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 .
Specification
The disclosure is objected to because of the following informalities (each paragraph recited below refers to the specification as filed):
In Paragraphs 0022 (line 2), 0076 (line 2), and 0092 (line 4), “penaerythritol-terakis-3-(3, 5-di-tert-butyl-4-hydroxyphenyl)propionate” (emphasis added) is misspelled and should read “pentaerythritol-tetrakis-3-(3, 5-di-tert-butyl-4-hydroxyphenyl)propionate” (emphasis added).
In Paragraphs 0025 (lines 8-9), 0045 (line 6), and 0047 (line 9), “to from a plurality of pore channels” (emphasis added) should read “to form a plurality of pore channels” (emphasis added).
In Paragraphs 0030 (line 2) and 0124 (line 2), “does” should read “do” and “has” should read “have” for proper noun/verb agreeance.
In Paragraph 0049, line 5, “grate” should read “great”.
In Paragraph 0056, line 4, “to form obtain” should probably be either “to form” or “to obtain”.
In Paragraph 0093, line 1, “were extruded” should probably read “was extruded” for proper noun/verb agreeance.
Appropriate correction is required.
Claim Objections
Claims 1, 8, and 16 are objected to because of the following informalities: claim 1 recites, “A composite adhesive film, characterized by comprising” while claims 8 and 16 similarly utilize “characterized by comprising” terminology, however, given that such terminology is not consistent with U.S. practice and may cause some ambiguity as to what is meant to be encompassed by the claims, claims 1, 8, and 16 should be amended to conform to U.S. practice by deleting the “characterized by” recitation. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: the first occurrence of an abbreviation in the claims should be accompanied by the complete terminology for said abbreviation with the abbreviation in parentheses following the complete terminology, particularly when the abbreviation may correspond to more than one concept in the art. Hence, “EVA” on line 1 (could refer to ethylene vinyl alcohol or to ethylene vinyl acetate) and “EPE” on line 2 (could refer to expanded polyethylene or to a coextruded three-layer film of ethylene vinyl acetate (EVA) and polyolefin elastomer (POE) of structure EVA/PEO/EVA, e.g., see the attached Google Search results) should be accompanied by the complete terminology for which these abbreviations are meant to correspond. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: on line 2, “penaerythritol-terakis-3-(3, 5-di-tert-butyl-4-hydroxyphenyl)propionate” (emphasis added) is misspelled and should read “pentaerythritol-tetrakis-3-(3, 5-di-tert-butyl-4-hydroxyphenyl)propionate” (emphasis added). Appropriate correction is required.
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 10 and 11 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. Claims 10 and 11 recite the limitation “wherein the method satisfies with at least one of the following conditions” (emphasis added), however, it is unclear as to what is meant by the “satisfies with” limitation.
Claim 10 additionally recites in condition (2), “collecting the nanospheres by means of dialysis bag sieving and collecting the nanospheres” (emphasis added) on lines 6-7, however, it is unclear as to what is meant to be encompassed by the second “collecting the nanospheres” limitation. Further, in condition (3), “a surfactant” and “an emulgator” should read “the surfactant” and “the emulgator”, respectively.
Claim 11 additionally recites in condition (2), “the solvent is an incombustible solvent having a low boiling point” (emphasis added), however, given that said limitations in bold are relative terms that render the claim indefinite, are not defined by the claims, and the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 12-15 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 the limitation “The method of claim 1” in line 1 and “the material of the adhesive film layer” in line 2, however, there is insufficient antecedent basis for these limitations in the claim.
Dependent claims 13-15 do not remedy the above and hence are indefinite for the same reasons. Further, dependent claim 13 recites the limitation “wherein the method satisfies with at least one of the following conditions” (emphasis added), however, it is unclear as to what is meant by the “satisfies with” limitation.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Hence, when reading the instant claims in light of the specification, the claimed “nanospheres are distributed on the adhesive film layer” has been interpreted as requiring at least some of the nanospheres to be distributed on a surface of the adhesive film layer but not excluding the incorporation of the nanospheres within the adhesive film layer such that the mass ratio of instant claim 4 is not limited to just the nanospheres distributed on the adhesive film layer as clearly evident from the entire specification including the examples. Further, although the “Second comparative embodiment” and corresponding “Fifth comparative embodiment” appear to suggest that a minimum content of nanospheres is required in order to solve the problem addressed by the invention, while the “Third comparative embodiment” and the corresponding “Sixth comparative embodiment” appear to suggest a maximum content of nanospheres such that light transmittance is not negatively affected, the instant claims aside from claims 4 and 12-14 do not require any particular amount of nanospheres in and/or on the adhesive film layer.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 4, 6-8, and 12-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wei (CN115725252A, please refer to the attached machine translation for the below cited sections). Wei discloses a resin composition and an adhesive film comprising the resin composition having high light transmittance and good corrosion resistance suitable for photovoltaic modules (as in instant claim 16; Paragraphs n0008 and n0023-n0024), wherein the resin composition comprises a matrix resin such as ethylene vinyl acetate (EVA) as utilized in the examples (as in instant claim 2), and pH microcapsules having an average diameter of 3-50 µm (i.e., 3000 nm – 50000 nm, thus reading upon the broadly claimed “nanospheres”) and a core-shell structure (n0009) with the shell being a polymer shell with acid responsiveness (Paragraph n0028) encapsulating the core containing a pH adjuster comprising one or more of magnesium hydroxide, magnesium oxide, magnesium carbonate, calcium hydroxide, calcium oxide, calcium carbonate, zinc hydroxide, or zinc oxide (Entire document, particularly as noted above and Paragraphs n0013 and n0040); and given that Wei discloses that the film is formed by evenly mixing the raw materials and then subjecting the mixture to melt extrusion and casting into a film (Examples, as in instant claim 8) such that at least some of the pH microcapsules would inherently be “on” the film, the Examiner takes the position that Wei anticipates instant claims 1-2, 8, and 16.
With respect to instant claim 4, Wei discloses that the amount of pH microcapsules added to the matrix resin is 0.01-10wt%, preferably 0.1-5wt% (Paragraph n0020), and specifically discloses working examples utilizing a mixture of 0.05 parts by weight of pH microcapsules to 100 parts by weight of EVA resin, 0.2 parts by weight of crosslinking agent, and 0.3 parts by weight of co-crosslinking agent (Examples), and hence, Wei discloses the claimed invention with sufficient specificity to anticipate instant claim 4.
With respect to instant claim 6, Wei discloses that the shell of the core-shell microcapsules contains a vinyl polymer with specific functional groups that can react with acidic substances released from the matrix resin (Paragraph n0044), preferably vinyl polymers containing one or more of hydroxyl, amino, ether, amide, alkoxy, siloxy, or epoxy groups (Paragraph n0012), with specific examples of suitable vinyl polymers recited in Paragraph n0039 reading upon the broadly claimed “polyacrylic acid polymers, polyacid polymers, polyalkali polymers, and any combination thereof” as recited in instant claim 6. Hence, Wei anticipates instant claim 6.
With respect to instant claim 7, as noted above, Wei discloses that the pH adjuster comprises one or more of magnesium hydroxide, magnesium oxide, magnesium carbonate, calcium hydroxide, calcium oxide, calcium carbonate, zinc hydroxide, or zinc oxide (Paragraphs n0013 and n0040), with a working example utilizing magnesium oxide (Example 2), and thus anticipating instant claim 7.
With respect to instant claims 12-15, Wei discloses that to improve overall performance of the resin composition, in a preferred embodiment, the raw materials forming the resin composition further include one or more selected from the group consisting of a crosslinking agent, an initiator, an antioxidant, an ultraviolet absorber, a light stabilizer, a tackifier, and a pigment (Paragraph n0047). More specifically, “relative to 100 parts by weight of the matrix resin, the raw materials forming the resin composition also include 0.01 to 3 parts by weight of a crosslinking agent, 0.01 to 10 parts by weight of a co-crosslinking agent, 0 to 0.5 parts by weight of an initiator, 0 to 0.4 parts by weight of an ultraviolet light absorber, 0 to 0.5 parts by weight of an antioxidant, 0 to 1.0 parts by weight of a light stabilizer, 0 to 3.0 parts by weight of a tackifier, and 0 to 20 parts by weight of a pigment” (Paragraph n0047); with suitable “crosslinking agents” including peroxide compounds such as tert-butyl peroxycarbonate isopropyl utilized in the working examples in a content of 0.2 parts by weight (reading upon the claimed peroxide initiator of instant claims 12-13; Paragraph n0048, Examples); suitable co-crosslinking agents including triallyl isocyanurate and triallyl cyanurate (as in instant claim 13) as well as trimethylolpropane trimethacrylate as utilized in the working examples in a content of 0.3 parts by weight (Paragraph n0049, Examples); suitable tackifiers including silane compounds (coupling agents) as recited in Paragraph n0053 including γ-aminopropyltriethoxysilane, γ-(2,3-epoxypropoxy)propyltrimethoxysilane, and γ-methacryloxypropyltrimethoxysilane (reading upon the instantly claimed silane coupling agent as recited in instant clams 12-13); the antioxidant may be a hindered phenolic compound as recited in Paragraph n0050, such as pentaerythritol tetrakis[3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate (as in instant claim 15) and octadecyl-3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate (i.e., “β-(3,5-di-tert-butyl-4-hydroxyphenyl)propionic acid n-octadecanol” as in instant claim 15); and the ultraviolet light absorber preferably includes benzophenones and/or benzotriazoles such as 2-(2'-hydroxy-5-methylphenyl)benzotriazole (Paragraph n0051, as in instant claim 15); and given the above content ranges and the working examples, the Examiner takes the position that Wei discloses the claimed invention with sufficient specificity to anticipate instant claims 12-15.
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.
Alternatively, claims 1-2, 4, 6-8, and 12-16 as well as claims 3, 5, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wei (CN115725252A) taken alone, as applied above to claims 1-2, 4, 6-8, and 12-16, or in further view of Potreck (US2023/0390450A1).
The teachings of Wei are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the reference is anticipatory with respect to claims 1-2, 4, 6-8, and 12-16 as discussed in detail above, the Examiner alternatively takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the extruded and cast adhesive film taught by Wei to have microcapsules distributed therein and thereon, such that absent any clear showing to the contrary, the claimed invention as recited in instant claims 1-2, 4, 6-8, and 12-16 would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based upon the above teachings of Wei (taken alone), wherein it is further noted that one having ordinary skill in the art would have been motivated to utilize any of the materials taught by Wei in any content within the ranges taught by Wei given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Further, given that Potreck teaches similar capsules, in particular nanocapsules and/or microcapsules (Paragraphs 0017, 0039, and 0300), with polymer shells (Paragraphs 0051-0059) that can be pH activated (Paragraphs 0061, 0064, 0092, and 0234) encapsulating a variety of substances (Paragraphs 0016 and 0018) and that may be utilized in an adhesive composition, such as in the form of an adhesive strip (Paragraphs 0113-0114 and 0132), such for use in the electrical industry or in connection with bonding electronics or for solar cells, e.g., as in Wei (Paragraphs 0116 and 0174-0175), and may be incorporated into the adhesive or placed on solid surface or homogeneously distributed on an adhesive tape (Entire document, particularly Abstract, Paragraphs 0086-0092, 0108-0109, 0241-0242, 0407, and Examples), the claimed invention as recited in instant claims 1-2, 4, 6-8, and 12-16 would have been further obvious over the teachings of Wei in further view of Potreck based upon the intended end use of the adhesive film including the capsules.
With respect to instant claim 3, given that Wei teaches that the pH microcapsules have an average diameter of 3-50 µm, i.e., 3000 nm – 50000 nm, with one working example utilizing a diameter of 3 µm or 3000 nm, such that one having ordinary skill in the art would reasonably expect the microcapsules taught by Wei to include at least some microcapsules having a particle size within the claimed range of 50 nm to 1000 nm, the Examiner takes the position that the claimed invention as recited in instant claim 3 would have been obvious over the teachings of Wei (taken alone) especially given that instant claim 3 does not recite that the claimed particle size is an average particle size, maximum particle size, etc., and the claim and specification fail to specifically clearly define how the claimed “a particle size” is determined. Further, given that Potreck teaches that such capsules may be formed as nanocapsules having a typical size in the nanometer range, i.e., a size smaller than 1000 nm, and/or microcapsules with a size up to a few millimeters (Paragraphs 0017, 0039, and 0300); can be formed by emulsification with a nanomole sieve (Paragraph 0155); and/or can be sieved with different pore sizes to provide a desired size (Paragraphs 0453-0458), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results with respect to the claimed “a particle size”, the claimed invention as recited in instant claim 3 would have been further obvious over the teachings of Wei in further view of Potreck.
With respect to instant claim 5, Wei teaches that the core comprises 30-50% of the mass content of the core-shell structure of the microcapsule (Paragraph n0018), with working examples having a core mass content of 40% and a shell mass content of 60% (Examples), and given that the core comprises the pH adjuster as a major component of the core and the main active component of the microcapsule, the claimed mass ratio as recited in instant claim 5 would have been obvious over the teachings of Wei taken alone or in further view of Potreck, wherein one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to determine the desired content of the pH adjuster in the core to provide the desired pH adjusting properties for a particular end use.
With respect to instant claims 9-11, Wei teaches that in general, the methods of preparing microcapsule structures mainly include three categories: physical methods, chemical methods, and physical-chemical methods, wherein physical methods mainly involve physical changes in the shell material including solvent evaporation, solution extraction, melting, dispersion and condensation, fluid bed methods, etc.; while chemical methods mainly involve the polymerization reaction of shell materials including interfacial polymerization, in-situ polymerization, and suspension crosslinking (Paragraph n0033). Wei teaches that the commonly used physical-chemical method combines the two processes: phase separation of the shell material from the auxiliary aqueous or oil phase, and encapsulation of the core material by the shell material through a chemical reaction (Paragraph n0033), and that the method for preparing the microcapsules of the invention includes: dissolving an emulsifier and a pH adjuster in a solvent to form a suspended oil phase; adding the suspended oil phase to an emulsified aqueous solution of a surfactant and dispersing it evenly to form a water-in-oil (W/O) emulsion; heating the W/O emulsion to 60-70°C and adding an initiator aqueous solution dropwise to carry out a polymerization reaction to form a suspension containing microcapsules; dialyzing the suspension (e.g., sieving as in instant claim 9, particularly as in condition 2 of instant claim 10); and freeze-drying to obtain the microcapsules (Paragraph n0034), thereby generally reading upon the claimed method steps of forming the nanospheres as recited in instant claims 9-10, and given that it would have been obvious to one having ordinary skill in the art before the effective filing date to alternatively utilize a preformed polymer dissolved in the solvent for the shell material at room temperature (e.g., as in the example taught by Potreck), utilizing contents as taught by Wei with respect to the polymer shell and core materials (i.e., pH adjuster reading upon the claimed “acid scavenger” as recited in condition 5 of instant claim 11 as discussed in detail above with respect to instant claim 7 which recites the same list of acid scavengers), with conventional amounts of solvent, surfactant, and emulsifier as is typical in the art (e.g., as in the example taught by Potreck), the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 9-11 would have been obvious over the teachings of Wei, taken alone or in view of Potreck, given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize any of the known methods for forming the microcapsules as taught by Wei, utilizing routine experimentation to determine the optimum content of each component as taught by Wei to provide the desired microcapsules and pH adjusting properties for a particular end use.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shegokar (WO2019/174713A1) discloses an adhesive film for providing an active substance, comprising a depot layer comprising at least one active substance included/finely dispersed and/or located on the surface thereof, wherein the active substance may be in encapsulated form requiring action on an outer influence on the capsule, or likewise the depot layer or adhesive film, such as pH change, allowing the capsule to break and release the active substance(s).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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