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 .
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 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.
Application Status
This is a first action on the merits. Claims 1-20 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 24 September 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings received on 24 September 2024 are acceptable.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 1, the claim refers to “a hydrogen abstraction-type photoinitiator” in line 8. The addition of the word “type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. MPEP § 2173.05(b)(III)(E). The Examiner suggests referring to “a hydrogen abstraction ”.
Regarding claim 3, the claim refers to “two or more types of the urethane(meth)acrylate oligomer having two (meth)acrylic groups…”. The addition of the word “type " to an otherwise definite expression extends the scope of the expression so as to render it indefinite. MPEP § 2173.05(b)(III)(E). The Examiner suggests referring to “two or more different oligomers having two (meth)acrylic groups…”.
Regarding claim 4, the claim refers to “two or more types of the urethane(meth)acrylate oligomer having two (meth)acrylic groups…”. The addition of the word “type " to an otherwise definite expression extends the scope of the expression so as to render it indefinite. MPEP § 2173.05(b)(III)(E). The Examiner suggests referring to “two or more different oligomers having two (meth)acrylic groups…”.
Regarding claim 6, the claim refers to “two or more types of the mono-functional acrylate monomer.”. The addition of the word “type " to an otherwise definite expression extends the scope of the expression so as to render it indefinite. MPEP § 2173.05(b)(III)(E). The Examiner suggests referring to “two or more different monomers”.
Regarding claim 13, the claim further limits the materials of the (meth)acrylate monomer having two (meth)acrylic groups, but one of the listed materials has three (meth)acrylic groups: trimethylolpropanetri(meth)acrylate (emphasis added). This is not consistent with materials having only two (meth)acrylic groups.
Claims 2-20 depend on or refer to one or more of the above claims and thus incorporate the above-described indefinite subject matter.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9 and 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-210578A in view of JP 2019-156959A. Machine translations of JP ‘578 and JP ’959 were relied upon for analysis except as noted.
Regarding claims 1 and 11: JP ‘578 discloses a composition comprising A) a (meth)acrylic oligomer with a molecular weight of 5,000 or more; B) a (meth)acrylic monomer, and C) a photo- and/or thermal- radical polymerization initiator. The composition has a viscosity of 150 mPa∙s or less and preferably 80 mPa∙s or less. See paragraphs [0007] and [0035]. Viscosity is measured at 25 °C, see paragraph [0035]. The Examiner has assumed that the viscosity measured at 25 °C is substantially similar to that measured at 30 °C as claimed. This overlaps the claimed viscosity range of 5 to 20 mPa∙s. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
The composition is used in image display devices, see [0059].
Component A) is a (meth)acrylate oligomer having a polyurethane backbone, see paragraph [0013], and suitable commercial materials include UV-3700B from Nippon Synthetic Co., Ltd. And UN7700 from Negami Kogyo Co., Ltd., see paragraph [0014]. These are the same commercial materials specified in claim 11 and thus are considered to meet the limitation that the urethane (meth)acrylate oligomer has two (meth)acrylic groups as required by claim 1. The amount of component A) is preferably 10 parts by weight or less based on 100 parts total of components A+B, see [0036].
Component B) is one or more (meth)acrylic monomer having one or more (meth)acryloyl groups, see paragraph [0020]. Preferably mono-functional (meth)acrylate monomers are used. Suitable mono-functional (meth)acrylic materials include alicyclic (meth) acrylates and hydroxyl-group containing (meth)acrylates and alkyl (meth)acrylates, see [0021]. Component B) is preferably a combination of an alicyclic (meth)acrylate, a hydroxyl-group containing (meth)acrylate, and a C6-C30 alkyl (meth)acrylate, see [0025]. A suitable alicyclic (meth)acrylate monomer is dicyclopentenyloxyethyl (meth)acrylate or dicyclopentanyl (meth)acrylate, see [0024]. It would have been obvious to have used a monomer having a dicyclopentenyl group as these are among the disclosed suitable alicyclic monomers for component B). Since the amount of component A) is preferably 10 parts by weight or less based on 100 parts total of components A+B, the amount of component (B) is necessarily the corresponding 90 parts by weight or more, see [0036]. This overlaps the claimed range.
Component C) is a photopolymerization initiator such as benzophenone, see paragraph [0027]. Benzophenone is one of the suitable hydrogen abstraction photoinitiators disclosed at paragraph [0062] of the present specification, thus this reads on the claimed photoinitiator. The amount of photoinitiator is preferably 0.5 to 10 parts by mass based on the total of components A+B, see [0037]. This overlaps the claimed range.
While JP ‘578 discloses that poly-functional (meth)acrylate monomers may be included in the composition (see paragraph [0020]), the reference does not specify a quantity of (meth)acrylic monomer having two (meth)acrylic groups as claimed.
JP ‘959 similarly discloses an acrylic resin used in image display devices, see [0006]. The resin includes (meth)acrylic monomer component B) which includes a monofunctional monomer b1) having a hydroxyl functional group and an alicyclic monofunctional monomer b2) as well as a linear monofunctional acrylic monomer b3), see [0020-0021] and [0029]. The reference also includes a polyfunctional (meth)acrylic monomer C) as a reactive diluent, which preferably has two (meth)acrylic functionalities, see [0025]. The amount of this material is 0.05 to 0.50 wt. % based on the total amount of the composition, see [0026]. JP ‘959 also teaches using a photopolymerization initiator D) at [0027], and a component A) which is a urethane acrylate component, see [0016].
It would have been obvious to have included a small amount of two-functional (meth)acrylic monomer as taught in JP ‘959 to the resin composition of JP ‘578 to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include this as JP ‘959 teaches that this component can adjust the crosslinking density to increase cohesive force and improve adhesive residue and reworkability when peeling the adhesive from an adherend, see [0025]. There is a reasonable expectation of success in the combination as JP ‘578 teaches that multi-functional (meth)acrylic components may be included in the composition, though not as the preferred materials, see JP ‘578 at [0020].
JP ‘578 and JP ‘959 are analogous because they are similar in composition and function as each discloses a resin composition formed from urethane acrylate, mono-functional (meth)acrylic monomers, and photopolymerization initiator.
Regarding claim 2, JP ‘578 teaches that suitable commercial polyurethane acrylate oligomers having molecular weights of 38,000 g/mol, 25,000 g/mol, 20,000 g/mol, and 15,000 g/mol, see [0014]. These are within the claimed molecular weight range.
Regarding claim 3, JP ‘578 teaches using one or more of the urethane acrylate oligomers, see [0014]. Thus the use of two such oligomers is disclosed.
Regarding claim 4, the commercial polyurethane acrylate oligomers disclosed at [0014] of JP ‘578 have differences in molecular weights within the claimed range. For example, UV-3700B from Nippon Synthetic Co., Ltd. And UN7700 from Negami Kogyo Co., Ltd. have a difference in molecular weight of (38,000 – 20,000 g/mol), or 18,000 g/mol which is within the claimed range.
Regarding claim 5, suitable monofunctional (meth)acrylic monomers include 4-hydroxybutyl acrylate, see [0023] and tables 1-3 on p. 12 of the original document of JP ‘578. The molecular weight of 4-hydroxybutyl acrylate is 144.2 g/mol which is within the claimed range.
Regarding claim 6, JP ‘578 teaches that component B) is preferably a combination of an alicyclic (meth)acrylate, a hydroxyl-group containing (meth)acrylate, and a C6-C30 alkyl (meth)acrylate, see [0025].
Regarding claim 7, while JP ‘578 does not expressly teach using from 20-40 parts by weight of the monomer having a dicycylopentenyl group as claimed, the examples of JP ‘578 employ 40 parts of IBOA (isobornyl acrylate, see paragraph [0068]) which is one of the other suitable alicyclic (meth)acrylate components disclosed at [0024]. It would have been obvious to have substituted dicyclopentylyloxyethyl (meth)acrylate or dicyclopentanyl (meth)acrylate for isobornyl (meth)acrylate as these are all disclosed to be suitable alicyclic monofunctional (meth)acrylate monomers.
Regarding claims 8 and 13, JP ‘959 teaches that suitable difunctional (meth)acrylate monomers include 1,9-nonanediol diacrylate, see [0026]. This component has a molecular weight of 268.35 g/mol.
Regarding claim 9, JP ‘578 is silent regarding the use of a solvent in its examples at [0069] and Tables 1-3 of the original disclosure and thus is presumed to be free of a solvent. JP ‘959 discloses that the photocurable resin is solvent-free, see [0006].
Regarding claim 12, JP ‘578 discloses using 4-hydroxybutyl acrylate in the example compositions at Tables 1-3 of the original disclosure, see also [0068].
Regarding claims 14 and 15: Although JP ’578 and JP ‘959 do not specify the storage modulus at 25 °C or the change in yellow index of the cured resin composition as claimed, the examiner notes that the prior art generally teaches the claimed invention (the resin composition of claim 1) and as such it would be expected to have similar properties. The examiner notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). Therefore, one of ordinary skill in the art would expect the same or similar properties to arise.
The Examiner notes that the prior art discloses that the resin composition uses a component which is “less prone to yellowing” and thus a small change in yellowing index is taught as a desirable feature of the composition, see JP 578 at [0028].
Regarding claim 16, The references do not teach the 180° peel strength at 25 °C of a laminate obtained by bonding a PET film and soda lime glass. However, JP ‘578 discloses the peel strength of the resin against a glass slide inorganic material and polyimide film organic material, see [0063]. JP ‘959 discloses that the 180° peel strength of the resin between a glass film and a PET film is preferably 15 N/25 mm or more (1530 gf / 25mm or greater) which includes the claimed range of 2500 to 5000 gf/25mm.
As the prior art generally teaches the claimed invention (the resin composition of claim 1), as such it would be expected to have similar properties including peel strength
Regarding claims 17 and 18, JP ‘578 discloses curing the resin composition with energy rays, see [0042]. The composition is preferably used as an adhesive for bonding substrates together, see [0046].
Regarding claim 19, JP ‘578 teaches that the composition is used to form a laminate of substrate 1 and substrate 2 bonded together via a cured product of the curable resin composition, see [0048]. Either substrate 1 or 2 may be a light-transmitting or light-permeable member such as glass or a light-transmitting polymer sheet, see [0049]. Another substrate may be a light impermeable material such as a liquid crystal display panel, organic EL display panel, touch panel, or other display panel components, see paragraph [0050]. The resin composition is photo-curable, see [0053-0054]. The light-transmitting or light-permeable member reads on the claimed cover window.
JP ‘979 similarly teaches that the photocurable resin can be used as an adhesive to bond an image display body such as a touch panel or flat panel display to a protective cover member, see [0033].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-210578A in view of JP 2019-156959A and further view of Soga (U.S. Pat. 11,261,301). Machine translations of JP ‘578 and JP ’959 were relied upon for analysis except as noted as applied above.
Regarding claim 10, JP ‘578 and JP ‘959 are relied upon as described above to disclose a curable resin composition which includes the (meth)acrylic and photoinitiator ingredients specified above.
Neither JP ‘578 nor JP ‘959 mentions including a tertiary amine group-containing hydrogen donor in the composition.
However, Soga discloses a photocurable resin composition which includes, inter alia, a polymer having (meth)acryloyl groups and a photo-radical initiator that is a hydrogen abstraction component, see abstract and col. 3, lines 1-9. The resin composition may include a tertiary amine compound for the purpose of improving photocurablity, see col. 10, lines 19-27. The resin composition is used as an adhesive, see col. 13, lines 28-36.
JP ‘578, JP ‘959, and Soga are analogous because they are similar in composition and function as they each disclose photocurable resin compositions used as adhesives in laminate materials.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include a tertiary amine compound in the photocurable adhesive resin of JP ‘578 and JP ‘959 as taught in Soga to arrive at the claimed composition, as Soga teaches that such a compound is added for the purpose of improving photocurablity, see col. 10, lines 19-27.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-210578A in view of JP 2019-156959A and further view of Fujiwara (U.S. Pub. 2021/0292536). Machine translations of JP ‘578 and JP ’959 were relied upon for analysis except as noted as applied above.
Regarding claim 20, JP ‘578 and JP ‘959 are relied upon as described above to disclose a curable resin composition which is suitable for displays, and a laminate used in displays which includes two substrates with the cured resin formed between them.
Neither JP ‘578 nor JP ‘959 mentions foldable display devices.
However, Fujiwara discloses a resin composition for display devices including flexible/foldable displays, see p. 1, [0003] and p. 3, [0050]. The resin composition is used between a display panel and a cover window, see p. 1, [0019]. The resin includes a first (meth)acrylic resin with a weight average molecular weight of 500 or less, a second (meth)acrylic resin such as one with a polyurethane skeleton with a weight average molecular weight of 6,000 or more, a radical polymerization initiator, and a polyrotaxane compound. See p. 1, [0016] and p. 5, [0078-0079].
JP ‘578, JP ‘959, and Fujiwara are analogous because they are similar in structure and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to employ the photocurable adhesive resin of JP ‘578 and JP ‘959 into a foldable display such as that taught in Fujiwara to arrive at the claimed display device, as recent display devices include foldable, bendable, and rollable features designed to facilitate portability and improve user convenience. See Fujiwara at p. 1, [0003].
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kim (U.S. Pub. 2019/0177459) discloses a curable resin composition that includes mono-functional and bi- or poly-functional (meth)acrylic monomers, but the amount of di-functional (meth)acrylic monomer is much greater than that specified in the present invention. Kim uses about 0.5 to 1.5 parts of the bifunctional acrylic monomer to 1 part of the mono-functional monomer, see p. 4, [0054-0055].
EP 3,467,066 A1 discloses an acrylic pressure-sensitive adhesive composition and adhesive sheet which may include both mono- and bi-functional acrylic monomers, however only mentions a urethane acrylate component in passing and does not specify that this component has two (meth)acrylic groups.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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