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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 12/22/2025, with respect to the rejection of claims 1-2, 4, 6-8, 10 and 16 under 35 U.S.C. 112(b) as set forth in paragraph 4 of the action mailed 9/29/2025, have been fully considered and are persuasive. The rejection of claims 1-2, 4, 6-8, 10 and 16 has been withdrawn, EXCEPT as noted below.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 1-2, 4, 6-8, 10 and 16 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.
Regarding claim 1, it is unclear from the claim limitations, and in light of the specification as originally filed, what is intended via the recitation of “relative amounts of each combination of multiple acrylic block copolymers.” The Examiner notes that one interpretation of the claim language provides the “each” language to the apply to the “combination;” that is, “each combination” implying that are multiple combinations rather than multiple acrylic block copolymers.
Claim Rejections - 35 USC § 103
Claim(s) 1-2, 4, 6-8, 10 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (JP 2017206676 A) in view of Kelch et al. (US 6663974 B2), and in light of the evidence provided by the Aldrich Data Sheet, Kanner et al. (US 7070051 B2) and Satake et al. (US 5814685). The Examiner notes that citations from the ‘676 reference were taken of a new version of a machine translation, which is provided with the previous action.
Regarding claims 1-2, 4, 6 and 16, Matsumoto teaches a pressure-sensitive adhesive (PSA) part (PSA layer) laminated (PSA tape) with a part made of a thermoplastic polar resin (carrier layer), which said PSA part comprising an acrylic block copolymer (para 0008, 0066) having a weight-average molecular weight (Mw) of 30,000 to 300,000, which overlaps that presently claimed (current claim 6),;
comprising at least one polymer block (A) demonstrating an Mw of 1,000 to 50,000 towards a balance of cohesive strength and melt viscosity, a glass transition temperature (Tg) of 80 to 140 ℃ towards providing a physical pseudo-crosslinking point (and the attendant properties therefrom), and comprising methacrylate units such as, inter alia, methyl methacrylate in an amount of 100% by mass towards clearer phase separation between polymer blocks (A) and (B) (para 0010-0014);
and comprising at least one polymer block (B) demonstrating a Tg of -100 to 30 ℃ comprising acrylate units (b-1) such as, inter alia, n-butyl acrylate and acrylate units (b-2) such as, 2-ethylhexyl acrylate in an amount of 90% by mass and/or a mass ratio (b-1):(b-2) of 70:30 to 0:100 towards stable adhesive performance (para 0010, 0015-0024).
Matsumoto also teaches that polymer blocks (A) and (B) may contain other monomers such, inter alia, (meth)acrylic acid (para 0025), and that the acrylic block copolymer comprises a combination (multiple acrylic block copolymers) of (i) an (A)-(B) diblock copolymer and (ii) an (A)-(B)-(A) triblock copolymer ((A)nB with n = 2, current claims 2 and 16) towards adhesive strength (para 0040). The Examiner notes that the (A)-(B)-(A) triblock configuration noted above provides a polymethyl methacrylate/polybutyl acrylate/polymethyl methacrylate structure (current claim 4).
Matsumoto does not explicitly disclose that the PMMA (A) blocks of the (A)-(B) diblock copolymer and the (A)-(B)-(A) triblock copolymer are present in range of 24 to 45 wt.-% based on the total weight of both the (A)-(B) diblock copolymer and the (A)-(B)-(A) triblock copolymer;
or that the diblock and triblock copolymers comprise different PMMA contents. However, as noted above, Matsumoto teaches that the acrylic block copolymers have an Mw of 30,000 to 300,000 with the polymer blocks (A) demonstrating an Mw of 1,000 to 50,000, which provides an overlap with the presently claimed range (24 to 45 wt.-%).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
In addition, also as provided above, Matsumoto instructs one skilled in the art that polymer block (A) has an Mw of 1,000 to 50,000 towards a balance of cohesive strength and melt viscosity, whereas the methyl methacrylate provides clearer phase separation between polymer blocks (A) and (B); and a glass transition temperature (Tg) of 80 to 140 ℃ (current claim 2) towards providing a physical pseudo-crosslinking point (and the attendant properties therefrom).
Further, the Examiner respectfully submits that it is established in the art that the Tg of a polymer is proportional to the Tg of its constituent monomers, and their respective proportions, as evidenced via Satake (see column 4, lines 5-19 therein), and that the Tg of a PSA (and thus its polymeric components) is selected based on the properties required of its application such as balance of tack, peel and cohesion as evidenced by Kanner (see column 8, line 58 to column 9, line 8 therein). The Applicant’s attention is also respectfully directed to the Aldrich Data Sheet for Tg values of the above-noted methyl methacrylate (Tg 95 to 125 ℃, current claim 16), and n-butyl acrylate and 2-ethylhexyl acrylate (Tg less than -10 ℃, current claim 2, Tg less than -35 to -60 ℃, current claim 16).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide (A)-(B)-(A) with a PMMA content different from the PMMA content of the (A)-(B) diblock copolymer based on the differences in the melt viscosity, clarity of phase separation, Tg, physical pseudo-crosslinking points required of the two block copolymers required for the prior art’s intended application;
and to provide the overall PMMA content (from both (A)-(B) and (A)-(B)-(A) block copolymers of the PSA towards said PSA of Matsumoto demonstrating a balance of cohesive strength, adhesive strength, melt viscosity, crosslinking density (via physical pseudo-crosslinking point associated with MMA monomers) and phase separation clarity based on the requirements of the prior art’s intended application as in the present invention.
Matsumoto is silent to a tie layer between the PSA layer and the thermoplastic polar resin, and comprising polyethylene grafted with maleic anhydride or glycidyl methacrylate grafted polyethylene. However, the polymer blocks (A) and (B) of Matsumoto contemplates monomeric components having polarity such as (meth) acrylic acid (see above).
In addition, Kelch teaches a multilayer film comprising a polar-modified polyolefin tie layer interim to a core layer an adhesive layer, and is selected from, inter alia, maleic anhydride grafted polyethylene (LLDPE) (column 3, lines 31-67)
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide a ties layer as discussed in Kelch interim to the thermoplastic polar resin and the PSA layer of Matsumoto towards increasing the adhesion between said thermoplastic polar resin and the PSA layer as in the present invention.
The recitation in the claims that the PSA tape is “for temporary protection of coated glass substrates” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that prior art discloses a PSA tape as presently claimed, it is clear that the PSA tape of the prior art would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Regarding claim 7, Matsumoto teaches that the PSA layer has a 180° peel strength to BA SUS after stored at 23 ℃ for 24 hours and then peeled at 23 ℃ at a speed of 300 mm/min of 1 N/25 mm to 15 N/25 mm (i.e., 80 to 1200 cN/20 mm) (2nd paragraph of page 8; bottom of page 10), which overlaps that presently claimed and presently disclosed for the inventive compositions (Examples 10-13), albeit under different Standards (EN 1939 presently claimed versus ISO 29862 of Matsumoto).
While Matsumoto does not disclose peel strengths initially, or after 7 days following application, Matsumoto’s adhesives are directed to “temporary fixing” (see page 9, for example). In addition, Matsumoto instructs that the adhesive strength is adjusted via the inclusion of both triblock and diblock copolymers (bottom of page 6); the thickness of the PSA layer (middle of page 8); and/or via a tackifier (top-to-middle of page 7).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the adhesion of the PSA layer of Matsumoto based on the initial adhesion and aged adhesion based on the adhesion requirements of the prior art’s intended application as in the present invention.
Regarding claim 8, Matsumoto teaches that the thermoplastic polar resin (i.e., the presently claimed carrier layer) is ethylene/tetrafluoroethylene copolymers (polyolefin).
Regarding claim 10, Matsumoto does not specify the individual thicknesses for each of the adhesive layer and the layer of a thermoplastic resin, but Matsumoto does teach that the extrusion molded body (i.e., the PSA layer) has a thickness 0.005 to 0.25 mm (5 to 250 mm), which overlaps that presently claimed, towards a balance of film thickness and adhesion (middle of age 8).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA layer of Matsumoto with the presently claimed thickness as selection of a layer thickness would have been apparent to the skilled based on, inter alia, the overall thickness of the PSA tape and/or towards controlling the adhesion based on the requirements of the prior art’s intended application as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 12/22/2025, with respect to the rejections of claims 1-2, 4, 6-8, 10 and 16 under 35 U.S.C. 112(b) as set forth in paragraph 4 of the action mailed 9/29/2025, have been fully considered but they are not persuasive.
In regards to the first rejection of claim 1, the Examiner notes that the claim amendments have not addressed the rejection, nor has the Applicant provided any arguments against the rejection. Thus, the rejection is maintained and repeated above. The Examiner submits that claim 1 recites that the PSA layer comprises a combination of multiple acrylic block copolymers, but the claims do not recite more than one combination. The recitation of “each combination” suggests that is more than one combination; for example, one combination could include acrylic block copolymers (A) and (B), and another combination could include acrylic block copolymers (C) and (D).
Applicant’s arguments, see the claim amendments and the remarks filed 12/22/2025, with respect to the rejections of claims 1-2, 4, 6-8, 10 and 16 over Matsumoto et al. in view of Kelch et al. under 35 U.S.C. 103 as set forth in paragraph 5 of the action mailed 9/29/2025, have been fully considered but they are not persuasive.
In response to the Applicant’s argument set forth in the paragraph bridging pages 7-8 of the current remarks, the Examiner was not stating that the Applicant’s remarks in the previous remarks of “present claim neither recites nor requires that the acrylic block copolymers have different polymethyl methacrylate (PMMA) contents” were, or were not, convincing. Instead, the Examiner was only pointing out the amendments to claim 1 in the claim listings filed 9/9/2025 did not unambiguously recite or require that the acrylic block copolymers have “different PMMA contents” as asserted in the second full paragraph of the remarks filed 9/9/2025.
Indeed, it was not the Examiner’s intention to solicit amendments to claim 1 to provide this recitation, nor to promote the possibility that such claim amendments would in any way distinguish the presently claimed over the cited prior art. See the updated prior art rejections set for above, and the rejections under 35 U.S.C. 112(b) as provided in the previous and current actions addressing these limitations. The Examiner respectfully submits that the current recitation that “the relative amounts…with different polymethyl methacrylate contents” is addressed in the prior art rejection set forth above.
Turning now to the Applicant’s second point, the Examiner respectfully reminds the Applicant that:
MPEP 2123(I) instructs that “The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
Examiner’s emphasis.
In this regards, the Examiner acknowledges the Applicant’s numerical analysis that provides the acrylic block polymers of Matsumoto with PMMA contents as low as 0.33 wt%, based on the content of the total block copolymers, assuming the lower limit for the Mw of the polymer blocks (A) (1,000) and the higher limit of the Mw for the acrylic block copolymers (300,000). However, that same analysis for the upper limit of the Mw of the polymer blocks (A) (50,000) and the lower limit of the Mw for the acrylic block copolymers (30,000) would provide a PMMA content across both (A)-(B)-(A) triblock and (A)-(B) diblock copolymers as referenced against both block copolymers, of over 100 wt% (50,000/30,000 x 100 = 167 wt%), which is physically impossible, and beyond what would have been reasonably suggested to the skilled artisan.
Thus, it is a reasonable conclusion that said skilled artisan would have been well apprised to consult the other portions of Matsumoto towards the selection of the total PMMA content, to include that relative to the PSA as whole versus that relative to both block copolymers, based on the instruction provided by Matsumoto towards the resultant properties provide by the PMMA such as the melt viscosity, clarity of phase separation, Tg, and physical pseudo-crosslinking points. Indeed, the ranges of the Mw’s for both the polymer block(s) (A) and for the triblock/diblock acrylic block polymers, in tandem with the conspicuous instruction provided via Matsumoto for selecting the ranges towards the attendant properties therefrom, would have been a reasonable suggestion to one skilled in the art towards selecting the presently claimed PMMA content (i.e., 24 to less than 45 wt.-%), and thereby arrive at the presently claimed invention from the disclosure of the cited prior art.
Turning now to the Applicant’s citations of paragraphs 0013 and 0028, the Examiner acknowledges that the =disclosures contained therein further provide instruction to one skilled in the art, and in tandem with the other portions of Matsumoto cite din the current prior art rejection, provide clear motivation to the skilled artisan for selecting the presently claimed proportions for the PMMA blocks for the triblock and diblock acrylic copolymers of the Matsumoto invention. In addition, and without conceding that amendments to the claim reciting the adhesion properties and releasability presently disclosed in paragraph 0039, there is nothing in at least current claim 1 requiring these properties.
The Applicant is respectfully reminded that:
MPEP 2111.01(II) instructs that “Though understanding the claim language may be aided
by explanations contained in the written description, it is important not to import into a
claim limitations that are not part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a claim when the claim
language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-
Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir.
2004).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/11/2026