DETAILED ACTION
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 § 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.
Claims 1-3, 5-7, 8-18, and 20-31 are rejected under 35 U.S.C. 103 as being unpatentable over 20170321087 (Moon et al. ).
Re claims 1-3, 5-7, 8-18, and 20-31, Moon teaches essentially the claimed invention adhesive sheet, acrylic copolymer [11, 24, 130] and x [58, 125, 131] , cured [55], alkylene glycol [127], urethane [127], and constituent members PET/adhesive/PET of (Fig. 1 and associated text) save the exact ranges of properties. See Example 4, refractive index of 1.47 (same value) – see [136], Table 1. The properties not explicitly taught are inherent as the same material and ranges are taught.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to having one of ordinary skill in the art to have modified the Moon polymers to have selected from the overlapping portions of the ranges of Moon for effecting the overall stress and strain mechanical properties as overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re the calculations (claims 13 and 26), note: Applicant has described the product with parameters and equations which cannot be measured by the office for prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability purposes. Therefore, as a prima facie case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
Further re claims 7, and 20, Moon and Ueki discloses the use of acrylic copolymers and x in overlapping amounts having a R.I. of 1.47 while the claims require less than 1.46.
It is apparent, however, that the instantly claimed amount of copolymer, x and that taught by Moon are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of copolymer and x disclosed by Moon and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of the composition disclosed in the present claims is but an obvious variant of the amount disclosed in Moon, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Claims 4 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over 20170321087 (Moon et al.) in view of US 20190091970 A1 (US 20190091970 A1) Ukei et al.
Moon is relied upon above.
Re claims 4 and 19, Ueki teaches a laminate with overlapping ranges: [0118-119] Examples of the acrylic pressure sensitive adhesive include an acrylic pressure sensitive adhesive containing at least a (meth)acrylic acid ester polymer A having a weight-average molecular weight of 500,000 to 3,000,000, and an acrylic pressure sensitive adhesive containing a component (hereinafter, referred to as “crosslinked polymer”) obtained by crosslinking the (meth)acrylic acid ester polymer A and a (meth)acrylic acid ester polymer B having a weight-average molecular weight of 8,000 to 300,000. Ueki teaches [136] radical polymerization material as well. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to having one of ordinary skill in the art to have modified the Moon polymers to include the polymer of Ueki to include the copolymer of not less than 500,000 and have selected from the overlapping portion of the range in order to effect the stress properties for overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
References of Interest
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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