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 .
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 9-15, 21, and 22 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.
Considering Claim 9: Claim 9 excludes structures of the formula B from the second polymer, which includes ethylmethacrylate. However, structural unit C, which is required in the second polymer, covers the structure for ethylmethacrylate. Therefore, it is not clear if ethylmethacrylate is excluded from the second polymer, due to its inclusion in structural unit B, or included in the second polymer, due to its inclusion in structural unit C.
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.
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 9-15, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Nitto Denko (JP 5552364).
Considering Claim 9: Nitto Denko teaches an adhesive comprising a first and second polymer/adhesive (pg. 3), where in the example, the first polymer comprises butyl acrylate (structural unit C) and acrylic acid (structural unit A)and the second polymer comprises butyl acrylate (structural unit C), methyl methacrylate (structural unit B), and acrylic acid (structural unit A) (Table 1). Thus the first polymer of Nitto Denko reads on the second adhesive and the second polymer reads on the first adhesive.
Nitto Denko teaches that both polymer can additionally contain hydroxyethyl acrylate (structural unit D) in both polymers (pg. 6-7). It would have been obvious to a person of ordinary skill in the art to have added the hydroxyethyl acrylate to the polymers used in the examples, and the motivation to do so would have been, to include a crosslinkable moiety into the adhesive (pg. 11).
Considering Claim 10: Nitto Denko teaches the ratio of the first adhesive to the second adhesive of 1:4 (Table 1).
Considering Claim 11: Nitto Denko teaches the first adhesive as comprising 0.1 to 10 weight percent of the acrylic acid group (pg. 5-6), 0 to 40 weight percent of methyl methacrylate (pg. 4), 60 to 99 weight percent of the butyl acrylate (pg. 4), and less than 20 weight percent of the hydroxyethyl acrylate (pg. 6-7).
Considering Claim 12: Nitto Denko teaches the first adhesive as comprising 0.1 to 10 weight percent of the acrylic acid group (pg. 5-6), 60 to 99 weight percent of the butyl acrylate (pg. 4), and less than 20 weight percent of the hydroxyethyl acrylate (pg. 6-7).
Considering Claim 13: Nitto Denko teaches the molecular weight as being 1,000,000 to 4,000,000 (pg. 10), which overlaps the claimed range. It would have been obvious to a person of ordinary skill in the art to have selected a molecular weight in the overlapping portion of the claimed range, and the motivation to do so would have been, as Nitto Denko suggests, to provide strong heat and moisture resistance (pg. 10).
Considering Claim 14: Nitto Denko teaches the composition as comprising a fatty alcohol polyether (pg. 8).
Considering Claim 15: Nitto Denko teaches the composition as comprising water/a solvent (pg. 8).
Considering Claims 21 and 22: Nitto Denko teaches that the polymer can optionally include styrene or acrylonitrile (pg. 6). It would have been obvious to a person of ordinary skill in the art to have included these monomers, as Nitto Denko teaches them to be suitable for use in the adhesive polymers.
Response to Arguments
Applicant’s arguments with respect to claims 9-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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