DETAILED ACTION
This is an Office action based on application number 17/642,134 filed 10 March 2022, which is a national stage entry of PCT/IB202/059297 filed 2 October 2020, which claims priority to US Provisional Application No. 62/910,667 filed 4 October 2020. Claims 1-4 and 6-8 and 12-18 are pending. Claim 5, 9-11, and 19 are canceled.
Amendments to the claims, filed 12 August 2025, have been entered into the above-identified application.
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 .
Withdrawn Rejection
The 35 U.S.C. §112(b) rejection of claims 12-13, made of record in the previous Office action, are withdrawn due to Applicant’s amendments.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-4, 6-8 and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Runge et al. (WIPO International Publication No. WO 2017/136432 A1 with citations taken from equivalent US Patent Application Publication No. US 2019/0002737 A1) (Runge) in view of Hamerski et al. (US Patent No. US 6,541,089 B1) (Hamerski).
Regarding instant claims 1-4, 7-8, and 12-13:
Runge discloses film backings for peel release backings (Title).
Runge discloses that said backings are multilayer backings comprising:
a core layer comprising at least one of an elastomeric polymer, SEBS, SEPS, SIS, SBS, polyurethane, ethyl vinyl acetate (EVA), ethyl methyl acrylate (EMA), ultra low linear density polyethylene (ULLDPE), hydrogenated polypropylene, and combinations or blends thereof; and
a first and second skin layer comprising at least one of polypropylene, polyethylene, high density polyethylene (HDPE), low density polyethylene (LDPE), linear low density polyethylene (LLDPE), a polyurethane, EVA, EMA, and combinations or blends thereof (Claims 1 and 2).
Said core layer materials are construed to meet the claimed elastomeric materials as they are the same as those core materials claimed.
Said skin layer materials are construed to be plastically deforming materials as they are the same as those skin materials claimed.
Runge further discloses that the backing has a core to skin thickness ratio between about 2:1 and about 100:1 (Claim 1). The disclosure of “about 2:1” is construed to include those values just below 2:1. Therefore, the range recited by Runge overlaps the claimed range; however, however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Runge further discloses a peelable adhesive adjacent to a major surface of the multilayer backing (Claim 1), which are construed to meet the claimed securing adhesive.
Runge further discloses that article has an elongation at break of at least 400% (paragraph [0066]), which overlaps the ranges recited by claims 1 and 7; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
As to the claimed plastic deformation and Fn Modulus, Runge discloses the same skin-core-skin layer structure, skin layer material, and core layer material recited by the claims. Furthermore, Runge discloses a core thickness to first skin thickness ratio that overlaps the claimed range. Therefore, the scope of Runge necessarily encompasses an embodiment that is substantially identical to that of the claims, and one of ordinary skill in the art would conclude that such an encompassed identical embodiment must have the same properties as the claimed extensible substrate (i.e., the same plastic deformation and Fn Modulus). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Runge further discloses that the backing includes a tab that is an extension of the backing material (paragraph [0040]). An extension of the backing material is construed to be on the perimeter portion of the extensible substrate.
Runge further discloses that the tab is non-tacky (paragraph [0040]) (i.e., the tab is free of tacky adhesive).
Runge discloses that the tab can be a detackified portion of the adhesive formed by applying a detackifying or deadening material or process to the adhesive to render it non-tacky (paragraph [0040]). A detackified or deadened adhesive is construed to meet the claimed limitation of a tab adhesive that is different from the adhesive layer that meets the claimed securing adhesive.
Runge does not explicitly disclose the adhesive articles having a second tab, the claimed positioning of said tabs, and that the adhesive articles are formed into a roll.
However, Hamerski discloses an elongated length of a double-sided stretch releasing adhesive tape that can be cut to a selected length with integral tabs for stretch removing the tape from a substrate (col. 1, lines 6-9). Hamerski further discloses that the tape lengths have at least one non-adhesive tab (col. 2, lines 26-29).
Reference is made to FIG. 11 of Hamerski, reproduced below:
PNG
media_image1.png
187
460
media_image1.png
Greyscale
FIG. 11 illustrates a stretch releasing tape article <220> having a longitudinally extending adhesive region <222> interposed between a pair of non-adhesive regions <224>, <226>, all of which are parallel to the longitudinal axis, wherein each of non-adhesive regions <224>, <226> form pull tabs <230>. Further, Hamerski discloses that said structure of FIG. 11 is formed into a roll (col. 8, lines 50-60).
Such a formation of the non-adhesive regions of Hamerski are considered the same as Applicant’s claim (i.e., that the first and the second tab are positioned at opposite perimeter portions which are orthogonal to the longitudinal unrolling direction. See Applicant’s FIG. 7, reproduced below.
PNG
media_image2.png
303
558
media_image2.png
Greyscale
Hamerski discloses that such a roll arrangement with a plurality of adhesive regions and non-adhesive regions allow for double-sided stretch-releasing adhesive tape article that can be cut into discrete strips having any desirable length, wherein each desired strip can be provided with a non-adhesive pull tab (col. 2, lines 15-20). Further, each non-adhesive pull tab region is on the perimeter of each discrete strip region.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to form the adhesive articles of Runge into the rolls having a plurality of non-adhesive tab sections taught by Hamerski. The motivation for doing so would have been that such a structure allows the user to choose a desirable length of tape for the intended application, while still allowing said length to have at least one non-adhesive tab to facilitate stretch release/peeling.
Therefore, it would have been obvious to combine Hamerski with Runge to obtain the invention as specified by the claims.
Regarding instant claim 6:
Runge further discloses that a second adhesive is adjacent to the second skin layer (paragraph [0046]).
Regarding instant claim 14:
Reference is made to FIG. 2 of Runge, reproduced below:
PNG
media_image3.png
390
560
media_image3.png
Greyscale
FIG. 2 of Runge illustrates an adhesive article <200> including an adhesive layer <240> adjacent to first skin layer <120>; further, Runge discloses a second adhesive layer (not shown) can be disposed adjacent to second skin layer <130> (paragraph [0046]).
Any second adhesive layer applied to FIG. 2 would necessarily be arranged in at least partially vertical overlapping relationship to the adhesive layer <240>.
Regarding instant claims 15 and 17:
Runge further discloses that mounting devices are used with the disclosed article (paragraph [0065]). The use of the article with a mounting device is construed to encompass an embodiment wherein either of the adhesive layers underlies the device.
Regarding instant claim 16:
Runge further discloses that mounting devices are used with the disclosed adhesive article (paragraph [0065]). Runge further discloses that the adhesive article includes a tab that can be grasped and pulled by a user to stretch and/or peel the tape during the removal process, so as to remove the tape from the object or substrate to which it has been affixed (paragraph [0040]). Therefore, said tab should necessarily extend beyond the perimeter of any device attached to the adhesive article such that the tab can be grasped by the user with ease.
Regarding instant claim 18:
Runge further discloses that the adhesive article comprises a non-tacky tab that is an extension of the backing material or a detackified version of the adhesive (paragraph [0040]). An extension of the backing and a detackified adhesive indicates an embodiment wherein the securing adhesive is on the entire major surface except at the tab.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered but are unpersuasive.
Applicant argues that Runge in view Hamerski teaches less than all the elements of the claims. Applicant traverses the Examiner’s assertion that any embodiment of Runge is “substantially identical” to the claimed invention because nothing in Runge teaches or suggests an extensible substrate with identical properties (e.g., a core-to-skin ratio of less than 2:1). Further, Applicant refers to arguments in the Amendment and Response dated January 22, 2025, wherein Applicant alleges that Runge teaches a non-recoverable strain % (i.e., plastic deformation) of much less than 50%.
Applicant’s arguments are unpersuasive. As mapped out above with regard to the claimed plastic deformation and Fn Modulus, Runge discloses the same skin-core-skin layer structure, skin layer material, and core layer material recited by the claims. Furthermore, Runge discloses a core thickness to first skin thickness ratio that overlaps the claimed range. Therefore, the scope of Runge necessarily encompasses an embodiment that is substantially identical to that of the claims, and one of ordinary skill in the art would conclude that such an encompassed identical embodiment must have the same properties as the claimed extensible substrate (i.e., the same plastic deformation and Fn Modulus).
As to the arguments in the Amendment and Response dated January 22, 2025, the response to said arguments in the Office action mailed May 12, 2025 is reproduced below:
Applicant’s argument is unpersuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP §2123(II).
In the instant case, those values shown in TABLE 6 are exemplary values. Similarly, the citation of paragraph [0035] of Runge state that on in “some embodiments” and “other embodiments” is non-recoverable strength minimized to allow for backing materials to be used with selectable impact on the resulting adhesive value. In other words, Runge teaches that non-recoverable strain can be minimized to suit certain intended uses of the adhesive structure, but does not clearly limit his invention to those having the minimal non-recoverable strain disclosed in paragraph [0036] and TABLE 6.
Further, the disclosed examples and preferred embodiments to do not teach away from the broader disclosure of Runge, which necessarily encompasses an embodiment that is substantially identical to the claimed structure because Runge discloses the same skin-core-skin layer structure, skin layer material, and core layer material recited by the claims and a core thickness to first skin thickness ratio that overlaps the claimed range. Such an identical embodiment encompassed Runge must have the same properties (e.g., the same plastic deformation).
Conclusion
THIS ACTION IS MADE FINAL. 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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAM/Examiner, Art Unit 1788 03/20/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788