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 .
Drawings
The drawings filed 10/6/2022 are accepted.
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.
Claim(s) 1, 6, 7, 9-11, 13, 14, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2016-0138668 (herein referred to as KR) in view of (a) Blasius (US2021/0045943, (b) CA 2891687 (herein referred to as “CA”), (c) Maligie et al (US 6,440,566), (d) Beppu et al (US 2010/0255240) and (e) Bhushan et al (US 2006/0078724).
KR teaches an adhesive tape for a substrate, comprising: an adhesive layer attachable to a first major surface of the substrate; and a strippable liner in contact with the adhesive layer (abstract). With regards to claims 19 and 20, KR teaches a method of forming an adhesive article, comprising: providing an adhesive layer attachable to a first major surface of a substrate; and laminating a liner to the adhesive layer. KR additionally teaches a method of forming an adhesive article, comprising: providing a liner with an adhesive layer on a major surface of the liner; and laminating a substrate having a first and second major surface to the adhesive layer (See all).
KR does not teach that the strippable liner may comprise polybutylene succinate. However, Blasius teaches that polybutylene succinate polymer films may be used as release liners or protective strips for adhesives (0044; 0050). It would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize a polybutylene succinate film as the release liner taught in KR. The motivation for doing so would have been Blasius teaches such films are useful as release liners and have the additional benefit of being biodegradable.
KR is relied upon as above, but does not teach the polybutylene succinate should comprise about 0.5 to about 5 polymer weight percent of a plant-based wax. However, CA teaches that it is known release agents and waxes may be added to polybutylene succinate compositions in amounts of 0.1-2wt% (page 13, lines 27+) . Furthermore, Maligie teaches that hydrogenated castor oil is a commonly used release agent (col 1, lines 40+). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add 0.1-2wt% hydrogenated castor oil (i.e., castor wax) to the polybutylene succinate layer of the release film taught in KR. The motivation for doing so would have been that hydrogenated castor oil is known to be an effective release agent, and it is known release agents and waxes can be added to polybutylene succinate compositions in amounts of 0.1-2wt% to provide the polybutylene succinate with release properties.
KR also does not teach that the strippable liner is structured to include microstructures such as posts, prisms, raised rails, or raised linear rail segments. However, Beppu teaches a release film may have its release properties increased by having a surface roughness of 1-3um (0004). Furthermore, Bhushan teaches that the geometric roughness pattern on a sheet can take on many geometries, including a prisms (Figure 6b) and rails (Figure 5). Said profiles are herein understood to read on the claimed “microstructures” . Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to texture the surfaces with any number of preferred geometries, including prisms or rails (herein understood to read on micro-structures). The motivation for doing so would have been that Bhushan teaches a wide variety of pattens may be provided to roughened substrates based mainly on user preference to enhance release.
None of said cited references teach the strippable liner is peelable from the adhesive layer with a peel force of less than 100grams/inch. However, Beppu teaches the release properties of a surface may be optimized by controlling the roughness of the release sheet, CA teaches the releasability of a polybutylene succinate may be increased by adding a release agent or wax, and the skilled artisan would know how to select an adhesive layer composition in order to control peel strength. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the surface roughness of the release sheet, the amount of wax added to the polybutylene succinate composition, and the choice of adhesive in order to optimize the peel force to the desired level.
With regards to claim 6, KR teaches the adhesive may be a pressure sensitive adhesive ( see all).
With regards to claim 7, KR teaches adhesive may comprise layers 32a, 32b, and 32c, in which case layer 32c is understood to read on the claimed “primer layer as the first major surface” on the substrate.
With regards to claim 9, KR teaches the substrate should comprise a bioplastic (see all).
With regards to claim 10, KR teaches the substrate may comprise polylactic acid (See all).
With regards to claim 11, the secondary reference teaches the wax may comprise hydrogenated castor wax.
With regards to claim 13, Blasius teaches the liner may comprise greater than 90 or 95wt% biopolymer (0050).
With regards to claim 14, Blasius’s liner does not require any additional layers.
With regards to claims 17 and 18, KR teaches the article is a tape. Furthermore, said article is understood to be an adhesive transfer tape since the tape is applied to the substrate and the liner is removed.
Claim(s) 8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2016-0138668 (herein referred to as KR) in view of (a) Blasius (US2021/0045943, (b) CA 2891687 (herein referred to as “CA”), and (c) Maligie et al (US 6,440,566) (D) Beppu et al (US 2010/0255240) and (e) Bhushan et al (US 2006/0078724), as applied to claims above, and further in view of Yang (US 2021/0147673).
Said references are relied upon as above. Specifically, KR teaches the substrate may comprise a biodegradable film, but does not teach it may include polyurethane. However, Yang teaches a biodegradable packaging film comprising polyurethane which exhibit high barrier properties (abstract). Thus, it would have bene obvious to one of ordinary skill in the arti at the time the invention was filed to utilize the polyurethane containing biodegradable packaging composition of Yang as the packaging film of KR. The motivation for doing so would have been said film exhibits high barrier properties.
With regards to claim 12, Yang teaches the film may comprise an ink layer on a
second major surface of the substrate (0084).
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2016-0138668 (herein referred to as KR) in view in view of (a) Blasius (US2021/0045943, (b) CA 2891687 (herein referred to as “CA”), and (c) Maligie et al (US 6,440,566) (D) Beppu et al (US 2010/0255240) and (e) Bhushan et al (US 2006/0078724), as applied to claims above, and further in view of Loescher et al (US 2014/0332151) or Tach et al (US 2014/0144578).
Said references are relied upon as above, but do not teach the strippable film may further comprise a paper or polymer layer backing. However, Loescher and Tach each individually teaches release films typically comprise a paper or film backing on the opposite site of the release coating. Thus, it would have bene obvious to one of ordinary skill in the art at the time the invention was filed to apply a paper or film backing to the polybutylene succinate release film The motivation for doing so would have been such backing layers are typical for release coating films and provide structural integrity.
Response to Arguments
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive.
Rejections Under 35 U.S.C. § 103
With regards to the rejection of claims 1, 6-7, 9-11, 13-14, and 17-20 under 35 U.S.C. § 103 for being unpatentable over KR 10-2016-0138668 (herein referred to as KR) in view of (a) Blasius
(US2021/0045943, (b) CA 2891687 (herein referred to as "CA"), and (c) Maligie et al (US
6,440,566), applicant argues claims 1, 19 and 20 have been amended to include the limitations of claim 3 which was not rejected by this collection of references. Said argument is persuasive.
With regards to the rejection of claims 2-3 and 5 stand rejected under 35 U.S.C. § 103 for being unpatentable over KR 10-2016-0138668 (herein referred to as KR) in view of in view of in view of (a) Blasius (US2021/0045943, (b) CA 2891687 (herein referred to as "CA"), and (c) Maligie et al (US
6,440,566), as applied to claims above, and further in view of (D) Beppu et al (US 2010/0255240)
and (e) Bhushan et al (US 2006/0078724), applicant argues a combination of polybutylene succinate and a small amount of a wax (particularly a plant-based wax) can provide an acceptable or "premium" release performance while not requiring landfilling of the discarded liner. The benefit of the claimed invention as argued by applicant is noted; however, said benefit fails to patentably distinguish the claimed invention from the applied prior art as the prior art renders obvious the proposed combination of polybutylene succinate and a small amount of a wax (particularly a plant-based wax). The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants additionally argues claims 1, 19 and 20 have been amended to require a peel force of 100 g/in or less. There is no teaching in any of the cited references to such a release force, nor is there any reason provided in any of the teachings of the cited references to suggest being able to achieve such peel values. Said argument is noted but is not persuasive for the reasons detailed in the rejection above.
The Examiner has relied upon Beppu to teach a release film may have its release properties increased by having a surface roughness of 1-3um (0004). Furthermore, Bhushan teaches that the geometric roughness pattern on a sheet can take on many geometries, including a prisms (Figure 6b) and rails (Figure S). Said profiles are herein understood to read on the claimed "microstructures". Applicant argues, however, that the Beppu reference only refers to surface roughness features, not to a patterned micro-structured surface as is the case for amended claims 1, 19 and 20. Said argument is noted but is not persuasive as Beppu was not relied upon to teach the claimed patterned micro-structured surface. Rather, Beppu was relied upon to teach a release film may have its release properties increased by having a surface roughness of 1-3um (0004) and Bhushan was relied upon to teach that surface roughness may be provided on a sheet through geometric patterns, including a prisms (Figure 6b) and rails (Figure S). Applicant argues Bhushan is not teaching release liners or structured release liners, rather they are teaching biomimetic hydrophobic surfaces. Said argument is noted but is not persuasive. Specifically, the examiner maintains the Bhushan is relevant prior art because it is reasonably pertinent to the problem being solved-roughening of a substrate surface.
Applicant further argues that Bhushan indicates (see for example the abstract) that in order to biomimetically produce a hydrophobic surface one wishes to have a packing parameter of 50% up to 100% (P= 0.5-1.0). Applicant argues this is much higher than the surface area covered by micro-structures for a release liner. Said argument is noted but is not percussive as said argument is not commensurate ins cope with pending claims; the claims are not limited with regards to the packing parameter of the release film.
Additionally, Applicants point out that combining 6 very different references with very
different teachings to arrive at the currently claimed article is not prima facia obvious, rather it
would require extensive selection of materials and formation of a micro-structured surface from a
combination of 6 different sets of teachings. In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787