DETAILED ACTION
This is an Office action based on application number 18/924,063 filed 23 October 2024, which is a continuation of PCT/US2023/066100 filed 24 April 2023, which claims priority to US Provisional Application No. 63/363,869. Claims 1-20 are pending.
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 12 and 16 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.
Claim 12 recites:
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The claim depends from claim 11, which recites:
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The chemical structure of claim 12 is not within the scope of the chemical structure of recited in parent claim 11. Therefore, it is unclear how the cationic photoinitiator of claim 12 can also be the cationic photoinitiator of claim 11, as required by the claim.
For the purpose of prosecution, claim 12 is construed to depend from claim 10, which recites a generic cationic photoinitiator that is a sulfonium salt.
Claim 16 recites the limitation “wherein the matrix is essentially free of mono- or multi-(meth)acrylate groups in lines 6-7. The claim also recites “an acrylic polymer” in line 2. It is unclear how an acrylic polymer can be free of mono- or multi-(meth)acrylate groups.
For the purpose of prosecution, those matrices comprising the recited components meet the claimed limitations of the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 recites:
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The claim depends from claim 11, which recites:
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The chemical structure of claim 12 is not within the scope of the chemical structure of recited in parent claim 11. Therefore the subject matter of claim 12 fails to further limit the subject matter of parent claim 11 and fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7, 10-12, and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Van Holen et al. (European Patent Specification EP 3 262 088 B1) (Van Holen) in view of Jaworek et al. (US Patent Application Publication No. US 2004/0018367 A1) (Jaworek).
Regarding instant claims 1-2 and 16:
Van Holen discloses a UV-curable pressure sensitive acrylic resin obtainable by reactive in a first radical polymerization step a mixture consisting of: (i) at least one acrylic monomer of formula (1)
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(ii) at least one monomer that comprises a pendent reactive functional group selected from cycloaliphatic epoxides, oxetanes, monosubstituted oxiranes, or mixtures thereof; and reacting the obtained mixture with (iii) at least one cationic photoinitiator; and (iv) optionally further additives (Claim 1).
Van Holen further discloses that the monomer (ii) is present in an amount of 0.0001 and 2 wt-% based on the total weight of the UV-curable pressure sensitive acrylic adhesive (Claim 1), and the monomer (i) is present in an amount of 50 to 99.9 wt.-% of the total weight of the UV-curable pressure-sensitive acrylic adhesive (Claim 2). The combination of monomers (i) and (ii) are construed to product the claimed acrylic polymer (A) and their combined amounts are construed to overlap the claimed range; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Van Holen teaches that the adhesive composition is irradiated for a period of time sufficient to transform the composition into a viscoelastic adhesive of higher modulus, wherein the exact length of exposure is dependent at least in part on the amount of cationic photoinitiator (paragraph [0051]).
Since the instant specification is silent to unexpected results, the specific amount of cationic photoinitiator is not considered to confer patentability to the claims. As the viscoelastic and modulus properties of an adhesive are variables that can be modified, among others, by adjusting the amount of cationic photoinitiator, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of cationic photoinitiator in Van Holen to obtain the desired properties (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).
Van Holen does not explicitly disclose the claimed reactive diluent and the amount thereof.
However, Jaworek discloses a curable polymer obtained by reacting a (meth)acrylate copolymer with at least compound having epoxy groups (Claims 1 and 3).
Jaworek teaches that said compounds contain at least one reactive diluent inclusive of vinyl ethers that are used to influence the viscosity and technical properties of the composition, such as the crosslinking density (paragraph [0089]). Said “vinyl ethers” are inclusive of those that are essentially free of mono- or multi-(meth)acrylates.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the reactive diluent of Jaworek in the composition of Van Holen. The motivation for doing so would have been to influence the viscosity and technical properties (e.g., crosslinking density) of the obtained composition.
As to the claimed amount, since the instant specification is silent to unexpected results, the specific amount of reactive diluent is not considered to confer patentability to the claims. As the viscosity and technical properties of the composition are variables that can be modified, among others, by adjusting the amount of reactive diluent, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of reactive diluent in the prior art combination to obtain the desired properties (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).
Therefore, it would have been obvious to combine Jaworek with Van Holen to obtain the invention as specified by the instant claims.
Regarding instant claim 3:
Van Holen further discloses that the acrylic monomer mixture, which is construed to read on the claimed acrylic polymer, has a Tg value of less than 10°C and a weight average molecular weight from about 10,000 to about 2,000,000 g/mol (paragraph [0018]).
It is noted that the Tg disclosed by Van Holen overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 4:
Van Holen further discloses that exemplary monomers (ii) include those represented by formula (1):
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See Van Holen at paragraph [0020].
Regarding instant claim 5:
Van Holen further discloses specific examples of formula (1):
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see Van Holen at paragraphs [0021-0028].
Regarding instant claims 6-7:
Jaworek further discloses that the reactive diluents are inclusive of vinyl ethers having a molecular weight of from 400 to 4,000 daltons (paragraph [0089]).
Regarding instant claims 10-12:
Van Holen further discloses that the cationic photoinitiator is either an organic iodonium or sulfonium salt, with specific mention of those of the formulas (6A) and (7A):
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See Van Holen at paragraphs [0031-0032]).
Regarding instant claim 14:
Van Holen further discloses that the adhesive further comprises tackifiers (paragraph [0033]).
Regarding instant claim 15:
Van Holen teaches that while solvents may be used in the production of the composition, such adhesives are ultimately removed (paragraphs [0039-0041]).
Regarding instant claims 17-19:
Van Holen further discloses the pressure sensitive adhesives are used in the manufacture of adhesive articles inclusive of tapes, wherein the adhesive article comprises an adhesive coated on at least one major surface of a backing composed of polyester, polypropylene, paper, and fabric (paragraph [0055]).
Regarding instant claim 20:
Van Holen further discloses an article comprising a cured UV-curable adhesive (Claim 7).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Van Holen in view of Jaworek as applied to claims 1 and 6-7 above, and further in view of Grun et al. (US Patent Application Publication No. US 2016/0053141 A1) (Grun).
Regarding instant claims 8-9:
Van Holen in view of Jaworek discloses the pressure sensitive adhesive comprising the reactive diluent having particular molecular weight as cited in the rejection of claims 1 and 6-7, above.
Van Holen in view of Jaworek does not explicitly disclose the epoxy-based reactive diluents as recited by the instant claims.
However, Grun discloses synthetic resin adhesive compositions based on epoxies that can further comprise glycidyl ethers as reactive diluents, wherein examples of glycidyl ethers are inclusive of poly (including di)-glycidyl ethers of at least one polyhydric alcohol or phenol such as bisphenol F and bisphenol A. Grun further discloses that said glycidyl ethers have an average molecular weight of ≤ 2000 (paragraph [0037]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the glycidyl ether reactive diluents of Grun in addition to those of Van Holen in view of Jaworek. The motivation for doing so would have been that Grun establishes these glycidyl ethers are art-recognized reactive diluents for the production of epoxy-based adhesives; therefore, there is a reasonable expectation of success that such reactive diluents would function in the adhesive Van Holen to obtain the same benefits touted by Jaworek.
Therefore, it would have been obvious to combine Grun with Van Holen in view of Jaworek to obtain the invention as specified by the instant claims.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Van Holen in view of Jaworek as applied to claim 1 above, and further in view of Song et al. (US Patent Application Publication No. US 2011/0195249 A1) (Song).
Regarding instant claim 13:
Van Holen in view of Jaworek discloses the pressure sensitive adhesive composition as cited in the rejection of claim 1, above.
Van Holen in view of Jaworek does not explicitly disclose the claimed radical photosensitizer.
However, Song discloses a photocationically polymerizable adhesive composition comprising an epoxy-based compound (Claim 1).
Song further discloses that the adhesive composition comprises photopolymerization initiators inclusive of sulfonium and iodonium salts (paragraph [0067])
Song further discloses that the adhesive composition includes a photosensitizer that brings about an improvement in reactivity and may improve mechanical strength and adhesive strength of the cured product, wherein said photosensitizer is inclusive of thioxanthone, 2-isopropylthioxanthone, and 2-chlorothioxanthone (paragraph [0073]) (Examiner’s note – “thioxanthene-9-one” is equivalent to “thioxanthone”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the photosensitizer of Song in the adhesive composition of Van Holen in view of Jaworek. The motivation for doing so would have been to improve reactivity that would improve both mechanical and adhesive strength of the cured product.
Therefore, it would have been obvious to combine Song with Van Holen in view of Jaworek.
Claims 1-7, 10-12, and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US Patent Application Publication No. US 2012/0329900 A1) (Liu) in view of Jaworek.
Regarding instant claims 1-3 and 16:
Liu discloses an ultra-violet curable pressure sensitive adhesive composition comprising an acrylic polymer and a cationic photoinitiator wherein said acrylic polymer comprises an acrylic monomer consisting of an acrylic or methacrylic acid derivative of the formula CH2=CH(R1)(COOR2), wherein R1 is H of CH3 and R2 is C1-20 alkyl chain; and a (ii) monomer comprising a pendent reactive functional group selected from cycloaliphatic epoxide, oxetane, and mixtures thereof, in an amount of 0.001 to 10 g per 100 g of said acrylic polymer (Claim 1).
Liu further discloses that the acrylic polymer is essentially free of multi-(meth)acrylate, has a Tg of less than 0° C., and has a weight average molecular weight of about 50,000 to about 1,000,000 g/mol (Claim 1).
Liu teaches that the adhesive composition is irradiated for a period of time sufficient to transform the low cohesion composition into a viscoelastic adhesive of higher modulus, and that the exact length of the exposure is dependent on at least the amount of cationic photoinitiator and the polymer composition (paragraph [0067]).
Liu does not explicitly disclose the reactive diluent and the amount thereof.
However, Jaworek discloses a curable polymer obtained by reacting a (meth)acrylate copolymer with at least compound having epoxy groups (Claims 1 and 3).
Jaworek teaches that said compounds contain at least one reactive diluent inclusive of vinyl ethers that are used to influence the viscosity and technical properties of the composition, such as the crosslinking density (paragraph [0089]). Said “vinyl ethers” are inclusive of those that are essentially free of mono- or multi-(meth)acrylates.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the reactive diluent of Jaworek in the composition of Van Holen. The motivation for doing so would have been to influence the viscosity and technical properties (e.g., crosslinking density) of the obtained composition.
As to the claimed amounts, of the components since the instant specification is silent to unexpected results, the specific amounts of acrylic polymer, reactive diluent, and cationic photoinitiator are not considered to confer patentability to the claims. As the viscosity of the composition, technical properties of the composition, and irradiation time needed to sufficiently transform the composition into a viable adhesive are variables that can be modified, among others, by adjusting the amounts of the individual components, the precise amounts would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of the individual components in the prior art combination to obtain the desired properties (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).
Therefore, it would have been obvious to combine Jaworek with Liu to obtain the invention as specified by the instant claims.
Regarding instant claim 4:
Claim 3 of Liu recites:
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Regarding instant claim 5:
Claim 4 of Liu recites that the cycloaliphatic epoxide has the formula:
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Regarding instant claims 6-7:
Jaworek further discloses that the reactive diluents are inclusive of vinyl ethers having a molecular weight of from 400 to 4,000 daltons (paragraph [0089]).
Regarding instant claim 10:
Liu further discloses that the cationic photoinitiator is inclusive of organic iodonium and sulfonium salts (paragraph [0046]).
Regarding instant claim 11:
Claim 8 of Liu recites that the cationic photoinitiator is represented by the formula:
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Regarding instant claim 12:
Claim 9 of Liu recites that the cationic photoinitiator is represented by the formula:
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Regarding instant claim 14:
Liu further discloses that he pressure sensitive adhesive comprises a tackifier (paragraph [0014]).
Regarding instant claim 15:
Liu discloses that he pressure sensitive adhesive has a solvent content of less than about 2% (Claim 11), which reads on the claimed adhesive “essentially free of an organic solvent”.
Regarding instant claim 17:
Liu discloses an article of manufacture comprising the disclosed adhesive (Claim 12).
Regarding instant claims 18-19:
Liu discloses that he adhesive are particularly advantageous as a tape or label, and said adhesive articles comprise a polyester, polypropylene, metal, or glass backing (paragraph [0016]).
Regarding instant claim 20:
Liu further discloses that the adhesives are cured (paragraph [0077]).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Jaworek as applied to claims 1 and 6-7 above, and further in view of Grun.
Regarding instant claims 8-9:
Liu in view of Jaworek discloses the pressure sensitive adhesive comprising the reactive diluent having particular molecular weight as cited in the rejection of claims 1 and 6-7, above.
Liu in view of Jaworek does not explicitly disclose the epoxy-based reactive diluents as recited by the instant claims.
However, Grun discloses synthetic resin adhesive compositions based on epoxies that can further comprise glycidyl ethers as reactive diluents, wherein examples of glycidyl ethers are inclusive of poly (including di)-glycidyl ethers of at least one polyhydric alcohol or phenol such as bisphenol F and bisphenol A. Grun further discloses that said glycidyl ethers have an average molecular weight of ≤ 2000 (paragraph [0037]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the glycidyl ether reactive diluents of Grun in addition to those of Liu in view of Jaworek. The motivation for doing so would have been that Grun establishes these glycidyl ethers are art-recognized reactive diluents for the production of epoxy-based adhesives; therefore, there is a reasonable expectation of success that such reactive diluents would function in the adhesive Liu to obtain the same benefits touted by Jaworek.
Therefore, it would have been obvious to combine Grun with Liu in view of Jaworek to obtain the invention as specified by the instant claims.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Jaworek as applied to claim 1 above, and further in view of Song.
Regarding instant claim 13:
Liu in view of Jaworek discloses the pressure sensitive adhesive composition as cited in the rejection of claim 1, above.
Liu in view of Jaworek does not explicitly disclose the claimed radical photosensitizer.
However, Song discloses a photocationically polymerizable adhesive composition comprising an epoxy-based compound (Claim 1).
Song further discloses that the adhesive composition comprises photopolymerization initiators inclusive of sulfonium and iodonium salts (paragraph [0067])
Song further discloses that the adhesive composition includes a photosensitizer that brings about an improvement in reactivity and may improve mechanical strength and adhesive strength of the cured product, wherein said photosensitizer is inclusive of thioxanthone, 2-isopropylthioxanthone, and 2-chlorothioxanthone (paragraph [0073]) (Examiner’s note – “thioxanthene-9-one” is equivalent to “thioxanthone”).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the photosensitizer of Song in the adhesive composition of Liu in view of Jaworek. The motivation for doing so would have been to improve reactivity that would improve both mechanical and adhesive strength of the cured product.
Therefore, it would have been obvious to combine Song with Liu in view of Jaworek.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 06/03/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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