides that the (a1) component is present at 20 to 60 mass% relative to the (meth)acrylic copolymer (A). However, inventive Examples (1) to (4) comprise butyl acrylate in a range of approximately 30 to 50 mass% with no data provided at or near the upper and lower limits presently claimed.
In addition, the presently claimed invention lacks commensuration in regard to the mass ratio (W(a2)/W(a1)), which ranges from 0.3 to 3.0 while the data is limited to values ranging from 0.41 to 1.00. A similar issue is demonstrated in the presently claimed storage shearing elastic modulus at -20 ℃ of not greater than 800 kPa versus the upper limit of the data of 328 kPa.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 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, Alicia A Chevalier can be reached at 571-272-1490. 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.
/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 10/3/2026
Prosecution Insights