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 view of the appeal brief filed on May 5, 2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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 1- 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 1: Claim 14 recites the limitation "the Constrained Thermally Induced Elastic Recovery Test described herein" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. The Office does not import limitations from the specification, and thus the description of the test in the original specification does not provide antecedent basis for this limitation. As the Constrained Thermally Induced Elastic Recovery Test is not described in the claim, there is insufficient antecedent basis for this limitation in the instant claim.
For the purpose of further examination, the claim is being interpreted as referring to the following test procedure described in the original specification. “Test specimens were cut along the major axis of film direction for measurements; practically this means the transverse film direction (TD) at a dimension of 6.2 mm in the MD and 25 mm in the TD. Specimens were clamped with a fixed strain of 1% so that the testing strip was positioned flat and even. Specimens were first conditioned at 30° C. for 2 mins, and then subjected to heating from 30° C. to 190° C. at the rate of 3° C./min. Under these conditions of fixed clamping, upon heating an axial retractive or elastic recovery force is generated with increasing temperature as the crystalline or other hard phase segments of the film soften and melt. In the tensile mode of the DMA, the axial force at a fixed strain reflects the recovering stress released during the heating. The plot of normalized stress over temperature shows the stress change during the elastic recovery caused by heating. The normalized stress is obtained by normalizing axial force by the area of the film cross section.”
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 1, 3-5, 7, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Shiota et al. (US 2004/0175527) in view of Robinson et al. (US Pat. 3,241,662) as evidenced by Strobel et al. (US 2004/0070100, incorporated by reference in Shiota et al. ¶0082).
Considering Claims 1 and 16: Shiota et al. teaches a polymeric film comprising a polymer (¶0051), where the film has a first and second opposed major face comprising a land portion (18) on the first major face and multiple modification zones, the modification zone comprising a central portion (15) having a thickness of zero, and a rim portion (20) surrounding the central portion having a thickness greater than the land zone (Fig. 2; ¶0024). Shiota et al. teaches the polymeric film as comprising a top film/carrier film to provide strength and durability to the film (¶0025).
Shiota et al. teaches the film as optionally being oriented (¶0073) and thus teaches non-oriented embodiments.
Shiota et al. teaches using the process of Strobel et al. to create the perforations in the polymer film (¶0082). The process uses a flame to perforate a pre-heated film (¶0043-44), which the is substantially similar to the heat treatment process described in the original specification (16:14-23). Thus, the treatment reads on the “heat-treated” limitation.
Shiota et al. does not teach that the film is not capable of self-forming. However, Shiota et al. teaches the same chemical composition as the instant claims, i.e. a non-oriented polypropylene. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Shiota et al. teaches the top film as being a polypropylene in an example (¶0057). Robinson et al. teaches a biaxially-oriented polypropylene as a carrier for an adhesive tape (1:10-13). Shiota et al. and Robinson et al. are analogous art as they are concerned with the same field of endeavor, namely adhesive backings. It would have been obvious to a person of ordinary skill in the art to have used the biaxially oriented polypropylene of Robinson et al. as the top film of Shiota et al., and the motivation to do so would have been, as Robinson et al. suggests, it has high tear strength and moisture resistance (1:45-2:44).
Considering Claim 3: Shiota et al. teaches the perforations as being oval/elliptical shaped (¶0102).
Considering Claim 4: Shiota et al. teaches the thickness of the film as being 1.2 mils (¶0102).
Considering Claim 5: Shiota et al. teaches the polymer as being a polyolefin (¶0051).
Considering Claim 7: Shiota et al. teaches an adhesive applied to the film (¶0058).
.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Shiota et al. (US 2004/0175527) in view of Robinson et al. (US Pat. 3,241,662) as evidenced by Strobel et al. (US 2004/0070100, incorporated by reference in Shiota et al. ¶0082) as applied to claim 5 above, and further in view of Strobel et al. (US 20090022927).
Considering Claim 8: Shiota et al. teaches the article of claim 5 as shown above.
Shiota et al. does not teach the polyolefin as being ethylene acrylic acid. However, Strobel et al. teaches a polymeric heat treated film, with the polymer being a polyolefin, such as ethylene acrylic acid polymer (¶0059). Shiota et al. and Strobel et al. are analogous art as they are concerned with the same field of endeavor, namely heat treated polymeric films. It would have been obvious to a person of ordinary skill in the art to have used the ethylene-acrylic acid copolymer of Strobel et al. as the polyolefin of Shiota et al., and the motivation to do so would have been, as Strobel et al. suggests, it is functionally equivalent to the polyolefins of Shiota et al. (¶0059).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Shiota et al. (US 2004/0175527) in view of Robinson et al. (US Pat. 3,241,662) as evidenced by Strobel et al. (US 2004/0070100, incorporated by reference in Shiota et al. ¶0082) as applied to claim 7 above, and further in view of Fry (US Pat. 5,194,299).
Considering Claim 8: Shiota et al. teaches the article of claim 7 as shown above.
Shiota et al. does not teach the adhesive as being discontinuous. However, Fry teaches applying a pressure sensitive adhesive to a backing in a discontinuous manner (2:25-45). Shiota et al. and Fry are analogous art as they are concerned with the same field of endeavor namely adhesives applied to backing materials. It would have been obvious to a person of ordinary skill in the art to have applied the adhesive of Shiota et al. in a discontinuous manner, as in Fry, and the motivation to do so would have been, as Fry suggests, to allow for the adhesive to be removable and repositionable (2:25-45).
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shiota et al. (US 2004/0175527) in view of Robinson et al. (US Pat. 3,241,662) as evidenced by Strobel et al. (US 2004/0070100, incorporated by reference in Shiota et al. ¶0082) as applied to claim 7 above, and further in view of Bartusiak et al. (US 2013/0025779).
Considering Claims 9 and 10: Shiota et al. teaches the article of claim 7 as shown above.
Shiota et al. does not teach a release coating being applied to the opposite side of the backing as the adhesive layer. However, Bartusiak et al. teaches applying a release coating to a polyolefin backing material opposite of the adhesive layer (¶0004; 0052). Shiota et al. and Bartusiak et al. are analogous art as they are concerned with the same field of endeavor, namely pressure sensitive adhesives applied to backing materials. It would have been obvious to a person of ordinary skill in the art to have applied the release coating of Bartusiak et al. the backing material of Shiota et al., and the motivation to do so would have been, as Bartusiak et al. suggests, to allow the tape to be self-wound (¶0052).
Response to Arguments
Applicant's arguments filed May 5, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Shiota et al. does not teach the non-oriented embodiment is not persuasive. Shiota et al. teaches “in some embodiments, the film is made of oriented polymers” (¶0073). This implicitly teaches that there are other embodiments (the reference does not teach in all embodiments the film is made of oriented polymers) where the film is not made of oriented polymers. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP § 2123.
The Office does not dispute that examples and preferred embodiments use an oriented polymeric film. However, this does not discredit or disparage the use of non-oriented films in the article of Shiota et al. The applicant has not provided any evidence to show the criticality of using a non-oriented film in the instant invention.
The non-oriented polypropylene is one of the polymers taught in the instant specification to be not capable of thermally-induced self-forming.
B) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
C) The applicant’s argument that Shiota et al. does not need to be modified by Robinson to arrive at the claimed invention is not persuasive. Shiota et al. teaches the polymeric film as comprising a top film/carrier film to provide strength and durability to the film (¶0025).
Shiota et al. teaches the top film as being a polypropylene in an example (¶0057), but does not explicitly teach a biaxially oriented polypropylene. Robinson et al. teaches a biaxially-oriented polypropylene as a carrier for an adhesive tape (1:10-13). Shiota et al. and Robinson et al. are analogous art as they are concerned with the same field of endeavor, namely adhesive backings. It would have been obvious to a person of ordinary skill in the art to have used the biaxially oriented polypropylene of Robinson et al. as the top film of Shiota et al., and the motivation to do so would have been, as Robinson et al. suggests, it has high tear strength and moisture resistance (1:45-2:44). As Robinson et al. teaches the properties taught to be desirable in Shiota et al., a person of ordinary skill in the art would have found it obvious to make the proposed modification.
D) The applicant’s argument that Shiota et al. teaches that the carrier film as being on the second major face is not persuasive. The film of Shiota et al. teaches a film (14) with land portions (15) on the first major face, and teaches a top film (22) contacting the same face as the land portions (Fig. 2), and thus reads on the claim.
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
Prosecution Insights