Detailed Office Action
Applicant’s arguments and amendments dated 9/6/2025 have been entered and fully considered. Claims 1 is amended. New claims 21-24 are added. Claims 1-24 remain pending.
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 the Arguments
Arguments are similar to those responded to in the non-final rejection of 6/26/2025. They were further responded to in the interview summary of 5/15/2025, advisory action of 5/16/2025, and final rejection of 12/5/2024. The Examiner will not repeat those arguments. Additionally, evidentiary document of XIAOLING, provided by the Applicant on 8/9/2022, clearly indicates that the use of UV is common knowledge and lists its advantages. Furthermore, LAYDECKER does not explicitly forbid use of UV crosslinking in its one-step method that is an improvement to the prior art two-step method. The Examiner submits that the preponderance of evidence indicates that incorporating the application of a UV radiation from backside in the method of the primary art of KATNER is obvious and within the skill of an artisan as detailed in the non-final office action of 6/26/2025 (see pages 4-5).
The Examiner notes that removing the limitation regarding applying the silicone gel and including it at the end of claim 1 does not denote order in performing the method steps.
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.
Claim 23 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 23 recites the limitation "the silicone layer" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the Examiner replaces this limitation with “the silicone gel” that is recited in claim 1.
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 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.
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 1-22 are rejected under 35 U.S.C. 103 as being unpatentable over KANTNER (US-2010/0267302), hereinafter KANTNER, in view of LEYDECKER (US 6,284,328), hereinafter LEYDECKER, as evidenced by XIAOLING (Common Knowledge 1 – of record), hereinafter XIAOLING. Note that the italicized text below are the instant claims.
Regarding claim 1, KANTNER discloses A method for producing a silicone-gel-coated adhesive layer structure {[abstract], [0009]}, the method comprising:
applying an intermediate layer material to at least one side of a porous backing material {[0010] note acrylic copolymer is the intermediate layer material} ,
wherein the intermediate layer material comprises acrylic acid copolymer {[0010], [0029] note acrylic acid};
applying silicone gel to the intermediate layer {[0010]}.
KANTNER, however, is silent on crosslinking the intermediate layer material using UV and through the porous backing material so that an enhanced bond can be formed.
In the same field of endeavor that is related to adhesive tapes, LEYDECKER discloses which can be crosslinked by UV radiation {[abstract], [C1, L30] note use of UV for crosslinking, [C1, L18] note use of acrylates},
and crosslinking the intermediate layer material using UV radiation through the porous backing material forming an intermediate layer, wherein the intermediate layer defines an enhanced bond between the porous backing material and the intermediate layer {[C2, L61-65] , [C3, L7-10], the Examiner notes that since same method steps are implemented an enhanced bond is formed}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of LEYDECKER in the method of KANTNER and have crosslinked the acrylic acid intermediate layer of KANTNER using UV radiation and through the porous backing material.
As disclosed by LEYDECKER, the advantage of the crosslinking through the porous backing layer is that it ensures complete crosslinking and no migration of components to the open side of the backing {[C3, L7-10]}.
As for using UV for crosslinking, and as evidenced by XIAOLING, it is common knowledge that photo-crosslinking commonly done by UV has several advantages such as room temperature curing, fast/simple curing and only addition of a photo-initiator is needed. Therefore, it would have been advantageous to crosslink the intermediate layer of KANTNER using UV method that LEYDECKER describes above.
Regarding claim 2, KANTNER discloses wherein the acrylic acid copolymer is applied using transfer coating, wherein transfer coating comprises: applying the intermediate layer material to a substrate, and transferring the intermediate layer material from the substrate to the porous backing material {[0020] note the release liner is the substrate that performs the function of transferring}.
Regarding claim 3, KANTNER discloses wherein the intermediate layer material is in a solvent, and the solvent is at least partially evaporated after application to the substrate {[0020] note that the lamination method is preferred when acrylic copolymer is transferred to a solvent-sensitive material, thus indicating that some of the solvent is evaporated}.
In the alternative, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have partially evaporated some of the solvent prior to the application of the acrylic copolymer, since KANTNER, as discussed above, teaches that the material that accepts this copolymer is solvent sensitive.
Regarding claim 4 limitation of “wherein the intermediate layer is applied in a crosslinked form to the porous backing material and is then further crosslinked”, KATNER teaches that the transfer of the intermediate layer from substrate to the porous backing layer can be done when this layer is dried {see claim 2 and [0020]}.
Combination of KATNER and LAYDECKER, however, is silent on UV crosslinking this layer and then transferring it to the porous backing layer.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have UV crosslinked the intermediate layer of the combination above while sitting on the substrate and then transferring it to the porous backing layer.
As discussed above, KATNER teaches drying this layer before transfer, thus teaching that this layer needs to be solidified before transferring or, in another word, the transfer while it is not solidified or in a liquid state is not preferrable. Therefore, and in the combination of KATNER and LAYDECKER, an artisan would have recognized the preference of solidifying or crosslinking by UV radiation prior to transferring to the porous backing material.
Regarding claim 5, KANTNER discloses wherein the intermediate layer material is crosslinked prior to applying the silicone gel {[0032]-[0036] note that modified KANTNER crosslinks the water-based acrylic copolymer instead of drying}.
Regarding claim 6, KANTNER discloses wherein the porous backing material is selected from the group consisting of non-woven materials, fabrics, knitted fabrics, foam materials and films {[0015]}.
Regarding claim 7, KANTNER discloses wherein the porous backing material is selected from the group consisting of natural material, viscose, rayon, cellulose, polyethylene, polypropylene, polyamide, polyester, polyacetate, polyurethane or a mixture thereof {[0016]}.
Regarding claim 8, KANTNER discloses wherein the acrylic acid copolymer is produced from monomers of the group consisting of acrylic acid, butyl acrylate, 2-ethylhexyl acrylate, 2-hydroxyethyl acrylate, dioctyl acrylate, methyl acrylate, ethyl acrylate, tert-butyl acrylate and mixtures thereof {[0018]}.
Regarding claims 9-12, KANTNER discloses wherein the intermediate layer material is applied to the porous backing material in a quantity of from 10 to 300 g/m2 (claim 9), wherein the intermediate layer material is applied to the porous backing material in a quantity of from 10 to 200 g/m2 (claim 10), wherein the intermediate layer material is applied to the porous backing material in a quantity of from 10 to 100 g/m2 (claim 11), wherein the intermediate layer material is applied to the porous backing material in a quantity of 33 g/m2 (claim 12) {[0021]}.
Regarding the limitation of claim 12, KANTNER discloses a quantity of 20-45 g/m2 that encompasses the claimed quantity. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range {see MPEP 2144.05 (I)}.
Regarding claims 13-16, KANTNER discloses wherein one side of the porous backing material is covered 30 to 100% with the intermediate layer material (claim 13), wherein one side of the porous backing material is covered 50 to 100% with the intermediate layer material (claim 14), wherein one side of the porous backing material is covered 70 to 100% with the intermediate layer material (claim 15), wherein one side of the porous backing material is covered 80 to 100% with the intermediate layer material (claim 16) {[0018]}.
Regarding the limitation of claim 16, KANTNER discloses a coverage of greater than 75% that encompasses the claimed coverage. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range {see MPEP 2144.05 (I)}.
Regarding claims 17-20, KANTNER discloses wherein the adhesive silicone gel layer is applied to the intermediate layer in a quantity of from 10 to 500 g/m2 (claim 17), wherein the adhesive silicone gel layer is applied to the intermediate layer in a quantity of from 50 to 200 g/m2 (claim 18), wherein the adhesive silicone gel layer is applied to the intermediate layer in a quantity of from 80 to 120 g/m2 (claim 19), wherein the adhesive silicone gel layer is applied to the intermediate layer in a quantity of 100 g/m2 (claim 20) {[0025]}.
Regarding the limitations of claims 18-20, KANTNER discloses a quantity of 40-120 g/m2 that partially overlaps (claims 18-19) and encompasses (claim 20) the claimed quantities. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps the claimed ranges {see MPEP 2144.05 (I)}.
Regarding claims 21-22, KANTNER discloses wherein the silicone gel comprises a silicone base material and a catalyst to crosslink the silicone base material (claim 21), wherein the catalyst comprises platinum {[0023], [claim 12]}.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over KANTNER, in view of LEYDECKER, as evidenced by XIAOLING, as applied to claim 1 above, and further in view of MATSUSHIMA (US-2021/0060912), hereinafter MATSUSHIMA.
Regarding claim 23, the combination above discloses all the limitations of claim 1 as discussed above. This combination, however, is silent on the intensity of the UV radiation needed to crosslink the intermediate layer.
In the same field of endeavor that is related to crosslinking acrylic monomer to form a layer, MATSUSHIMA discloses wherein the intermediate layer is crosslinked using UV radiation having an intensity of about 265 mJ/cm2 {[0060] note that 1mW/cm2 for five minutes is 300 mJ/cm2}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of MATSUSHIMA in the method of combination above and used the disclosed UV intensity for crosslinking the acrylic layer. The Examiner submits that motivation exists for an artisan to look to prior art in analogous field to determine this intensity since the combination above lacks such teaching.
The Examiner notes that the prior art intensity of 300 mJ/cm2 is close to the claimed value. A prima facie case of obviousness is established when the claimed value and the prior art value do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties. Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783, MPEP 2131.03 (III).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over KANTNER, in view of LEYDECKER, as evidenced by XIAOLING, as applied to claim 1 above, and further in view of GANTNER (WO-2008057155-A1), hereinafter GANTNER.
Regarding claim 24, the combination above discloses all the limitations of claim 1 as discussed above. This combination, however, is silent on the crosslinking temperature of silicone gel.
In the same field of endeavor that is related to silicone adhesive gel, GANTNER discloses wherein the method further comprises crosslinking the silicone layer at a temperature of about 150°C {[0040]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of MATSUSHIMA in the method of combination above and used the disclosed UV intensity for crosslinking the acrylic layer. The Examiner submits that motivation exists for an artisan to look to prior art in analogous field to determine this intensity since the combination above lacks such teaching. Furthermore, and as disclosed by GANTNER, by increasing the temperature the reaction can be expedited and thus resulting in shortening the process time {[0040]}.
The Examiner notes that the prior art upper range temperature of 140 °C is close to the claimed value. A prima facie case of obviousness is established when the claimed value and the prior art value do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties. Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783, MPEP 2131.03 (III).
Furthermore, and as discussed above, an artisan would have been motivated that have increased the temperature to 150 °C to have further accelerated the crosslinking process.
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 S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 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, Abbas Rashid can be reached at 571-270-7457. 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.
/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748