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 following applicant’s response to a restriction/election requirement mailed on DATE. A preliminary amendment was filed on 06 February 2025 amending claims 1, 3-14, 20, 22, 24, and 28. Claims 2, 15, 16, 18, 19, 25-27 and 29-30 have been cancelled. Claims 1, 3-14, 17, 20-24, and 28 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08 April 2025 is not signed as required by 37 CFR 1.33 and 11.18. See 37 CFR 1.4(d) for the form of the signature. Accordingly, the IDS has been crossed out by the Examiner and the references therein have not been considered.
Drawings
No drawings are present in the application.
Claim Objections
Claims 9 and 24 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 9, the claim should recite “…wherein a homopolymer of one or more of the non-acidic polymer (meth)acrylate monomers…” to be grammatically correct and consistent with the other claims such as claim 10.
Claim 24 should recite “…providing the article of claim 20…” to properly refer to the previously recited article.
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.
Claims 3, 4, 5, 6, 9, 10, and 17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 3, the claim refers to “the first Tg” but claim 1 refers to a low Tg (meth)acrylate monomer(s) and also refers to two glass transition temperatures. It is unclear whether applicant intends to refer to the Tg of the low Tg (meth)acrylate monomer(s) or one of the two glass transition temperatures. Thus the term “the first Tg” lacks sufficient antecedent basis. See MPEP § 2173.05(e).
Furthermore, the “low Tg (meth)acrylate monomer(s)” of claim 1 has a homopolymer with a glass transition temperature of less than 0 °C, but claim 3 refers to the first Tg being from -10°C to 50°C. These ranges overlap but claim 3 includes the range of 0 to +50 °C which is excluded by the low Tg (meth)acrylate monomers from claim 1 unless another monomer is present to increase the resulting glass transition temperature. This adds to the confusion and indefiniteness of the claim.
Regarding claim 4, the claim refers to “the second Tg” but claim 1 refers to a low Tg (meth)acrylate monomer(s) and also refers to two glass transition temperatures. It is unclear whether applicant intends to refer to the Tg of the low Tg (meth)acrylate monomer(s) or one of the two glass transition temperatures. Thus the term “the second Tg” lacks sufficient antecedent basis. See MPEP § 2173.05(e).
Regarding claim 10, the claim refers to “the non-acidic high Tg (meth)acrylate monomer(s)”, but there is insufficient antecedent basis for this material. Claim 1 refers to non-acidic polar (meth)acrylate monomer(s) but does not recite “non-acidic high Tg (meth)acrylate monomer(s)”. See MPEP § 2173.05(e). The Examiner suggests using consistent terminology to describe the intended monomer(s).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 4 recites the broad recitation “wherein the second Tg is greater than 50 °C”, and the claim also recites “wherein the second Tg is greater than 55, 60, 65, 70, 75 °C “ which is the narrower statement of the range.
Claim 5 recites the broad recitation “have a Tg less than -10°C”, and the claim also recites “have a Tg less than -20, -30, -40, -50, or -60 °C “ which is the narrower statement of the range.
Claim 6 recites the broad recitation that the low Tg (meth)acrylate monomers are present in an amount “of at least 30 wt. %”, and the claim also recites “of at least 40, 50, or 60 wt. % “ which is the narrower statement of the range.
Claim 9 recites the broad recitation wherein a homopolymer of one or more of [the] non-acidic polar (meth)acrylate monomers(s) “have a Tg less than -10°C”, and the claim also recites “have a Tg less than -20, -20, -40, or -50 °C “ which is the narrower statement of the range.
Claim 10 recites the broad recitation “has a Tg of at least 50°C”, and the claim also recites “has a Tg of at least 60, 70, 80, or 90°C “ which is the narrower statement of the range.
Claim 17 recites the broad recitation “an aluminum overlap shear at 60°C of at least 2 MPa”, and the claim also recites “of at least 3, 4, or 5 MPa“ which is the narrower statement of the range.
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, 3-12, 17, 20-24, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kishi (U.S. Pub. 2011/0003947).
Regarding claim 1, Kishi discloses a curable resin composition and cured resin which includes 100 parts by weight of an epoxy resin, 1-70 parts by weight of an epoxy resin curing agent, and 1-50 parts by weight of an acrylic block copolymer, see abstract and p. 2, [0032-0039]. The resin is an adhesive with excellent shear adhesive strength, see p. 1, [0001]. The example compositions in Table 2 include resin compositions with 100 parts by weight of epoxy resin, 55.56 parts of epoxy curing agent, 0.5 parts of curing accelerator, and 39.02 parts of acrylic block copolymer for a total of 195.08 weight parts. This is 20.00 wt. % of acrylic block copolymer and 51.26 wt. % of epoxy resin component. While this is slightly outside of the claimed range, the Examiner notes that Kishi teaches generally including a lower or higher amount of epoxy curing agent and also teaches including a lower or higher amount of acrylic block copolymer, see p. 2, [0039]. It would have been obvious to have included, for example 100 parts by weight of epoxy resin, 55 parts of epoxy curing agent, and 50 parts by weight of acrylic block copolymer which would arrive at a composition using about 48.8 wt. % of epoxy resin and 24.3 wt. % of acrylic block copolymer which falls within the claimed range.
The acrylic block copolymer includes a hard block A and a soft block B with different glass transition temperatures. See p. 5, [0096]. The “B” block includes an alkyl acrylate such as ethyl acrylate, n-butyl acrylate, octyl acrylate, or 2-ethylhexyl acrylate, and has a glass transition temperature of -30 °C to -60 °C, see p. 5, [0104]. This reads on the low Tg (meth)acrylate monomer as claimed. The amount of B block is preferably 65-85 mass% of the acrylic block copolymer, see p. 7, [0122].
The A block preferably has a glass transition temperature of 100 °C or more such as 100-130 °C, see p. 5, [0101]. The A or B blocks may include a functional group containing (meth)acrylate ester such as 2-hydroxyethyl methacrylate, see p. 6, [0107]. This monomer has a glass transition temperature of its homopolymer of 85 °C, see table on p. 6 of applicant’s own specification. The amount of this monomer is 20 % by mass based on the content of Block A, see p. 6, [0106].
The curable resin is cured as described at p. 6-7, [0115] such that each block of the block copolymer retains its separate glass transition temperatures due to microphase separation. See also p. 5, [0104].
Regarding claim 3, Kishi teaches that suitable monomers for the “B” block include methyl acrylate, see p. 5, [0103], which forms a homopolymer with a glass transition temperature thereof of 10 °C as noted in applicant’s table on p. 6 of the original disclosure. Including this monomer would result in a glass transition temperature within the claimed range.
Regarding claim 4, Kishi teaches that the “A” block has a glass transition temperature of 100 °C or more such as 100-130 °C, see p. 5, [0101]. This exceeds the claimed minimum.
Regarding claim 5, Kishi teaches using n-butyl acrylate as a preferred monomer of the “B” block, see p. 5, [0104] and Examples at p. 12-14. Butyl acrylate forms a homopolymer with a glass transition temperature thereof of -54 °C as noted in applicant’s table on p. 6 of the original disclosure.
Regarding claim 6, The amount of B block is preferably 65-85 mass% of the acrylic block copolymer, see p. 7, [0122]. The “B” block has a glass transition temperature of -30 °C to -60 °C, see p. 5, [0104].
Regarding claim 7, n-butyl acrylate which is a preferred monomer of the “B” block has 4 carbon atoms in its alkyl group. See p. 5, [0104].
Regarding claim 8¸ Kishi teaches that the A or B blocks may include a functional group containing (meth)acrylate ester such as 2-hydroxyethyl methacrylate, see p. 6, [0107]. This includes a hydroxyl group as claimed.
Regarding claim 9, Kishi teaches including tetrahydrofurfuryl (meth)acrylate, see p. 7, [0107]. Page 6 of applicant’s disclosure teaches that tetrahydrofurfuryl acrylate forms a homopolymer with a glass transition temperature of -13 °C.
Regarding claim 10, The A or B blocks may include a functional group containing (meth)acrylate ester such as 2-hydroxyethyl methacrylate, see p. 6, [0107]. This monomer has a glass transition temperature of its homopolymer of 85 °C, see table on p. 6 of applicant’s own specification.
Regarding claim 11, Kishi teaches that the acrylic block copolymer may include isobornyl methacrylate or cyclohexyl methacrylate monomers, see p. 5, [0098].
Regarding claim 12, Kishi teaches that the epoxy resin is bisphenol A epoxy resin, see p. 2, [0029] and Example 1 at p. 16, [0230].
Regarding claim 17, although Kishi does not specify the pluck cleavage or aluminum overlap shear of the resulting cured adhesive composition, the reference generally teaches the same adhesive composition as claim 1 and therefore is expected to have the same properties including pluck cleavage and aluminum overlap shear.
Regarding claims 20-21, Kishi teaches forming the adhesive composition on a carrier film, reading on the claimed major surface of a substrate and a release liner. See p. 9-10, [0144].
Regarding claim 22, Kishi teaches forming the adhesive into a multilayer structure with a sheet or film as to form a tape, see p. 11, [0166].
Regarding claim 23, Kishi teaches applying the curable resin composition into a multilayer structure as to form a tape, see p. 11, [0166]. As the resin is described as curable, it is not yet cured, and thus the epoxy resin component is uncured as claimed.
Regarding claim 24, Kishi teaches applying the curable resin composition into a multilayer structure as to form a tape, see p. 11, [0166]. Kishi also teaches that the composition may be applied to a substrate and then cured to obtain a material with an appropriate peel adhesive strength, see p. 11, [0164]. This reads on the claimed method.
Regarding claim 28, Kishi teaches applying the adhesive to an aluminum plate and measuring the adhesive peel strength, see p. 11, [0164]. This is a metal plate and is thus capable of being used as a component of a battery as claimed.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kishi (U.S. Pub. 2011/0003947) in view of Shafer (U.S. Pub. 2020/0270492).
Regarding claim 13, Kishi discloses a curable resin composition and cured resin meeting the limitations of claim 1 as described above. However, Kishi does not also teach including a polyether polyol component.
Shafer also teaches an adhesive composition comprising an epoxy resin and a methacrylate copolymer as well as a polyether polyol component, see abstract and p. 1, [0010] and p. 3, [0036].
Shafer and Kishi are analogous as they each describe curable adhesive compositions formed form epoxy resins and (meth)acrylate components. Thus they are similar in composition and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include a polyether polyol component as taught in Shafer in the adhesive composition of Kishi in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include the polyether polyol component to retard the curing reaction such as to increase the “open time” of the adhesive, allowing time for another substrate to be bonded to the adhesive before the adhesive can fully cure. See Shafer at p. 3, [0037-0038].
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kishi (U.S. Pub. 2011/0003947) in view of Chen (U.S. Pat. 9,290,682).
Regarding claim 14, Kishi discloses a curable resin composition and cured resin meeting the limitations of claim 1 as described above. However, Kishi does not also teach including a multifunctional (meth)acrylate crosslinker component.
Chen also teaches an adhesive composition and tape, see col. 1, lines 15-20. The adhesive includes a high Tg and low Tg component, each of which is a (meth)acrylate copolymer, see col. 1, lines 54-61.
Chen further teaches including a crosslinking additive including a multifunctional acrylate to increase the cohesive strength of the adhesive, see col. 10, lines 30-47. The amount of crosslinking agent is up to 5 parts by weight based on the dry weight of adhesive composition, preferably 0.05 to 1 part by weight based on 100 parts by weight of low Tg copolymer in the composition, see col. 10, lines 56-62.
Kishi and Chen are analogous because they each describe adhesive compositions with acrylic copolymers having high Tg and low Tg components. Thus they are similar in composition and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include a multifunctional acrylate crosslinker for crosslinking the acrylic component of the adhesive composition of Kishi in order to arrive at the claimed composition. One of ordinary skill in the art would have been motivated to include the multifunctional acrylate crosslinking component to increase the cohesive strength of the adhesive. See Chen at col. 10, lines 30-47.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Agarwal (U.S. Pub. 2008/0188609) describes an adhesive composition including a epoxy resin and core/shell rubber particles which have two glass transition temperatures.
Miyazawa (U.S. Pat. 10,153,473) describes a material with a sea-island structure having two glass transition temperatures. However, the reference does not describe an adhesive composition with both an epoxy resin and an acrylic copolymer component.
U.S. Pub. 2024/0084125, also assigned to applicant, describes a UV-curable tape having an epoxy resin component and an acrylic block copolymer having two glass transition temperatures, but does not require a non-acidic polymer (meth)acrylate monomer as claimed.
Conclusion
All claims are rejected.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759