DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/24/2025 has been entered.
Claims 1, 9 and 15 have been amended. Claims 1-15 are pending with claims 9-15 being withdrawn from further consideration.
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 Arguments
Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive.
The Applicant argues that the adhesive in HASEGAWA is adhered to the holding sheet (10), which the Examiner is equating to the current guide film. An object to be cut(6) is adhered to the adhesive and is then cut and removed from the adhesive layer. The adhesive is not removed or removable from the holding sheet. If the adhesive were removable from the holding sheet, one would not be able to reproducibly remove the object (6) from the adhesive layer, since the adhesive could be removed from either the holding sheet (10) or the object (6) when one attempts to remove the object from the adhesive. In the current article, the guide film is a liner film, meaning that the adhesive does not adhere strongly to the liner film. The Applicant argues that HASEGAWA teaches the holding sheet (10) includes a sheet and adhesive layer disposed on the sheet which is used to hold objects in the cutting apparatus while the object is cut, and then the cut objects are removed from the adhesive layer of the holding sheet. The instant article are adhesive films with a guide film to which an adhesive layer is disposed, the adhesive layer is adhere to an object and then the guild film is removed. The guide film is used to deliver the adhesive layer to an object, whereas in the holding sheet the adhesive layer is not removable from the sheet member 10, rather the article to be cut 6 is attached and removed from the adhesive layer.
The Examiner agrees that the holding sheet in HASEGAWA does not teach that the holding sheet is removed to leave the adhesive on the object; however, the arguments are not commensurate in scope with the claims. The Applicant’s arguments are towards the intended use of the adhesive layer and guide film; therefore, the previous answers to the intended use of the guide film and adhesive layer are still being held. The claims as written only require that the product (adhesive film) only needs to have a guide film and an adhesive layer. The claims as written only state that the guide film needs to be capable of doing the intended use of being removable. The Examiner has re-stated the previous answers to the arguments below. Furthermore, HASEGAWA also teaches a removable sheet (70) can be part of the holding sheet structure with the adhesive and it is removed from the adhesive portion [0066] and would be capable of performing the intended use as well. HASEGAWA teaches the removable sheets are made of polyethylene terephthalate (PET) [0064]. Therefore, HASEGAWA still teaches the newly amended claim 1 limitations as being taught by either the holding sheet (10) or by the removable sheet (70) in HASEGAWA.
The recitation in the claims that “wherein upon attachment of the adhesive layer to a material, the guide film is removable from the adhesive layer” 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 HASEGAWA discloses that the adhesive layer (adhesive portion (10a)) is formed of a transparent material having a predetermined adhesion and is configured to removably hold, various types of objects [0036] as presently claimed, it is clear that the adhesive layer of HASEGAWA would be capable of performing the intended use, i.e. being removable from the holding sheet, as presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention. HASEGAWA also teaches in another embodiment that a removable sheet (70) is attached to the adhesive layer and is removed from the adhesive layer during the process [0064-0065].
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasegawa et al. (U.S. PGPUB 2013/0104716), hereinafter HASEGAWA.
Regarding claim 1, HASEGAWA teaches: An adhesive film (HASEGAWA teaches an adhesive film [Abstract]) comprising: a guide film that is a liner film comprising polypropylene or PET (polyethylene terephthalate) (HASEGAWA teaches a holding sheet (10) that can be made of polypropylene [0035]. In another embodiment, HASEGAWA teaches a removable sheet (70) that is made of polyethylene terephthalate [0064], which the Examiner is interpreting as a liner film.) and wherein the guide film comprises a first area and a second area surrounding the first area (HASEGAWA teaches a holding sheet (10) comprising a first area (10a) and a second area (101, 102, 103, 104) surrounding the first area [Figs. 1, 3; 0023]. In another embodiment, HAWEGAWA teaches holding sheets (10, 40, 50 and 60) are provided with removable sheets which cover the surfaces of the adhesive portions (10a) [0064]. HASEGAWA also teaches the removable sheet (70) is formed larger than the adhesive portion (10a) of the holding sheet and is formed with holes which are similar to those of the holding sheet (40) [065; Fig. 8]. HASEGAWA teaches the removable sheet (70) has the elongate holes (31a, 31b, 32a, 32b, 33a, 33b, 34a and 34b) assuming positions corresponding to the positions where the adhesive portion (10a) is encompassed respectively [0065]. Therefore, the removable sheet (70) would have a first area where the adhesive portion is located (10a) and a second area (101, 102, 103, 104) surrounding the adhesive [Figs. 5A, 8; 0065].); and an adhesive layer with a circumference disposed on the first area (HASEGAWA teaches an adhesive layer (10a) with a circumference disposed to an inside area (first area) [0023; Figs. 1, 3; 0023]. HASEGAWA also teaches an adhesive portion (10a) with a circumference disposed inside the first area on the removable sheet (70) [Figs. 5A, 8; 0065]. In another embodiment, HASEGAWA teaches the removable sheet (70) has the elongate holes (31a, 31b, 32a, 32b, 33a, 33b, 34a and 34b) assuming positions corresponding to the positions where the adhesive portion (10a) is encompassed respectively [0065].), wherein the adhesive layer comprises a corner portion, and wherein the adhesive layer comprises a straight portion (HASEGAWA shows the adhesive layer (10a) has a corner portion and a straight portion [Figs. 3, 5A].), wherein the first area has a shape corresponding to a shape of the adhesive layer (HASEGAWA teaches the first area has a shape corresponding to a shape of the adhesive layer (10a) [Figs. 1, 3, 5A; 0023; 0038]), and wherein a cut-out portion is provided within a circumference of the second area and positioned adjacent to the circumference of the adhesive layer (HASEGAWA teaches a plurality of holes (31a, 31b, 32a, 32b, 33a, 33b, 34a, 34b) are provided within a circumference of the second areas (101, 102, 103, 104) and positioned adjacent to the circumference of the adhesive layer (10a) [Figs. 1, 3, 5A, 8; 0023; 0038; 0065]), wherein upon attachment of the adhesive layer to a material, the guide film is removable from the adhesive layer (MPEP 2111.02 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 HASEGAWA discloses that the adhesive layer (adhesive portion (10a)) is formed of a transparent material having a predetermined adhesion and is configured to removably hold, various types of objects [0036] as presently claimed, it is clear that the adhesive layer of HASEGAWA would be capable of performing the intended use, i.e. being removable from the holding sheet, as presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention. HASEGAWA also teaches the removable sheet (70) is removable from the adhesive portion (10a) [0066] and is capable of the intended use as well.).
Regarding claim 2, HASEGAWA teaches: wherein the cut-out portion is disposed on a position adjacent to the corner portion (HASEGAWA teaches the holes ((31a, 31b, 32a, 32b, 33a, 33b, 34a, 34b) are disposed on a position adjacent to the corner portion of the adhesive layer (10a) [Figs. 4A, 5A, 8; 0038; 0065]).
Regarding claim 4, HASEGAWA teaches: wherein the cut-out portion is extended along the corner portion and at least a portion of the straight portion (HASEGAWA teaches holes (61-67) are extended along the corner portion and at least a portion of the straight portion [Fig. 7; 0061]. HASEGAWA also teaches that the removable sheet may selectively be formed with holes similar to various types of holes shown in the first to fourth embodiments [0069].).
Regarding claim 7, HASEGAWA teaches: wherein the guide film comprises at least one of polypropylene (PP) and polyethylene terephthalate (PET) (HASEGAWA teaches the holding sheet (10) that the Examiner is interpreting as a guide film is made from polypropylene [0035]. HASEGAWA teaches the removable sheets (70) are made from polyethylene terephthalate (PET) [0064].).
Regarding claim 8, HASEGAWA teaches: wherein four or more corner portions are provided (HASEGAWA teaches four or more corner portions are provided in all sheets[Figs. 1, 3, 4A, 5A, 6A, 7, 8].).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa et al. (U.S. PGPUB 2013/0104716), hereinafter HASEGAWA.
Regarding claim 3, HASEGAWA teaches: wherein the corner portion has a curved shape (HASEGAWA teaches the holes of the holding sheet and removable sheets may assume any positions encompassing the adhesive portion or encompassing a predetermined area in the adhesive portion [0069; 0065]. HASEGAWA also teaches the adhesive sheet may be formed into any shape other than the rectangular shape [0036]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to have the corner portion have a curved shape, since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in art when the change in shape is not significant to the function of the combination. See In re Dailey et al., 149 USPQ 47; Eskimo Pie Corp. v. Levous et al., 3 USPQ 23 (It has been held that a mere change in shape without affecting the functioning of the part would have been within the level of ordinary skill in the art.).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa et al. (U.S. PGPUB 2013/0104716), hereinafter HASEGAWA, in view of Napier (U.S. 8,517,367), hereinafter NAPIER.
Regarding claim 3, HASEGAWA teaches all of the claimed limitations as stated above. In the alternative, in the same field of endeavor, adhesives, NAPIER teaches: wherein the corner portion has a curved shape (NAPIER shows the corner portion has a curved shape [Fig. 6]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to substitute the adhesive layer in HASEGAWA with the adhesive layer in NAPIER with the curved shape, in order for the purpose of matching the electronic devices face [NAPIER: Col. 1, lines 35-36].
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hasegawa et al. (U.S. PGPUB 2013/0104716), hereinafter HASEGAWA, in view of Runge et al. (U.S. PGPUB 2019/0002737), hereinafter RUNGE.
Regarding claim 5, HASEGAWA teaches all of the claimed limitations as stated above, but is silent as to: wherein the guide film has a thickness of 50 micrometers to 100 micrometers. In the same field of endeavor, adhesives, RUNGE teaches a backing layer (which Examiner is interpreting as film guide) has a thickness of about 2 mils to about 40 mils (50 µm to about 1016 µm) [0038], which meets the claimed range. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify HASEGAWA, by having a backing layer that has a thickness of about 2 mils to about 40 mils, as suggested by RUNGE, in order to be peeled off [0040].
Regarding claim 6, RUNGE further teaches: wherein the adhesive layer has a thickness of 100 micrometers to 200 micrometers (RUNGE teaches the adhesive layer has a thickness that is between 2 mil and about 40 mils [0062]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE BEHA whose telephone number is (571)272-2529. The examiner can normally be reached MONDAY - FRIDAY 9:00 A.M. - 5:00 P.M.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ABBAS RASHID can be reached on (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.B./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748