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 .
Election/Restrictions
Applicant’s election without traverse of Species group II in the reply filed on 08/24/2026 is acknowledged.
Species groups I and III are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/24/2026.
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 (i.e., changing from AIA to pre-AIA ) 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 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) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 10,836,937) in view of Jung et al. (KR 20180032132).
Regarding claims 1, 2, 4, 5, 7, 9, and 10, Suzuki et al. teaches a PSA composition comprising a (meth)acrylic polymer comprising, as monomeric components constituting the (meth)acrylic polymer: (A) a C.sub.2-18 alkyl (meth)acrylate, and (C) a monomer having a hydroxyl group (See Abstract), which corresponds to (meth)acrylate monomer and hydroxyl-containing monomer as claimed, and wherein component (A) content is 30% to 90% by weight and component (C) content is 5% to 30% by weight (col. 7, line 22-col. 8, line 16). The composition comprises initiator in an amount of 0.001 to 5 parts by weight (col. 13, line 59-col. 15, line 44).
It is noted that Suzuki et al. discloses amounts of components in weight percent while claims recite parts by weight. However, given that the amounts disclosed by Suzuki et al. overlaps those amounts claimed, respectively, it is clear that Suzuki et al. meets the ranges as presently claimed, absent evidence to the contrary.
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); see MPEP 2144.05.
Suzuki et al. teaches other monomer(s) or optional monomers may be present (col. 8, lines 17-20) but fails to teach the high Tg monomer as claimed.
However, Jung et al. teaches an adhesive composition comprising an acrylic copolymer including 40 to 95% by weight of a (meth) acrylate monomer containing an alkyl group having from 1 to 12 carbon atoms in addition to 3 to 25% by weight of a hydroxyl group-containing acrylic monomer. In addition, the acrylic copolymer may further include 20 to 50% by weight of a high Tg monomer having a glass transition temperature (Tg) of 10° C to 100° C (pages 4-5), including 3,3,5-trimethylcyclohexyl acrylate.
It would have been obvious to one of ordinary skill in the art to include a high Tg monomer such as 3,3,5-trimethylcyclohexyl acrylate in the composition of Suzuki et al. in order to impart desired durability and adhesion (Jung et al, page 5).
Regarding claims 3, 6, and 8, Suzuki et al. teaches examples of a C.sub.2-18 alkyl (meth)acrylate having a straight-chain alkyl group at the ester end include ethyl (meth)acrylate, n-butyl (meth)acrylate, 2-ethylhexyl (meth)acrylate, etc. (col. 3, line 58-col. 4, line 12), examples of the hydroxyl group-containing monomer include 2-hydroxyethyl (meth)acrylate, 2-hydroxypropyl (meth)acrylate, 3-hydroxypropyl (meth)acrylate, 4-hydroxybutyl (meth)acrylate etc. (col. 6, lines 20-47), and examples of initiators include 2,2-dimethoxy-1,2-diphenylethane-1-one and 1-hydroxycyclohexyl phenyl ketone (col. 14, lines 31-37).
Claim(s) 1, 2, 4 5, 7, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 10,836,937).
Regarding claims 1, 2, 4 5, 7, 9, and 10, Suzuki et al. teaches a PSA composition comprising a (meth)acrylic polymer comprising, as monomeric components constituting the (meth)acrylic polymer: (B) an alicyclic monomer including alicyclic (meth)acrylate monomers, (A) a C.sub.2-18 alkyl (meth)acrylate, and (C) a monomer having a hydroxyl group (See Abstract), which corresponds to (meth)acrylate monomer, high Tg monomer, and hydroxyl-containing monomer as claimed, and wherein component (B) content is 5% to 65% by weight, component (A) content is 30% to 90% by weight, and component (C) content is 5% to 30% by weight (col. 7, line 22-col. 8, line 16). The composition comprises initiator in an amount of 0.001 to 5 parts by weight (col. 13, line 59-col. 15, line 44). The C.sub.2-18 alkyl (meth)acrylate may be tert-butyl acrylate (col. 4, lines 1-3) which is identical to that presently claimed and, therefore, considered a high Tg monomer having a glass transition temperature as presently claimed.
It is noted that Suzuki et al. discloses amounts of components in weight percent while claims recite parts by weight. However, given that the amounts disclosed by Suzuki et al. overlaps those amounts claimed, respectively, it is clear that Suzuki et al. meets the ranges as presently claimed, absent evidence to the contrary.
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); see MPEP 2144.05.
Claim(s) 1-6 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (KR 20180032132).
Regarding claims 1, 2, 3, 4, 5, 6, 8, 9, and 10, Jung et al. teaches an adhesive composition comprising an acrylic copolymer including a (meth) acrylate monomer containing an alkyl group having from 1 to 12 carbon atoms such as n-butyl acrylate, 2-ethylhexyl acrylate, etc. in addition to a hydroxyl group-containing acrylic monomer including 2-hydroxyethyl (meth) acrylate, 2 hydroxypropyl (meth) acrylate, etc. In addition, the acrylic copolymer may further include a high Tg monomer having a glass transition temperature (Tg) of 10° C to 100° C (pages 4-5), including 3,3,5-trimethylcyclohexyl acrylate, wherein the (meth) acrylate monomer containing an alkyl group having from 1 to 12 carbon atoms is in an amount of 40 to 95% by weight, the hydroxyl group-containing acrylic monomer is in an amount of 3 to 25% by weight, the high Tg monomer is in an amount of 20 to 50% by weight (pages 4-5). Jung et al. teaches further including a photoinitiator including 2,2-dimethoxy-2-phenylacetophenone in an amount of 0.01 to 1.0 part by weight (pages 8-9).
It is noted that Jung et al. discloses amounts of components in weight percent while claims recite parts by weight. However, given that the amounts disclosed by Suzuki et al. overlaps those amounts claimed, respectively, it is clear that Jung et al. meets the ranges as presently claimed, absent evidence to the contrary.
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); see MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 08/25/2026 have been fully considered but they are not persuasive.
Applicant amended claim 1 to recite the high Tg monomer has a glass transition temperature of 60oC to 85oC.
Applicant argues the claimed Tg range is critical and points to Tables 1 and 2.
However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims. For example, the examples use specific types of monomers while the claim broadly recites any type of each monomer. There is no data at the upper end point and lower end point of each of the amounts of each of the claimed monomers. Further, there is no data at the upper end point and lower end point of the glass transition temperature of the high Tg monomer, i.e. at 60oC and at 85oC.
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 CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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