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 1-5 and 15-29 are pending.
Drawings
The drawings received on 09 December 2024 are acceptable.
Claim Objections
Claim 5 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 5, the claim should refer to “II) the curable adhesive free-standing film according to claim 1.” to properly refer to this previously recited material.
Claim Rejections - 35 USC § 112
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.
Claim 25 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form.
Claim 25 recites that the curable adhesive free-standing film is borne on the support layer, while claim 22 (upon which claim 25 depends) recites that the curable adhesive free-standing film is on a support layer. It is unclear how claim 25 meaningfully is distinguished from claim 22. Any art which reads on claim 22 also reads on claim 25.
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.
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, 2, 15, 18, 20, 22-28 are rejected under 35 U.S.C. 103 as being unpatentable over Attarwala (U.S. Pub. 2014/0138013).
Regarding claim 1, Attarwala discloses a UV radiation curing / redox curing adhesive system of an optically clear adhesive composition, see abstract. The adhesive forms an adhesive film upon curing as seen in, e.g., FIG. 2a.
In Example 1 described at p. 5, [0098] et seq., the adhesive composition includes a commercial polyurethane with acrylic groups (3461 AA from Bomar), reading on the second film-forming polymer or oligomer, see [0100]. The composition also includes unsaturated free-radically polymerizable monomers of 2-hydroxypropyl acrylate and 2-(2-ethoxyethoxy)ethyl acrylate and isobornyl acrylate, see [0101-0103] each reading on the second species. The composition also includes saccharin, see p. 6, [0104], reading on the claimed reducing agent. Note that saccharin is disclosed to be a suitable reducing agent for the invention as described at p. 3, [0040] of the published specification.
Attarwala also teaches including a copper salt in this example, namely copper acetylacetonate, see p. 6, [0111]. However, Attarwala also teaches that the metal catalyst can be metallic copper or an alloy, see p. 3, [0051]. Using metallic copper reads on the claimed solid particles of metal as claimed. It would have been obvious to have substituted metallic copper for the copper salt transition metal catalyst of Example 1 because Attarwala teaches that metallic copper is also a suitable component. Thus there is a reasonable expectation of success in the substitution.
The adhesive composition is curable by UV radiation as described at p. 6, [0116].
Accordingly, Attarwala renders the claimed invention obvious.
Regarding claim 2, Example 1 of Attarwala uses 63 parts of the polyurethane with acrylate groups. A portion of this component may be considered to be a) the second film-forming polymer or oligomer, and another portion may be considered to be b) the second species comprising second unsaturated free-radically polymerizable groups. Thus component b) is the same as a) as claimed.
Regarding claim 15, the saccharin of Attarwala is an organic reducing agent as claimed.
Regarding claim 18, the copper component of Attarwala is a redox curing reaction accelerator, see p. 2, [0030].
Regarding claim 20, the unsaturated free-radically polymerizable groups of Example 1 of Attarwala are acrylate groups.
Regarding claims 22 and 25 and 26, the adhesive layer is formed on a support layer as shown in FIG. 2a and described at p. 6, [0115].
Regarding claims 23 and 24, a metal substrate may be used, see p. 2, [0041]. This reads on an electrically and thermally conducting material as in claim 24.
Regarding claim 27, this claim amounts to a duplication of parts, see MPEP § 2144.04, and thus is considered to be an obvious variation of the claimed invention.
Regarding claim 28, in Example 1 of Attarwala, an adhesive composition is made which includes a commercial polyurethane with acrylic groups (3461 AA from Bomar), reading on the second film-forming polymer or oligomer, see p. 5, [0100]. The composition also includes unsaturated free-radically polymerizable monomers of 2-hydroxypropyl acrylate and 2-(2-ethoxyethoxy)ethyl acrylate and isobornyl acrylate, see p. 5-6 [0101-0103] each reading on the second species. The composition also includes saccharin, see p. 6, [0104], reading on the claimed reducing agent. Note that saccharin is disclosed to be a suitable reducing agent for the invention as described at p. 3, [0040] of the published specification.
Attarwala also teaches including a copper salt in this example, namely copper acetylacetonate, see p. 6, [0111]. However, Attarwala also teaches that the metal catalyst can be metallic copper or an alloy, see p. 3, [0051]. Using metallic copper reads on the claimed solid particles of metal as claimed. It would have been obvious to have substituted metallic copper for the copper salt transition metal catalyst of Example 1 because Attarwala teaches that metallic copper is also a suitable component. Thus there is a reasonable expectation of success in the substitution.
Ethanol solvent is also added, see p. 6, [0110], reading on the organic solvent.
The adhesive composition is curable by UV radiation as described at p. 6, [0116].
Claims 1-3, 15, 18, and 20-27 are rejected under 35 U.S.C. 103 as being unpatentable over Wallace (U.S. Pub. 2008/0242764) in view of Dickel (U.S. Pub. 2017/0260427).
Regarding claim 1, Wallace describes a curable adhesive composition which is curable and thus forms a free-standing film. See abstract and p. 1, [0010] and p. 2, [0013]. The composition includes a curable acrylic oligomer as shown at p. 2, [0015] reading on the second film-forming oligomer. Other suitable oligomers or polymers are urethane-acrylate monomers, see p. 2, [0017]. Additional reactive monomers such as styrene or acrylonitrile may be present which have free-radically polymerizable ethylenic unsaturation, see p. 3, [0019]. A reducing agent such as saccharin is present, see p. 1, [0012].
Wallace does not also teach including solid or hollow particles comprising metal, although Wallace does teach that fillers may be incorporated in the composition, see p. 4, [0036].
Dickel describes a curable adhesive resin system which includes from 30-80 vol. % of a curable resin such as (meth)acrylic resin, see p. 1, [0008-0013] and p. 2, [0035]. The adhesive also includes from 2-35 vol. % of electrically conductive particles which may be either entirely formed of metal (see p. 1, [0018]) or may be particles coated with metal (see p. 1, [0019]). The particles are solid, see id.
Wallace and Dickel are analogous as they each disclose adhesives with curable acrylic materials and additives, thus they are similar in composition and function.
It would have been obvious to have included the metallic particles of Dickel to the adhesive of Wallace to make an electrically conductive adhesive, as this allows electronic devices to be in electrical contact with the members they are adhered to, see p. 1, [0002-0004] of Dickel.
Regarding claim 2, a portion of the curable acrylic oligomer of Wallace shown at p. 2, [0015] may be considered as the film-forming oligomer and another portion may be considered the second species comprising free-radical polymerizable groups, and thus b) may be a) as claimed.
Regarding claim 3, Wallace also teaches that the reactive component may be a polyester resin, see p. 1, [0011], which reads on species a) that does not include unsaturated free-radically polymerizable groups as claimed. In this case, species b) may be the reactive monomers such as styrene or acrylonitrile which have free-radically polymerizable ethylenic unsaturation, see p. 3, [0019].
Regarding claim 15, the saccharin of Wallace is an organic reducing agent, see p. 1, [0012].
Regarding claim 18, Wallace teaches including a metal ion for cure enhancing properties, reading on a redox accelerator. See p. 3, [0023].
Regarding claims 20-21, Wallace teaches that the composition includes a curable acrylic oligomer as shown at p. 2, [0015].
Regarding claims 22 and 25 and 26, the adhesive layer is directly formed on the surfaces to be joined, see p. 1, [0003] and claim 12 of Wallace.
Regarding claims 23 and 24, a metal substrate may be used, see claim 13 of Wallace. This reads on an electrically and thermally conducting material as in claim 24.
Regarding claim 27, this claim amounts to a duplication of parts, see MPEP § 2144.04, and thus is considered to be an obvious variation of the claimed invention.
Claims 4 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Attarwala (U.S. Pub. 2014/0138013) in view of Hannington (U.S. Pub. 2009/0053449).
Regarding claim 4, Attarwala is described above to teach the adhesive of claim 1. Attarwala does not disclose embossed air bleed channels capable of aiding in escape of air during application of the outer surface to a substrate.
Hannington describes an adhesive article including a facestock film adhered to the adhesive layer. The facestock includes a plurality of recesses which provide an embossed surface on the adhesive layer which provide a path for fluid egress when the adhesive is applied to a surface. See abstract and p. 1, [0007]. This provides a route for air to egress, see p. 1, [0004]. The adhesive material used may be an acrylic adhesive, see p. 4, [0042].
Attarwala and Hannington are analogous as they each disclose acrylic adhesives formed on facestocks. Thust they are similar in structure and composition. It would have been obvious to have applied the adhesive of Attarwala to an embossed facestock as disclosed in Hannington to arrive at the claimed invention, as this provides a path for air egress when applying the adhesive to an article which removes undesired visible bubbles and wrinkles from the adhesive article, see p. 1, [0003[ of Hannington. The embossed surface also aids in application of the adhesive to a surface as the initial reduced surface area allows for slidability and repositionability before final placement is established, see Hannington at p. 2, [0020].
Regarding claim 29, Attarwala is relied upon as described above to teach the limitations of claim 28. The removable facestock of Hannington reads on a release liner as claimed, see p. 1, [0007]. As such, it would have been obvious to have applied the adhesive composition of Attarwala to a release liner to arrive at the claimed invention.
Allowable Subject Matter
Claims 5 and 16, 17, and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner's statement of the reasons for allowance:
Claim 5 is deemed allowable over the references since the references do not disclose or render obvious a liquid primer having a film-forming oligomer or polymer, transition metal cation, and oxidizing agent in combination with the curable adhesive free-standing film described in claim 1.
While Attarwala (U.S. Pub. 2020/0061823) describes a UV radiation curing / redox curing adhesive system of an optically clear adhesive composition, see abstract and above discussion in regards to claim 1, Attarwala does not also specify a primer layer as claimed.
Wallace (U.S. Pub. 2008/0242764) also describes a UV radiation curable acrylic adhesive as described above in regards to claim 1 but does not also specify a primer layer as claimed.
Additionally, claims 16 and 17 are also allowable as the art does not also disclose the limitations of claim 1 in which the reducing agent is ascorbic acid or an ascorbyl ester of a fatty acid.
Claim 19 is additionally allowable as the art does not also disclose the limitations of claim 1 further comprising benzyltributylammonium chloride or benzyltriethylammonium chloride.
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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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
