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 .
Claims 1, 4-15 are pending.
Claims 1, 4-7, 11, 12, 14, 15 are under examination on the merits.
Claims 1, 6, 7 are amended.
Claims 2, 3 are newly canceled.
No claims are newly added.
Election/Restrictions
Applicant's election with traverse of Group I claims 1, 4-7, 11-15 with species 1) acrylates and 2) component of electronic device in the telephonic election of 8/7/25 is acknowledged. The traversal is on the ground(s) that the search burden of the claims as a whole is not serious. This is not found persuasive because the claimed subject matter extends over several different disciplines- for example, the adhesive is claimed in electronic devices or motor vehicles- which are not coextensive.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The rejection in the previous action of claim 7 under 35 U.S.C. 112(b) is withdrawn in view of applicant’s amendment to the claim to replace “tapes” with “tape”.
Claim Rejections - 35 USC § 102
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 rejection in the previous action of claims 1, 4 under 35 U.S.C. 102(a)(1) as being anticipated by JP H07145354 by Fujii et al is withdrawn in view of applicant’s amendment to claim 1. Fuji does not describe vinylcaprolactam.
The rejection in the previous action of claims 1, 4, 5, 11 under 35 U.S.C. 102(a)(1) as being anticipated by EP 3567086 represented herein by US 20210155827 by Blazejewski et al is withdrawn in view of applicant’s amendment to claim 1. Blazejewski does not describe vinylcaprolactam.
Claims 1, 4, 5, 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20130303646 by Niwa et al.
Niwa describes a pressure-sensitive adhesive sheet.
Regarding claim 1, Niwa describes an acrylic PSA (pressure sensitive adhesive) layer on a metal (reads on “primer” as it is in direct contact with metal) (paragraph 3) which may be removed (reads on partable; paragraph 152). Niwa’s exemplary PSA comprises a thermally expandable microsphere physical blowing agent (paragraph 156) and a copolymer of 2-ethylhexyl acrylate, isobornyl acrylate – both acrylic esters- and N-vinylcaprolactam (paragraph 155).
Regarding claim 4, Niwa’s composition does not require acrylic acid (paragraph 155).
Regarding claim 5, Niwa exemplifies a thermally expandable microsphere physical blowing agent (paragraph 156).
Regarding claim 11, Niwa describes thermally expandable microspheres (e.g. paragraph 156).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 6, 7, 12, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 20130303646 by Niwa et al.
Niwa is described above.
Regarding claim 6, Niwa describes a first component, a metal layer, and a pressure sensitive adhesive (primer) on the metal layer (paragraph 11). Niwa describes a physical blowing agent in the form of a thermally expandable microsphere (paragraph 27, 28). The instant phrase “being applied from a liquid phase” is product by process language. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Niwa meets the “being applied from a liquid phase” because he describes the product, a pressure sensitive adhesive layer. Futhermore, Niwa describes applying as a liquid, via solvent (paragraph 52). Niwa describes a layer thickness as low as 10 microns (paragraph 124, 147). Niwa describes a further PSA layer which meets the “adhesive tape” instant phrase (paragraph 140). Alternatively, in an embodiment a release film is connected to the PSA which is also connected to a substrate (paragraph 183, 185) and is somewhat adhesive (paragraph 141).
Regarding overlapping ranges, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Niwa describes values overlapping with the claimed range.
It would be obvious to one of ordinary skill to choose the options cited above because Niwa describes them as embodiments.
Regarding claim 7, Niwa describes multiple layers on the layer which reads on instant “primer” (paragraph 140).
Regarding claim 12, Niwa describes optionally additional pressure sensitive adhesive tape (paragraph 140).
Regarding claim 14 and 15, Niwa describes the layered structure as part of an electronic device (paragraph 153). It would be obvious to one of ordinary skill to choose to put the layered structure in an electronic device because Niwa describes it as a possibility.
Response to Arguments
Applicant’s arguments on p.7-8 of Remarks submitted 12/2/25 have been considered and are persuasive to overcome the previously set forth rejections. The previously applied art does not describe the specific monomers newly claimed. However, new art has been found to obviate the amended claims and is applied in rejection above.
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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766