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 with traverse of Group III, claims 7-11, in the reply filed on September 18, 2026, is acknowledged. The traversal is on the ground(s) that examination of all claims does not present a search burden. This is not found persuasive because all claim groups include limitations not present in the elected claims. Claim 1 requires a loop stiffness higher than that of elected claim 7. Claim 4 requires the adhesive to be a pressure-sensitive adhesive, which is also not required by claim 7. Method claims 12-14 all require adhering members that are not required by elected claim 7. Therefore, the search required to find these additional elements presents a serious burden.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
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 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0134926 Lei et al.
Regarding claim 7, Lei teaches a foaming adhesive sheet (paragraph 0001) comprising a first adhesive layer 2, a substrate 1, and a second adhesive layer 2, in this order (figure 1),
wherein
the first adhesive layer and the second adhesive layer contain a thermosetting adhesive agent (paragraph 0044, where curing is a feature of thermosets);
at least one of the first adhesive layer and the second adhesive layer further contains a foaming agent (paragraph 0052).
Lei does not explicitly teach different compositions for the first and second adhesive layers. However, Lei does teach that the materials, fillers and other additives change the properties of the adhesive layers (paragraphs 0046, 0057 and 0065). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to alter the compositions of the first and second adhesive layers to obtain the desired characteristics for each side of the product depending on the final application.
Since the instant specification is silent to unexpected results, the specific composition of the adhesive layers, including similarities or differences, is not considered to confer patentability to the claims. As the physical and optical characteristics are variables that can be modified, among others, by adjusting the parameters of the method, the precise compositions, and therefore properties, would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed different compositions cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the invention, would have optimized, by routine experimentation, the compositions of the first and second adhesive materials to obtain the desired physical characteristic (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP 2144.05 Section II.
Lei does not explicitly teach the curvature radius or the loop stiffness. However, as Lei satisfies all of the previous limitations, Lei’s materials and method are indistinguishable from the claimed materials and method. Therefore, it is reasonable to expect that Lei’s curvature radius of a curl of the foaming adhesive sheet after placed still at a temperature of 600C and a humidity of 10 %RH or less for 15 hours would also be 15 mm or more, and a loop stiffness would also be 45 mN/10 mm or more. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established” (MPEP 2112.01 Section I).
Regarding claim 8, Lei teaches that the first adhesive layer and the second adhesive layer contain the foaming agent (paragraph 0052).
Regarding claim 9, Lei teaches that a thickness of the substrate (2-200 microns, paragraph 0042) is thinner than a thickness of the first adhesive layer and a thickness of the second adhesive layer (33 to 300 microns, paragraph 0115 teaching a 30-micron thickness at time of application and paragraph 0056 teaching a 1.1x to 10x expansion after foaming).
“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 33 to 300 microns reads on the claimed range of greater than 2-200 microns.
Regarding claim 10, Lei teaches that the tack of the first adhesive layer is 0 gf (paragraph 0068, where tack-free may be desired), and a tack of the second adhesive layer is greater than the tack of the first adhesive layer (paragraph 0068, where tack sufficient for temporary fixing is desired). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of greater than 0 gf tack for the second adhesive layer reads on the claimed range of 10 to 500 gf.
Regarding claim 11, Lei teaches a curl adjusting layer 3 on a surface of the second adhesive layer that is opposite side to the substrate (figure 1, where any layer will provide some structure, which adjusts the curl).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781
