DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the addition of new claim 20 in the amendments filed 7/10/2026.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The Examiner respectfully reminds the Applicant that the foreign priority document JP 2015204998 A filed 10/16/2015 has not yet been perfected. Also, as provided in the Notices of Opposition, which were cited on the IDS filed 5/7/2026, it is uncertain whether the presently claimed invention is supported by the disclosure of the ‘998 application. Should the Applicant attempt to disqualify any prior art references that predate the filing date (8/17/2016) of PCT/JP2016/074022 via the ‘998 application, it is noted that the ‘998 document must be perfected, and support for the limitations of the presently claimed invention must be provided therein.
Response to Amendment
Applicant’s arguments, see the amendments to the specification and the remarks filed 7/10/2026, with respect to the objection to the specification as set forth in paragraph 2 of the action mailed 3/13/2026, have been fully considered and are persuasive. The objection to the specification has been withdrawn.
Applicant’s arguments, see the amendments to the specification and the remarks filed 7/10/2026, with respect to the objection to claim 10 as set forth in paragraph 3 of the action mailed 3/13/2026, have been fully considered and are persuasive. The objection to claim 10 has been withdrawn.
Applicant’s arguments, see the amendments to the specification and the remarks filed 7/10/2026, with respect to the rejection of claims 1-19 under 35 U.S.C. 112(b) as set forth in paragraphs 5-6 of the action mailed 3/13/2026, have been fully considered and are persuasive. The rejection of claims 1-19 has been withdrawn.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 § 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 19 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 19, there does not appear to be support in the specification as originally filed for the recited adhesive layer disposed on the conduction substrate to be further capable of bonding the two conductive adherends to each other. See, for example, Fig. 4, which demonstrates that the entire laminate given by reference numbers (1)-(5) is capable of bonding the two adherends via both exterior adhesive layers (2), and not via the adhesive layer (1) disposed on the conduction substrate (5) comprising layers (3) and (4). Fig. 3 only allows adhesive layer (1) of an adhesive sheet to bond a single adherend via the exposed bottom, outer surface.
Claim 19 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 19, it is unclear from the claim limitations, and in light of the specification (see, for example, Fig. 2), how the adhesive layer disposed on the conduction substrate can bond the first and second conductive adherends as only one surface of the adhesive layer would be available for bonding if it is disposed on the conduction substrate.
Claim Rejections - 35 USC § 103
Claim(s) 1-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amano et al. (WO 2013/058186 A1), and light of the evidence provided by Satake et al. (US 5814685), Kanner et al. (US 7070051 B2) and the Aldrich Data Sheet. The Examiner notes that citations from the ‘186 reference were taken from US 2014/0342152 A1, which is the English language equivalent. The three evidential references were cited on the IDS filed 8/9/2024.
Regarding claims 1-11 and 17, Amano teaches pressure-sensitive adhesive (PSA) layer formed on a release film (release liner) (adhesive sheet) (para 0137), and comprising a removable water-dispersed acrylic (PSA) composition comprising an acrylic emulsion polymer and an ionic compound (para 0043); which said ionic compound is an ionic liquid composed of a cation of formulae (A)-(E) (para 0092-0112) and an anion (0092) such as, inter alia, (FSO2)2N- (bis(fluorosulfonyl)imide anion) (para 0113).
The release film is formed from materials such as, inter alia, metal foil (conduction substrate, conductive layer), with the thickness of the PSA layer comprising from 1 to 100 mm (para 0141-0142), which said thickness is identical to the presently claimed thickness of 1 to 1000 mm (current claim 11).
Amano also teaches that the acrylic polymer, which is identical to the presently claimed acrylic polymer (current claim 4), comprises an alkyl(meth)acrylate monomer such as, inter alia, n-butyl acrylate (para 0044-0049), which identical to the presently claimed monomer unit derived from an alkyl (meth)acrylate having an alkyl group having 1-14 carbon atoms (current claims 5-6); and a carboxyl group-containing unsaturated monomer (para 0044, 0050) which is identical to the presently claimed polar group-containing monomer (current claims 7-8). The acrylic polymer of Amano comprises n-butyl acrylate in an amount of 70 to 99.5 % by weight (para 0018), which specifically overlaps the presently claimed proportions of 80 to 95 parts by weight (current claim 17).
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).
Further, the cations of the ionic liquid of Amano are selected from, inter alia, ammoniums, sulfoniums and phosphoniums (para 0092-0112), which are identical to the presently claimed nitrogen-containing onium cations, sulfur-containing onium cations and phosphorous-containing onium cations (current claim 9) such as, inter alia, tetramethylammonium (para 0105), with a molecular weight of 74 g/mol which is identical to that presently claimed of 250 or less (current claim 10). The content of the ionic liquid per 100 parts by weight of the acrylic polymer is 0.001 to 4.9 parts by weight, which overlaps that presently claimed (0.5 to 30 parts by weight, current claim 2), towards a balance of sufficient antistatic properties and the prevention of staining (para 0129).
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 composition of Amano with the presently claimed ionic liquid in the recited proportions based on the balance of antistatic properties and the prevention of staining as required by the prior art’s intended application as in the present invention.
Amano does not discuss the glass transition temperature (Tg) of the disclosed acrylic polymer, but as noted above, Amano discloses that the acrylic polymer comprises the n-butyl acrylate in an amount of 70 to 99.5 % by weight, and further comprises the carboxyl group-containing unsaturated monomer at 0.5 to 10% by weight (para 0018). The carboxyl group-containing unsaturated monomer is preferably acrylic acid (para 0050).
In this light, the Examiner notes that it established in the art that the Tg of a polymer is based on the Tg of the constituent monomers comprising said polymer, and their respective proportions, as evidenced via Satake (see column 4, lines 4-19 therein); and is selected towards a PSA demonstrating a balance of tack, peel and cohesion as evidence via Kanner (see column 8, line 58 to column 9, line 8). The Aldrich Data Sheet demonstrates that the n-butyl acrylate and acrylic acid have Tg values of -54 ℃ and 105 ℃, respectively, and thus the acrylic polymer of Amano would demonstrate a Tg value identical to that presently claimed of 0 ℃ or lower (current claim 3).
While Amano does not disclose that the PSA composition is electrically peelable; or the pre- and post-voltage adhesion forces of 0.1 to 40 N/cm as measured against a stainless steel plate (SUS304) and 1.0 N/cm or less after 10 second following application of 10 V for 30 seconds, respectively, the Examiner respectfully reminds the Applicant 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 PSA layer of Amano comprises a thickness identical to that of the presently claimed invention, and comprises an adhesive composition identical to the electrically peelable adhesive composition of the adhesive layer presently claimed, to include a polymer and an ionic liquid identical to that presently recited, and present in respective proportions as claimed, which said polymer comprises the monomeric components as claimed and in proportions as claimed, it is reasonable to conclude that the PSA would demonstrate the presently claimed electric peelable, pre-voltage adhesion for and the post-voltage adhesion force.
Regarding claims 12-13, as noted above, Amano teaches that the PSA layer is formed on a release film (release liner) such as, inter alia, metal foil (metal base substrate).
Regarding claim 14, Amano teaches that the PSA layer is provided on at least one side of a substrate (para 0147-0148) comprising a plastic sheet or film (para 0149) having an antistatic layer comprising a conductive polymer on the back surface of the substrate (para 0153-0161).
Regarding claim 15, Amano teaches that the release film is a laminate of the metal foil and, inter alia, plastic film (substrate) (para 0142).
Regarding claim 16, Amano teaches that the release film is a laminate of the metal foil (metal layer) and, inter alia, plastic film (plastic substrate) (para 0142).
Regarding claim 18, Amano teaches that the release film/PSA layer laminate is formed on a substrate (para 0148-0149), wherein the substrate has an antistatic layer on surface opposite the surface on which the PSA layer is disposed (para 0153) and formed of a conductive material (para 0154-0164).
The Examiner notes that the antistatic layer/substrate laminate teaches the presently claimed conductive adherend, and thus the PSA layer disposed on the other substrate surface teaches a laminate structure of an antistatic layer/substrate/PSA layer (i.e. PSA sheets forming a joined body).
Response to Arguments
Applicant’s arguments, see the amendments to the specification and the remarks filed 7/10/2026, with respect to the rejection of claims 1-19 over Amano et al. under 35 U.S.C. 103 as set forth in paragraph 9 of the action mailed 3/13/2026, have been fully considered but they are not persuasive.
In regard to the objective evidence allegedly presently disclosed, the Applicant is respectfully directed to the three Notices of Opposition cited on the IDS filed 5/7/2026, which were submitted in opposition to the EP 3363875 B2 patent. Item C of the 1/13/2026 Notice asserts, and experimentally demonstrates, that compositions comprising the presently claimed/disclosed compositional elements, in the recited proportions and prepared in a similar manner, would demonstrate the presently electric peelability regardless of whether the prior art references were specifically intended to be electrically peelable. See reference D5/D5a (JP 6088019 B2) of Item C(1) and reference D6D6a (JP 2009155585 A) of Item C(2). See also D7D7a (JP 2010037255 A) of Item D(1).
Turning to the cited Amano reference, the Examiner submits that the presence of a crosslinking agent in Amano’s PSA composition, as opposed to the lack of one in the present disclosed inventive examples, and the different methodologies for producing the acrylic polymers, is not a persuasive argument. First, the Applicant is respectfully reminded that,
although Amano does not disclose an identical method for forming its acrylic polymers as presently disclosed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that Amano meets the compositional limitations of the claimed composition clearly meet the requirements of the present claims.
In addition, the “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by the Applicant regarding 1) the crosslinking of Amano as disqualifying the Amano invention from providing the presently claimed electric peelability, to include its pre- and post-voltage adhesion forces; and 2) that emulsion polymerization would necessarily produce different polymers (e.g., molecular weights) than that presently claimed/disclosed; and 3), assuming a PSA composition comprising crosslinking and assuming any differences in the acrylic polymer, would such differences necessarily remove “electric peelability” from the PSA’s functionality, must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001.”
It is significant to note that JP 2010037355 A, JP 2009155585 A and JP 308819 B2 of the 1/13/2026 Notice cited above comprises a crosslinked PSA composition. The ‘819 reference also discloses emulsion polymerization and polymerization initiators “typically” used in manufacturing (meth)acrylic resins (see para 0111 therein). Machine translations of each of the three references are provided with the current action.
In regards to Amano possessing the presently claimed electric peelability properties as postured in the previous and current prior art rejections, the Examiner has submitted the reasoning for asserting that the PSA compositions of Amano are identical to those presently claimed, and would thus demonstrate identical properties, regardless of whether or not Amano specifically mentioned said properties. The Examiner further submits that the Examiner’s position in this matter is further buttressed by the experimental data provided by the 1/13/2026 Notice of Opposition. Also, the mere fact that the ionic liquids of Amano are provided towards the prevention of antistatic build-up, rather than electric peelability, does not disqualify the reference from demonstrating such as property.
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.
It is further noted that case law provides that “[T]he discovery of a previously
unappreciated property of a prior art composition, or of a scientific explanation for the
prior art’s functioning, does not render the old composition patentably new to the
discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943,
1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown
property which is inherently present in the prior art does not necessarily make the claim
patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Allowable Subject Matter
Claim 20 is allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is WO 2013/058186 A1 to Amano et al. which teaches the
PSA layer formed on a release film as applied to at least current claim 1 as set forth above in the current prior art rejection.
However, the disclosed invention of Amano does not teach or suggest that the PSA sheet comprising the PSA layer disposed on the release film, a substrate-less PSA layer employed by itself as the PSA sheet, or a substrate comprising a conductive material on a plastic substrate’s back surface (i.e., a conduction substrate) (para 0137, 0147-0154), is applicable in the laminate structure of the joined body recited in current claim 20.
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See claims 1-12 of JP 2009155585 A to Ogawa et al. JP 2010037355 to Aoki et al. (claims 1-7; para 0025).
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.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 9/10/2026
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