DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 17, 2026 has been entered.
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.
Claim 18 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor or a joint inventor regards as the invention.
Claim 18 is indefinite because it recites a tile that “consists of aluminum oxide and materials selected from the group consisting of crystalline silica and magnesium oxide”. As there are only two “materials” in the group, it is not clear if “materials selected from the group consisting of” requires both materials to be “selected” or if only one material can be selected. If both materials are required, it is not clear why the materials must be “selected from the group”. For the sake of compact prosecution, the claim is interpreted herein as requiring a tile that consists of aluminum oxide and one or more of crystalline silica and magnesium oxide. Appropriate correction and explanation are required.
The rejections made under 35 U.S.C. 112(a) in the previous Office Action are withdrawn in view of Applicant’s amendments, filed August 17, 2026.
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, 4, 5, 10, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kreckel (EP 1,044,797 A1), as evidenced by 3M1 (3M, "VHB™ Tapes", 2011, p. 1-10), and in view of CeraMaterials (CeraMaterials, "Safety Data Sheet Alumina Ceramic", 2017, p. 1-10) and 3M2 (3M, “Surface Preparation for 3M™ VHB™ Tape Applications”, 2017, p. 1-4), as evidenced by 3M3 (3M, “3M™ Silane Glass Treatment AP115 Safety Data Sheet”, 2014, p. 1-10), CAS (CAS Common Chemistry, “Glycidoxypropyltrimethoxysilane”, 2024, p. 1-4), and 3M4 (3M, "Solar Acrylic Foam Tape Glass Bonding and Silane Coupling Agents Used to Improve High Humidity Performance", 2011, p. 1-2).
Regarding claims 1, 4, 5, 10, and 18, Kreckel teaches a self-adhesive ceramic tile comprising a ceramic tile and a double-sided (double-coated) adhesive tape with a release layer on a surface of the tile that creates a strong bond between the surface and an adjoined substrate (par. 8, 38-40). Kreckel's tape preferably includes an acrylic foam carrier and an acrylic-based adhesive system, and Kreckel exemplifies using various 3M VHB™ tapes, including VHB Tapes #4941, 4951, and 4611, among others, for this purpose (par. 22-32, 37, 38). As evidenced by 3M1, these tapes include acrylic foam carriers, acrylic adhesives, and release liners, and create strong bonds that serve as replacements for rivets, spot welds, and other permanent fasteners (p. 1, 2).
The teachings of Kreckel differ from the current invention in that the composition of his ceramic tile is not disclosed. However, CeraMaterials teaches an alumina ceramic that includes 90 to 100 wt. % aluminum oxide, 0.1 to 1 wt. % crystalline silica, and 0.1 to 1 wt. % magnesium oxide (p. 2). The material is advantageous because it offers wear (i.e. abrasion), corrosion, and temperature resistance and is useful in a variety of applications, including for use as wear protection for machine and plant construction, in the chemical industry, in high-temperature applications, in the sanitary industry (p. 1). It would have been obvious to one of ordinary skill in the art to use CeraMaterial's alumina ceramic as the ceramic material of Kreckel's tile because it offers excellent wear (i.e. abrasion), corrosion, and temperature resistance and is applicable in a variety of industries.
As evidenced by Applicant's specification, which teaches that a ceramic tile comprising 85-100 wt. % alumina, 0.1 to 1 wt. % crystalline silica, and 0.1 to 1 wt. % magnesium oxide is inherently hydrophilic (Applicant's published application par. 44 and 48), the prior art tile, which is 90 to 100 wt. % alumina, 0.1 to 1 wt. % crystalline silica, and 0.1 to 1 wt. % magnesium oxide (discussed above) and has not been taught to have undergone any hydrophobizing treatments, is hydrophilic. As no particular level of abrasion resistance is claimed and as it is more resistant to abrasion than at least some other materials (e.g. a soft, easily-abraded material), the prior art ceramic qualifies as being "abrasion-resistant". As such, the prior art tile is an "abrasion resistant alumina ceramic tile".
The teachings of Kreckel differ from the current invention in that his tile is not taught to be coated with two coatings of dried silane coupling agent of the recited composition, wherein the surface of the coupling agent layer facing the tape is hydrophobic. However, as noted above, Kreckel teaches to use various 3M VHB tapes on his tiles to bond them to an underlying substrate. 3M2 further teaches that surfaces that are to be bonded to a VHB tape should be prepared to achieve optimum adhesion (p. 1, text). 3M2 also teaches that ceramic materials are hydrophilic, or “water-loving”, by nature, which causes the durability of a pressure-sensitive adhesive bond between the ceramic material and an applied tape susceptible to change under high humidity or exposure to moisture, which can undercut the tape bond and interfere with the normal adhesion forces (p. 1, 2, text). Therefore, as also evidenced by 3M2, Kreckel and CeraMaterial's tile, including its surfaces, is hydrophilic. To remedy this, 3M2 teaches treating (i.e. "coating") such surfaces with silane coupling agents, which are added to an isopropanol/water solution for cleaning the surfaces and which reduce the water-loving tendency of the surfaces (i.e. the surfaces are made hydrophobic) and enhance the tape bond (p. 2). After cleaning with the isopropanol/water solution, a treated surface is wiped dry (p. 1, "Step B"), which indicates that the silane coupling agent remaining on the surface is a dried silane coupling agent coating (p. 1).
For ceramic tiles, 3M2 teaches to use 3M™ Silane Glass Treatment AP 115 to prime the surface in preparation for successful bonding with a VHB tape (p. 3). 3M2 also teaches that an applied primer forms a layer and "creates a new surface" for tape adhesion (par. 2). Therefore, it would have been obvious to one of ordinary skill in the art to treat/coat the hydrophilic tape-adjoining surface of Kreckel and CeraMaterial’s ceramic tile with 3M™ Silane Glass Treatment AP 115, as taught by 3M2, thereby forming a "dried silane coupling agent coating" on the surface, to reduce the water-loving nature of the surface and to enhance the tape bond to the tile. It also would have been obvious to one of ordinary skill in the art use the hydrophobic coating to configure the surface (e.g. via application of the silane treatment) to be hydrophobic, or as hydrophobic as possible, because 3M2 teaches that the water-loving tendency of such surfaces should be reduced, and in order to lessen the surface’s susceptibility to humidity and moisture as much as possible, as would be understood by one of ordinary skill in the art to be achieved by making the surface hydrophobic (i.e. which is the opposite of being hydrophilic), thereby reducing the chances of the tape bond and normal adhesion forces failing and improving the durability of the bond.
As evidenced by 3M3 and CAS, 3M™ Silane Glass Treatment AP 115 includes 3-(Trimethoxysilyl)propyl glycidyl ether, which is another name for glycidoxypropyltrimethoxysilane (3M3, p. 2; CAS, p. 1-2). As noted above, it would have been obvious to configure the surface of Kreckel’s tile to be hydrophobic. Additionally, as evidenced by 3M4, which teaches that applying the silane coupling agent, 3-glycidoxypropyltrimethoxysilane, to an inorganic surface makes the surface hydrophobic (i.e. a hydrophobic silane coating is created on the inorganic surface) (p. 2), and Applicant's Specification, which teaches that applying 3-glycidoxypropyltrimethoxysilane to an alumina tile makes its surface hydrophobic (Applicant's published application, par. 49), the exterior surface of silane coupling agent coating on the ceramic tile facing the tape (i.e. and facing "away from said abrasion-resistant tile") in the product of Kreckel, CeraMaterials, and 3M2 is hydrophobic.
The claim requirement that there are two “dried coatings” of the same silane coupling agent is effectively a product-by-process limitation requiring that the silane coupling agent material on the claimed product is applied in two coating steps, each with their own drying step. Product-by-process limitations are not limited to the recited processing steps, but rather the structure implied by the recited procedure. See MPEP 2113. As no coating thickness, coverage rate, or silane coupling agent concentration is claimed, it is not clear how a product including two, stacked, separately-dried silane coatings of the same composition that are of an unspecified thickness, coverage rate, concentration, or microstructure (etc.) differ in overall structure from a single coating of the same composition that is also of an unspecified thickness, coverage rate, and concentration. As such, the claim to two, stacked silane coupling agent coatings does not distinguish the claimed invention over the prior art because the product of the prior art has the limited structure that is implied.
The claim limitation requiring that the recited tile is "non-decorative" is a statement of intended use. The prior art product meets the claim limitation because it is capable of being used in a non-decorative application. Additionally, as Kreckel makes no disclosure of the tile having decorative features such as a glaze, the tile is presumed to be free of such features and to qualify as being "non-decorative".
Claims 1, 4, 5, 10, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kreckel, as evidenced by 3M1, and in view of CeraMaterials and 3M2, as evidenced by 3M3, CAS, and 3M4, and further in view of Hoikkanen (Hoikkanen, M. et al. Prog. Org. Coat., 2011, vol. 72, p. 716-723).
Regarding claims 1, 4, 5, 10, and 18, as discussed above, Kreckel et al. render obvious a non-decorative alumina self-adhesive tile including a dried silane coupling agent layer with a hydrophobic surface placed as claimed that meets or renders obvious limitations of claims 1, 4, 5, 10, and 18.
As the cited references do not explicitly discuss there being two silane coating layers, the product of Kreckel et al. might be considered to differ from the current invention in this manner. However, Hoikkanen teaches that the solution concentration of silane coupling agent compositions used to form coupling agent coatings can profoundly affect the silane bonding to an inorganic surface and that applied silane solutions are usually used in concentrations of 0.01 to 2 % (p. 716, right col). Hoikkanen further discloses that silane layers on large structures need to be thick to contribute to the mechanical properties of the film, and that thick silane layers usually consist of several chemisorbed and physisorbed layers (p. 716, right col.). In his own tests, Hoikkanen demonstrated that the bond strength of a silane layer increased to a point with increasing silane coating thickness (p. 722, right col.), thereby showing that more than one, stacked silane layer present in the coating was beneficial but that additional layers could present problems. Hoikkanen’s discussion also demonstrates that silane coating concentration and thickness, and number of silane compound layers are result-effective variables. Accordingly, it would have been obvious to one of ordinary skill in the art to configure the dried silane coupling agent coating of Kreckel et al. to have a sufficient thickness and to select an appropriate thickness, e.g. by selecting an appropriate silane coupling agent compound concentration in the coating solution including a silane concentration in the range of 0.1 to 2 %, and, therefore, configuring the coating to have/selecting a sufficient/appropriate number of chemisorbed silane layers greater than one silane layer, to achieve improved/the best possible/the desired bonding between the tile and the adhesive tape including according to the requirements of a given application. Therefore, the product of Kreckel et al. and Hoikkanen comprises at least two layers (i.e. “coatings”) of dried silane coupling agent.
As noted above, given that there are no features or characteristics to distinguish two “coatings” of unspecified thickness or structure from a single thicker coating of the same composition, the dried, hydrophobic silane coating of Kreckel et al. and Hoikkanen, which comprises at least two, stacked layers of the silane coupling agent compound, meets the claim requirements because it has the structure that is implied by the claims both in terms of the explicit claim language and its status as effectively being a product-by-process limitation. See MPEP 2113. As discussed above and evidenced by Hoikkanen, silane coatings produced from solutions of a greater concentration have greater thicknesses and include a larger number of silane layers than those produced from solutions with lower silane concentrations. Therefore, as the prior art renders obvious a range of silane concentrations, i.e. 0.1 to 2 %, the prior art also renders obvious a range of overall dried silane coupling agent coating thicknesses and a range of number of silane compound layers, which encompasses and renders obvious the claimed number of silane coating layers. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed August 17, 2026 have been fully considered but they are not persuasive.
Applicant has argued that the claimed combination of two, dried silane coupling agent coating layers is significantly different from a thicker, single coating layer of the silane coupling agent because the two coatings provide improved interaction with the surface topography of the tile and improved bonding as compared to a single, thicker layer. However, Applicant has presented no evidence to support these assertions or to demonstrate that the claimed two, dried silane coating layers has a different structure from a thicker silane coating of the same composition.
As discussed previously and in the rejections above, no defining features (e.g. coating layer thicknesses, concentration, microstructure, etc.) are claimed to distinguish two, stacked coating layers, which have the same composition, from a single coating layer of that same composition. Without further description of what specific structure constitutes a “dried coating” in the context of the claims, it is not clear how two, stacked dried coatings of the same composition differ in structure from a single coating of that same composition. As the instant disclosure recites that the solution for the coating has a silane concentration of less than 1 % (Applicant’s published application, par. 45), there is also no lower limit (other than zero %) to how much silane material may be deposited with a single, dried coating, thereby making it further unclear what is the structure of a single or two “dried coatings”. Furthermore, as discussed above and in the previous Office Action, it would have been obvious in view of Hoikkanen’s teachings to configure the dried silane coupling agent coating of Kreckel et al. to have a sufficient thickness and to select an appropriate thickness, e.g. by selecting an appropriate silane coupling agent compound concentration in the coating solution including a silane concentration in the range of 0.1 to 2 %, and, therefore, configuring the coating to have a sufficient/appropriate number of chemisorbed silane layers greater than one silane layer, to achieve improved bonding according to the requirements of a given application. Therefore, the product of Kreckel et al. and Hoikkanen comprises at least two, stacked layers (i.e. “coatings”) of dried silane coupling agent and has the limited structure implied by the claim.
Applicant has also reiterated their argument that 3M2 is directed to a glass primer, with the cited document instructing users to remove excess primer, which Applicant argues is a teaching away from apply two coatings or a coating of greater thickness. However, as has been noted in previous communications, 3M2 explicitly teaches to use 3M™ Silane Glass Treatment AP115 on ceramic tiles to prepare them for adhesion to 3M™ VHB foam acrylic tape (p. 3), which Kreckel teaches to apply to a ceramic tile. Therefore, the prior art clearly motivates using the taught silane coupling agent on ceramic tiles, in addition to glass.
While Applicant is correct that 3M2 does not motivate applying two, separately-dried primer coating layers or teach to make a thicker silane layer, the rejections do not assert that it would have been obvious to apply two, separately-dried silane coating layers. 3M2 also cannot be construed as teaching away from a structure meeting the claim limitations because it is not clear what specific structure (i.e. number of stacked silane layers, layer thickness(es), etc.) is intended to be implied by the claims and because 3M2 does not criticize, discredit, or otherwise discourage applying a silane coating comprising two or more stacked silane layers. Furthermore, it would have been obvious in view of Hoikkanen’s teachings to configure the dried silane coupling agent coating of Kreckel et al. to have a sufficient/appropriate number of chemisorbed silane layers greater than one silane layer, to achieve improved bonding according to the requirements of a given application. Therefore, the product of Kreckel et al. and Hoikkanen comprises at least two, stacked layers (i.e. “coatings”) of dried silane coupling agent and has the limited structure implied by the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
