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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 13 and 34. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: see, for example, 15 at page 17, line 7. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claim(s) 2 and 9-12 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.
Regarding claim 2, it is unclear what is being claimed given that the claim recites five separate wt% ranges.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation 48 to 102 kD, and the claim also recites 65 to 101 kD which is narrower, and the claim also recites 75 to 100 kD which is the narrowest statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 10 and 12, it is unclear what units limit the numerical epoxy weight equivalents.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation 0.5:1.5, and the claim also recites 0.75:1.25 which is narrower, and the claim also recites 1:1 which is the narrowest statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ueno (EP 4012000 A1).
Regarding claim(s) 22, Ueno teaches a photocurable adhesive composition comprising:
an epoxy compound comprising at least two epoxy groups in an amount of 30 to 50% by weight (5 to 60 wt% of an epoxy resin);
20 to 25% by weight of a block copolymer comprising at least two methacrylate terminal blocks and an acrylate mid-block relative to the adhesive composition (20 to 60 wt% acrylic block copolymer);
1 to 30% by weight of a tackifying resin;
and 4 to 15% by weight of a photo-cationic polymerization initiator,
which said at least two methacrylate terminal blocks comprise methyl methacrylate monomers and which and an acrylate mid-block comprises butyl acrylate (para 0010-0012, 0013, 0031-0033).
The adhesive composition also comprises at least one polyol in an amount of 5 to 50% by weight relative to the total weight of the epoxy compound comprising at least two epoxy groups (para 0019). Thus, the adhesive composition comprises the polyol in an amount ranging from 1.5 to 25% by weight (1 to 60 wt% of a polyol).
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.
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 and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueno (EP 4012000 A1) in view of Masubuchi et al. (JP 2015193746 A), and in light of the evidence provided by Miyatake et al. (EP 3006533 A1), Holguin et al. (US 6558790 B1) and Vedage et al. (US 2019/0030159 A1). The Examiner notes that citations from the ‘746 reference were taken from a machine translation, which is included with the current action.
Regarding claim(s) 1-5 and 16, Ueno teaches a photocurable adhesive composition comprising:
an epoxy compound comprising at least two epoxy groups in an amount of 30 to 50% by weight (5 to 60 wt% of an epoxy resin);
20 to 25% by weight of a block copolymer comprising at least two methacrylate terminal blocks and an acrylate mid-block relative to the adhesive composition (20 to 60 wt% acrylic block copolymer);
1 to 30% by weight of a tackifying resin;
and 4 to 15% by weight of a photo-cationic polymerization initiator (photoinitiator, current claim 16),
which said at least two methacrylate terminal blocks comprise methyl methacrylate monomers and which and an acrylate mid-block comprises butyl acrylate (para 0010-0012, 0013, 0031-0033).
The adhesive composition also comprises at least one polyol in an amount of 5 to 50% by weight relative to the total weight of the epoxy compound comprising at least two epoxy groups (para 0019). Thus, the adhesive composition comprises the polyol in an amount ranging from 1.5 to 25% by weight (1 to 60 wt% of a polyol).
Ueno teaches that the adhesive composition is coated (first layer) on the surface of a substrate (article, second layer) (para 0024) such as a polymer substrate (para 0089), but is silent to the substrate comprising polyvinyl acetal polymer (current claim 1); in an amount of at least 50 wt.% (current claim 2); wherein the substrate (i.e., the second layer) and the layer of the photocurable adhesive composition (i.e., the first layer) each have a thickness range of 5 to 1000 microns (current claim 3); wherein the substrate is disposed between the layer of the photocurable adhesive composition and a third layer comprising a thermoplastic adhesive composition (current claim 4); and said third layer is the same curable adhesive as the photocurable adhesive composition (current claim 5).
However, the photocurable adhesive compositions of Ueno are applicable in the field of electronics such as, inter alia, smartphones (para 0091).
In addition, Masubuchi teaches double-sided adhesive sheets for electronic devices (para 0005) comprising an open resin film (second layer between first and third layers, current claim 4) with a thickness of 1 to 5 mm, which overlaps that presently claimed (5 to 1000 microns, current claim 3) having adhesive layers (first layer, third layer) with a thickness of 5 to 15 mm (5 to 1000 microns, current claim 3) on both surfaces of the open resin film (para 0009) towards shear strength and impact resistance (para 0010).
Masubuchi teaches that the adhesive layers comprises an acrylic copolymer (para 0021), and that the resin film comprises polyvinyl butyral or polyvinyl formal, both of which are exemplary polyvinyl acetals, following evaporation of a solvent (100 wt.% polyvinyl acetal polymer(s), current claim 2) (para 0012-0013, 0024). The double-sided adhesive affixes two components to each other, such as a glass substrate to the frame of a mobile phone (para 0023).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the adhesive composition of Ueno in the configuration disclosed in Masubuchi (current claim 5) towards a double-sided adhesive sheet for electronic devices demonstrating shear strength and impact resistance as in the present invention.
Regarding claims 6-8, as noted above, the block copolymer comprises two methacrylate terminal blocks (hard block) and butyl acrylate mid-block (soft block), the former of which has a molecular weight of 100.12 g/mol and the latter of which has a molecular weight of 128.17. Ueno contemplates the KURARITY LA-3320 block copolymer (para 0096), which is a PMMA-PBA-PMAA block copolymer having a PMMA content of 18.7 mol% as evidenced via Miyatake (see Example 1 at para 0075 therein), and thus a PBA content of 81.3 mol%.
Thus, the amount of the PMMA is 0.187 mol × 100.12 g/mol = 18.7 grams, and the amount of the PBA is 0.813 mol × 128.1 g/mol = 104.2 grams. This yields the PMMA in a wt% of approximately 15 wt% (7 to 51 wt% of a hard block) and the PBA in a wt% of approximately 85 wt% (49 to 93 wt% of a soft block).
Regarding claim 9, the weight-average molecular weight (Mw) of the KURARITY LA-3320 block copolymer is 119,000 with a molecular weight distribution (Mw/Mn) = 1.1 (see Miyatake at para 0075), which provides the number-average molecular weight (Mn) of the KURARITY LA-3320 block copolymer as Mn = 119,000/1.1 = 108 kD, which is slightly outside the presently claimed upper limit of 104 kD. However, the Ueno does contemplate molecular weights of 120,000 g/mol, or around 100,000 g/mol (para 0039).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ an acrylate-based block copolymer having the presently claimed Mn (48 to 102 kD) based on the properties (e.g., coatability, cohesion, tack) required of the resultant adhesive composition as in the presently invention. See, for example, column 4, lines 18-24 of Holguin.
Regarding claim 10, Ueno contemplates EPIKOTE 828 as the epoxy resin (para 0096), which has an epoxy equivalent weight (EEW) of 184 to 192 (EEW of 150 to 250) as evidenced via Vedage (para 0038-0039 therein).
Regarding claim 13, Ueno teaches that the epoxy compound comprising at least two epoxy groups comprises bisphenol-based resins (para 0043-0044).
Regarding claims 14-15, Ueno teaches that the polyol is, inter alia, polyether polyol (para 0071). While Ueno does not disclose a molecular weight for the polyol(s), as noted above, the choice of molecular weight is based on the properties (e.g., coatability, cohesion, tack) required of the resultant adhesive composition (see column 4, lines 18-24 of Holguin), and would have thus been an obvious to one skilled in the art before the effective filing date of the present invention.
Claim(s) 11-12 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueno (EP 4012000 A1) in view of Masubuchi et al. (JP 2015193746 A) and in further view of Volp et al. (US 2021/0206897 A1).
Regarding claims 11-12, Ueno/Masubuchi teaches a photocurable adhesive composition comprising an epoxy compound comprising at least two epoxy groups (first epoxy resin) as in the rejection of at least current claims 1, 10 and 13 as set forth above, but is silent to a second epoxy resin in a ratio of 0.5:1.5 and comprising an EEW of 500 to 600.
However, Volp teaches an acrylic-epoxy adhesive composition (title) comprising one or more epoxy resins comprising at least two epoxy groups with molecular weight selected based on the desired properties of the cured adhesives (para 0051, 0059), and wherein the epoxy resins comprising at least two epoxy groups comprise epoxy resin having an EEW of 150 to 250 and an epoxy resin having an EEW of 500 to 600 (para 0058). The Examiner notes that the EEW of an epoxy resin is proportional to the number of epoxy groups and inversely proportional to the molecular weight of the epoxy resin.
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ epoxy resins having an EEW of 150 to 250 and an epoxy resin having an EEW of 500 to 600, and in the presently claimed ratio, based on the molecular weight properties contributed to the overall photocurable adhesive composition (e.g., coatability; see column 4, lines 18-24 of Holguin) and the curing density based on the number of curable epoxy groups as required of the resultant adhesive composition as in the presently invention.
Regarding claim 17, while Ueno/Masubuchi/Volp do not specify the presently claimed properties under the presently claimed conditions, the Examiner respectfully submits 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 cited prior art teaches or renders obvious all the limitation of the presently claimed curable adhesive composition, to include identical compositional elements and in identical proportions, it is reasonable to conclude that the cured product of the photocurable adhesive composition of the cited prior art would demonstrate one or more of the impact strength of 0.4 to 1.8 Joules, a push out strength of 50 to 1040 Joules and/or a dynamic shear of 0.5 to 7.32 MPa.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ueno (EP 4012000 A1) in view of Masubuchi et al. (JP 2015193746 A).
Regarding claim(s) 20, Ueno/Masubuchi teaches the photocurable adhesive composition coated on the surface of a substrate as in the rejection of at least current claims 1-2, which is equally applicable to the current claim, to include the photocurable adhesive composition comprising the block copolymer (thermoplastic polymer).
Conclusion
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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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.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 9/2/2026
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