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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 25, 2025 has been entered.
Claims 1-4 and 6-11 are currently pending in the above identified application.
Claims 9-10 have been withdrawn from consideration as being directed towards non-elected invention.
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.
Claims 1-4, 6-8, and 11 are 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 1 recites the limitation “wherein the matrix polymer forms a self-supporting film in which epoxy resin and photoinitiator are embedded.” It is unclear if the reference epoxy resin and photoinitiator are the same or different from the previous claimed epoxy resin and photoinitiator, prese in 49.9-82 wt% and 0.1-3 wt%, respectively. For the purpose of prior art application, Examiner will interpret claim 1 as encompassing the epoxy resin and the photoinitiator being the same.
The remaining claims are rejected based on their dependency on rejected claims.
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.
Claims 1-4, 6-8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2020/0255699 to Klingeberg in view of US Pub. No. 2015/0013874 to Siebert.
Regarding claims 1-4, 6-8, and 11, Klingeberg teaches an adhesive tape for jacketing elongated items, particular cable sets or cable harness (claim 11) such as in motor vehicles, comprising a tapelike carrier (tape carrier) provided on at least one side with an adhesive layer consisting of a self-adhesive, pressure-sensitive adhesive (activated by pressure, claim 4) comprising a UV-curable composition comprising 15 to 50 parts by weight of a matrix polymer, 50 to 80 parts by weight of an epoxy resin, and 0.1 to 3 parts by weight of a photoinitiator, based on the total weight of the composition, with the matrix polymer forming a self-supporting film in which the epoxy resin and the photoinitiator are embedded (Klingeberg, abstract, para 0010-0018, 0043, 0059, claim 1), reading on the adhesive layer being a curable adhesive layer, specifically by UV radiation energy (claim 4). Klingeberg teaches a specific embodiment containing 30 weight fraction Levapren ® 600, 70 weight fractions Epikote ® 828, and 1 weight fraction triarylsulfonium hexafluoroantimonate (Id., para 0085), reading on 29.7% by weight a polymer matrix, 69.3% by weight epoxy, and 1% by weight a photoinitiator. Klingeberg teaches the carrier being woven (claim 3) or nonwoven (Id., para 0048, 0062) and teaches the carrier being a textile carrier having a basis weight between 30 g/m2 and 300 g/m2 (claim 7) (Id., par 0061). Klingeberg teaches a coat weight of the UV-curable composition (curable adhesive) being between 50 g/m2 and 500 g/m2 (claim 8) (Id., para 0064, 0078). Klingeberg teaches the tape being wrapped spirally around the elongated item such as a cable harness jacketed with the cured adhesive tape (Id., para 0079, 0082-0083). Klingeberg teaches the carrier comprising polyolefin (Id., para 0057).
Klingeberg does not teaches the adhesive tape being further provided on one side of the tape carrier with a release layer of carbamate and the carbamate exhibiting a release effect that is temperature-reversible and is deactivated by exposure to heat.
However, Siebert teaches an adhesive tape comprising a textile carrier and a curable adhesive applied to at least one side of the carrier to be passed in a helical line around the elongated material, such as cable looms or cable harness (Siebert, abstract, para 0001-0002, 0012-0016, 0059, 0175). Siebert teaches the adhesive tape being produced in the form of a rolled with a reverse-face varnish that is polyvinyl stearylcarbamate (ester of carbamic acid, claim 6) coating to exert a favorable influence over the unwinding properties (Id., para 0133), reading on the tape being further provided on one side of the tape like carrier with a release layer of carbamate, specific on the other side of the carrier from the curable adhesive (claim 2). Siebert teaches the curable adhesive being a reactive adhesive comprising epoxy (Id., para 0062).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the adhesive of Klingeberg, wherein the adhesive further comprising the polyvinyl stearylcarbamate coating of Siebert on the opposite face as the adhesive, motivated by the desire of using conventionally known materials predictably suitable for use in curable adhesive tapes used for cable loom and harness and by the desire to impart favorable unwinding properties.
Regarding claimed property of the carbamate exhibiting a release effect that is temperature-reversible and is deactivated by exposure to heat, in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art does not disclose this limitation explicitly, the claimed properties are deemed to be inherent to the structure in the prior art since Siebert teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Siebert teaches a layer of polyvinyl stearyl carbamate. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusions
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789
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