DETAILED ACTION
Examiner’s Note
Non-elected claims 13-15, which were restricted in paragraphs 2-4 of the action mailed 10/26/2023, have been rejoined and examined as set forth below.
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/23/2026 has been entered.
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 4/23/2026, 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 2/13/2026. have been fully considered and are persuasive. The rejection of claims 1-2, 4, 6-8, 10 and 16 has been withdrawn.
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
Claim(s) 2, 6 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 2, it is unclear from the claim limitations, and in light of the specification as originally filed, what is, and is not being claimed. Amended claim 1 requires two acrylic triblock copolymers comprising polymethyl methacrylates (i.e., methacrylics versus acrylics). However, it is uncertain if the recited acrylic block copolymer with (A)nB with n ≥ 1 is further limiting the one or more of the previously recited two acrylic triblock copolymers, or if the recited acrylic block copolymer with (A)nB with n ≥ 1 is in addition to the one or more of the previously recited two acrylic triblock copolymers.
In the former case, the limitations are not further limiting the previously recited triblock copolymers given that, 1) (A)nB with n = 1 is a diblock copolymer, and 2) (A) block is an acrylic homopolymer does not further limit the methyl methacrylate. In the latter instance, the PSA would further comprise more block copolymer(s) than only the recited at least two acrylic triblock copolymers (such as acrylic diblock copolymers), which may not be supported by the specification as originally filed.
Regarding claim 6, it is unclear from the claim limitations, and in light of the specification as originally filed, what is, and is not being claimed. Amended claim 1 requires two acrylic triblock copolymers. However, it is uncertain if the recited acrylic block copolymer with the weight-average molecular weight (Mw) is further limiting the one or more of the previously recited two acrylic triblock copolymers, or if the recited acrylic block copolymer with the Mw is in addition to the one or more of the previously recited two acrylic triblock copolymers.
Regarding claim 16, it is unclear from the claim limitations, and in light of the specification as originally filed, what is, and is not being claimed. Amended claim 1 requires two acrylic triblock copolymers comprising polymethyl methacrylates (i.e., methacrylics versus acrylics). However, it is uncertain if the recited acrylic block copolymer with (A)nB with n ≥ 1 is further limiting the one or more of the previously recited two acrylic triblock copolymers, or if the recited acrylic block copolymer with (A)nB with n ≥ 1 is in addition to the one or more of the previously recited two acrylic triblock copolymers.
In the former case, the limitations are not further limiting the previously recited triblock copolymers given that, 1) (A)nB with n = 1 is a diblock copolymer, and 2) (A) block is an acrylic homopolymer does not further limit the methyl methacrylate. In the latter instance, the PSA would further comprise more block copolymer(s) than only the recited at least two acrylic triblock copolymers (such as acrylic diblock copolymers), which may not be supported by the specification as originally filed.
Claim 13 is 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 13 recites the limitation "the materials" in line 2. There is insufficient antecedent basis for this limitation in the claim as materials have not been previously introduced.
Claim 13 recites the limitation "the tape layers" in line 2. There is insufficient antecedent basis for this limitation in the claim as the metes and bounds of what constitutes, and what does not constitute, the layers of the tape have not been established.
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). In the present instance, claim 13 recites the broad recitation of co-extruding, and the claim also recites preferably blow film co-extruding or cast film co-extruding which are the narrower statements of limitation. 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 15 is 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 15 recites the limitation "the top surface" in line 3. There is insufficient antecedent basis for this limitation in the claim as a top surface has not been previously introduced.
Claim 15 recites the limitation "the low-E coated glass" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim as a low-E coated glass has not been previously introduced.
Allowable Subject Matter
Claims 1-2, 4, 6-8 and 10 and claims 13-15 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
JP 2017206676 A to Matsumoto et al. 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);
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 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.
Matsumoto continues to teach that the acrylic block copolymers have an Mw of 30,000 to 300,000 with the polymer blocks (A) (i.e., the methyl methacrylate blocks) demonstrating an Mw of 1,000 to 50,000 (or 2,000 to 100,00 for two (A) blocks), which provides an overlap with the presently claimed range (33 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, 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 ℃ 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 previously-cited 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 previously-cited Kanner (see column 8, line 58 to column 9, line 8 therein). The Applicant’s attention is also respectfully directed to the previously cited Aldrich Data Sheet for Tg values of the above-noted methyl methacrylate.
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.
While Matsumoto suggests that, other than a combination of a (A)-(B) diblock copolymers and a (A)-(B)-(A) triblock copolymer, two (or more) triblock copolymers can be employed (at least two triblock copolymers) (para 0039-0040), but Matsumoto does not explicitly disclose that the PMMA (A) blocks of the block copolymers are present in range of 33 to 45 wt.-% based on the total weight of both the block copolymers; or that the block copolymers comprise different PMMA contents. Matsumoto is also 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.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claims 2, 6 and 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 13 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 9/13/2026
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