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 .
Response to Amendment
The amendment filed on 7/31/2026 has been entered. Claim(s) 1 is/are currently amended. Claim(s) 8 is new. Claim(s) 1-8 is/are pending and is/are under examination in this office action.
Response to Arguments
Applicant's argument, filed on 7/31/2026, with respect to 102 and 103 rejections has been fully considered but is moot in view of the new grounds of rejection presented below.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshie et al (US 20170029675 A1).
Regarding claims 1, 3 and 5, Yoshie teaches a polyester-based pressure-sensitive adhesive composition comprising a polyester I obtained by polycondensation of a dimer acid PRIPOL 1009, and a diol 1,4-butanediol, with a crosslinking agent dibutyltin oxide [0089].
The PRIPOL 1009 dimer acid is a dicarboxylic acid and reads on the claimed polycarboxylic acid compound (a).
The 1,4-butanediol is a glycol and reads on the claimed polyol component (b) comprising a glycol (b1) having an even carbon number, excluding a dimer diol.
The crosslinking agent dibutyltin oxide meets the recited crosslinking agent (iv) in claim 3.
The polyester I is made of 166 g of Pripol 1009 (567 in molar molecular weight), 34 g of 1,4-butanediol (90 in molar molecular weight), and 0.2 g of dibutyltin oxide [0089].
According to the applicant, In the calculating the claimed ester group concentration, a smaller one of the fed molar amount of the polycarboxylic acid compound (a) and the fed molar amount of the polyol component (b) is divided by the overall weight of the resulting polyester resin [0072 spec.].
In Yoshie’s polyester I, the dimer acid is the smaller one of the fed molar amount of the polycarboxylic acid compound (a) and the fed molar amount of the polyol component (b). The resulting ester group concentration is 2.92 mmol/g as calculated by the examiner, which meets the claimed limitation of “the polyester resin (ii) has an ester group concentration of not less than 2 mmol/g”.
The claimed bioplastic degree means that the material is prepared by using at least one plant-derived material as disclosed by the applicant [0015 spec.]. Therefore, it is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The plant-derived material has the same structure of the material derived from any source. Therefore, the claimed bioplastic degree does not gain patentable weight.
Nevertheless, Yoshie teaches that the crosslinking agent is 1-30 parts per 100 parts of the polyester [0050]. Thus, the polyester is in the range of 77-99 wt% in the adhesive, as calculated by the examiner. The dimer acid concentration is 82.9 wt% as calculated by the examiner based on the components in polyester I.
Since the polyester has a bioplastic degree of 82.9% as stated above, the bioplastic degree of the adhesive is in the range of 64-82, meeting the recited bioplastic degree of not less than 60% in claim 5.
Yoshie teaches that adhesive layer preferably has a gel fraction of 40 to 90% by weight [0014 0049], overlapping the claimed range of 10 to 49% by weight. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The limitation of “the adhesive agent having an adhesive force (α) of not less than 1 N/25 mm as measured as a 180-degree peel strength (N/25 mm) by forming an adhesive agent layer of the adhesive agent on a substrate to provide an adhesive sheet, bonding the adhesive sheet to an adherend of a bright annealed stainless steel plate, allowing the resulting structure to stand still at 23° C. at 50% RH for 30 minutes, and peeling the adhesive sheet from the adherend at a peel rate of 300 mm/minute” is a property of the product. “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. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 2, Yoshie teaches that the adhesive may contain a hydrolysis resistant agent as an additive [0054].
Regarding claim 4, Yoshie teaches that the adhesive may contain a tackifier [0054].
Regarding claim 6, the limitation of “used for bonding a component” is a statement of intended use that imparts no additional structure beyond the claimed adhesive agent and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
Regarding claim 7, Yoshie teaches that the adhesive is used for producing a pressure-sensitive adhesive sheet [Abstract].
Regarding claim 8, Yoshie teaches that the polyester has a weight average molecular weight of 8,500 to 50,000 [abstract].
The upper limit of 50,000 is sufficiently close to the claimed lower limit of over 50,000 that one of ordinary skill in the art would prima facie expect polyesters based on these molecular weights to have the same properties. It would have been obvious to one of ordinary skill in the art at the time of filing to select polyesters within the claimed range of molecular weight based on the close proximity to the prior art range and the reasonable expectation of obtaining a product having the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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