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 § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 7 are 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.
As to claim 4, this claim recites “dimer acid (a2)” and “dimer diol (b2)”. It is unclear whether dimer acid (a2) and dimer diol (b2) further refer to “polyvalent carboxylic acid (a)” and “polyhydric alcohol (b)”, respectively, of parent claim 1.
As to claim 7, this claim recites “a total content of the structural units derived from the dimer acids (a2) and the structural units derived from the dimer diols (b2)…. There is lack of antecedent basis with respect to claim recitation “the structural units derived from the dimer acids (a2) and the structural units derived from the dimer diols (b2)”.
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.
Claims 1-6, 8-9,11, 13-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020050018 A1 (US 20210171803 A1 to Hatakeyama et al. is relied upon as English equivalent document in the rejection).
As to claim 1, Hatakeyama discloses an adhesive tape including a substrate and an adhesive agent layer of polyester adhesive agent (a polyester adhesive composition) on at least one of opposite surfaces of the substrate (abstract and 0002).
Further, as to claim 1, the polyester adhesive agent of Hatakeyama includes a polyester resin (A) (0158) and polyepoxy compound (D) as crosslinking agent (0261-0262).
Further, as to claim 1, the polyester resin (A) of Hatakeyama has structural units derived from polyvalent carboxylic acid (PCA) compound and structural units derived from polyol (polyhydric alcohol (b)) (0158).
Further, as to claim 1, Hatakeyama discloses that PCA compound includes aromatic PCA compound such as isophthalic acid (cyclic structure containing polyvalent carboxylic acid (a1)) (0170, 0294), and the proportion of the aromatic PCA compound is preferably no greater than 80 mol% based on the overall amount of the PVCAC. According to Hatakeyama, if the proportion is excessively small, the resin tends to be crystallized, resulting in insufficient adhesion. Further, if the proportion is excessively high, the compatibility and the initial adherence or tackiness is poor (0171). The claimed range of content of structural units derived from cyclic structure containing PCA of 30 mol% or more overlaps or within the range disclosed by Hatakeyama such that prima facie case of obviousness exists. See MPEP 2144.05 (I). It would have been obvious to arrive at the claimed content of structural units derived from a cyclic structure containing PCA, which is rendered obvious by Hatakeyama, motivated by the desire to form polyester resin having suitable adhesion and initial adherence.
Further, as to claim 1, Hatakeyama discloses that the polyol includes aliphatic diol (aliphatic polyhydric alcohol (b1)) (0179) including liner polyol such as e.g. 1,4-butanediol (0179, 0186, and 0294).
Further, as to claim 1, Hatakeyama discloses the polyester resin has acid value of not more than 10 mgKOH/g (0227).
Further, as to claim 1, Hatakeyama discloses that the polyester resin has Tg of -80°C to 20°C from the viewpoint of maintaining flexibility, adhesiveness, and cohesive force of the adhesive agent (0223). The claimed Tg of polyester resin of -75 to -20°C overlaps or within the Tg disclosed by Hatakeyama such that prima facie case of obviousness exists. See MPEP 2144.05 (I). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the polyester resin having the claimed Tg, motivated by the desire to form adhesive having flexibility, adhesiveness, and cohesive force.
Further, as to claim 1 limitation “(6) the polyester resin (A) has less than 140 mol% of structural units derived from a cyclic ester….”, the examiner submits that “less than 140 mol%” includes zero such that the polyester resin (A) is free from the structural units derived from a cyclic ester.
As to claim 2, Hatakeyama discloses isophthalic acid (0170), which is monocyclic PCA.
As to claim 3, Hatakeyama discloses that polyol includes e.g. 2-methyl-1,3-propannediol (0179), which contains -CH3 (methyl group) as a hydrocarbon group in one side chain.
As to claims 4 and 6, Hatakeyama discloses that polyol includes dimer diols (0180).
As to claim 5, Hatakeyama discloses from 3 to 95 mol% of the liner polyol based on the overall amount of the polyol (0187).
As to claim 8, Hatakeyama discloses that the polyester resin has an ester bond concentration of 1.5 to 14 mmol/g (0219).
As to claim 9, Hatakeyama discloses from viewpoint of storage stability, the polyester resin is free from crystallization (crystal fusion heat of zero) (0226) or has crystallization energy of not greater than 5 J/g (0226).
As to claim 11, Hatakeyama discloses that the reactive group present in the crosslinking agent D is 0.2 to 10 equivalent per equivalent of hydroxyl group and/or carboxyl group of the polyester resin (0264). Hatakeyama further discloses polyepoxy compound as the crosslinking agent (0262), which would have epoxy group as reactive group.
As to claim 13, Hatakeyama discloses adhesive containing crosslinked polyester adhesive agent composition (0261).
As to claim 14, Hatakeyama discloses that the polyester adhesive has a gel fraction of 15 to 95 wt% (0281).
As to claims 15 and 17, Hatakeyama discloses an adhesive tape including a substrate and an adhesive agent layer of polyester adhesive agent (a polyester adhesive composition) on at least one of opposite surfaces of the substrate (abstract).
As to claim 16, Hatakeyama as set forth previously renders obvious claimed adhesive sheet. As such, absent any factual evidence on the record, it is reasonable to presume that the adhesive sheet of Hatakeyama inherently has the claimed haze value of 3% or less.
As to claim 18 preamble “decorative film”, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
The examiner submits that preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, decorative does not result in a structural difference between the presently claimed invention and the adhesive tape of Hatakeyama, which also includes e.g. colorants in the substrate (0104 and 0147) and capable of functioning as a decorative film.
As to claim 19, Hatakeyama discloses that the adhesive tape includes adhesive film (0015 and abstract). Further, as to claim recitation “film for electronic member”, this recitation is deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the adhesive tape/film of Hatakeyama renders obvious claimed film, it meets the intended use (i.e. the adhesive tape/film can be bused for electronic member).
As to claim 21, the polyester adhesive composition recited in this claim is similar in scope as claim 1 except for conditions (5) and (6). The invention of Hatakeyama with respect to adhesive tape comprising polyester adhesive composition and polyepoxy compound is disclosed previously with respect to claim 1 and it is incorporated here by reference. As to claim preamble “decorative film”, as set forth previously (see claim 18), the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, decorative does not result in a structural difference between the presently claimed invention and the adhesive tape of Hatakeyama, which also includes e.g. colorants in the substrate (0104 and 0147) and capable of functioning as a decorative film.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020050018 A1 (US 20210171803 A1 to Hatakeyama et al. is relied upon as English equivalent document in the rejection) as applied to claim 1 above, and further in view of WO 2020218174 A1 (US 20220033693 A1 to Suzuki is relied upon as English equivalent document in the rejection).
Hatakeyama is silent as to disclosing claim 7.
Suzuki discloses a polyester resin that has global environmental friendliness, excellent adhesive properties with respect to variety of adherends that is prepared by using at least one plant derived material such as dimer acid, sebacic acid, and dimer diol (0017). Further, Suzuki discloses that at least one of dimer acid, sebacic acid, and dimer diol is not less than 60 wt% based on total weight of the polyester resin (0018 and claim 1). The examiner submits that a person having ordinary skill in the art would recognize that Suzuki incorporates a combination of dimer acid and dimer diol with total amount within the claimed range of 20-90 mass%, because Suzuki discloses that at least one of dimer acid, sebacic acid, and dimer diol is used in a proportion of not less than 60 wt% of the polyester resin.
It would have been obvious to arrive at the polyester resin as claimed in claim 7, motivated by the desire to form adhesive having global environmental friendliness and excellent adhesive properties with respect to variety of adherends.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020050018 A1 (US 20210171803 A1 to Hatakeyama et al. is relied upon as English equivalent document in the rejection) as applied to claim 1 above, and further in view of Takahira et al. (US 20120301717 A1).
Hatakeyama is silent as to claims 10 and 12.
Takahira discloses adhesive composition comprising polyester as main component and polyepoxy crosslinking agent in the amount of from 1 to 10 parts by mass relative to 100 parts by mass of polyester resin in order to control the gel fraction in the range of 30 to 95% (0001 and 0031). Takahira further discloses nitrogen atom containing polyepoxy crosslinking agent (Example 1 at 0094 discloses Tetrad-C and 0030).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a polyepoxy crosslinking agent and its amount disclosed by Takahira and use it in the adhesive of Hatakeyama, motivated by the desire to form adhesive with suitable adhesive force, cohesive force, and heat resistance (0036 of Takahira).
Claims 1, 13, 17, 18, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al. (US 20200282605 A1) in view of WO 2020050018 A1 (US 20210171803 A1 to Hatakeyama et al. is relied upon as English equivalent document in the rejection).
Sasaki discloses a functional adhesive film such as decorative film that can be adhered to various adherends such as windows of building materials such as exteriors, interiors, and windows; vehicles such as automobiles, trains and aircrafts…furniture…screens of large sized TVs (0002 and 0314). The examiner submits that materials such as windows, furniture etc. disclosed by Sasaki are recognized by one of ordinary skill in the art as molded objects or inherently encompass molded objects. The adhesive film of Sasaki includes support (substrate), adhesive layer, and a mold release film having concave-convex structure (0251 and 0001). Further, Sasaki discloses that the adhesive layer includes polyester based adhesive agent (0286).
Sasaki is silent as to disclosing polyester adhesive as claimed in claims 1, 13, and 21.
The invention of Hatakeyama with respect to the polyester adhesive is previously disclosed in the Office action (See rejection of claims 1, 13, and 21) and incorporated here by reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
June 3, 2026
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