DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 26, 2026 has been entered.
Claim Objections
Claim 17 is objected to because of the following informalities: in light of the amendment to Claim 1, it is suggested Claim 17 be amended to recite “a mass ratio of the elastomer (A) to the polyolefin resin (B)”.
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, 3 – 12, and 14 – 19 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 because:
Upon further consideration of the claims, it is noted that there is a lack of antecedent basis for “the” glass transition temperature (Tg1) recited in line 2 of Claim 1 and Claim 3. It is unclear to which of the previously recited at least one glass transition temperature (Tg1) this recitation refers. For the purposes of examination, Claims 1 and 3 will be interpreted as referring to the at least one glass transition temperature (Tg1) in line 2 of each claim.
As Claims 4 – 12 and 14 – 19 all ultimately depend on Claim 1, they incorporate the subject matter thereof and are also therefore rejected under this statute.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 15 and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 sets forth the foam sheet comprises a polyolefin and Claim 16 sets forth the foam sheet further comprises an elastomer. However, independent Claim 1 now sets forth the foam sheet comprises an elastomer (A) and a polyolefin resin (B). Claim 15 and 16 then no longer further limit Claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4 – 12, 14 – 16, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by WO 2019/235529 to Hamada et al. (hereinafter Hamada). For the purposes of examination, citations for Hamada are taken from the machine translation of the document filed by applicant on March 29, 2023, except where expressly noted as being obtained from a machine translation of the table in the reference obtained from Google Translate in August 2026. A copy of this machine translation is attached to this Office action.
Regarding Claims 1, 4, 6, 9, 11, 12, and 14 – 16. In Example 5, Hamada teaches a foam sheet comprising an elastomer (DYNARON® 6200P) and a polyolefin (KERNEL® KF283) ([0070] and [0074]). KERNEL® KF283 is not set forth by Hamada or in the instant application as containing a 4-methyl-1-pentene unit and therefore is reasonably expected to be free of such a unit.
Hamada is silent with respect to the glass transition temperature(s), peak value of the loss tangent at at least one glass transition temperature (Tg1), 25% compressive strength, strength at break, gel fraction, water vapor transmission rate (WVTR), relative dielectric constant, and elongation at break of the foam sheet. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Hamada teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Hamada further provides one of the same species of commercially available elastomer (DYNARON® 6200P) and one of the same species of commercially available polyolefin resin (DYNARON® 6200P) which are set forth as suitable in the instant specification. Therefore, the claimed effects and physical properties - i.e. a foam sheet having at least one Tg1, a peak value of loss tangent at least one Tg1, a 25% compressive strength, a Tg2, strength at break, gel fraction, WVTR, relative dielectric constant, and elongation at break in the instantly claimed ranges - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 5. Hamada teaches the foam sheet of Claim 1 has a thickness of 0.422 mm [0074].
Regarding Claim 7. Hamada teaches the foam sheet of Claim 1 has a closed cell ratio of 98% (see Example 5 in machine translation of table).
Regarding Claim 8. Hamada teaches the foam sheet of Claim 1 has an average cell diameter of 5 to 500 microns [0007].
Regarding Claim 10. Hamada teaches the foam sheet of Claim 1 has an apparent density of 0.05 to 0.70 g/cm3 [0074].
Regarding Claim 18. Hamada teaches an adhesive tape comprising the foam sheet of Claim 1 and an adhesive material provide on at least one surface of the foam sheet [0058] – [0059]. As said adhesive tape comprises the same materials and is used in the same applications as the adhesive tape disclosed in the instant application, it would be the Office’s position that the adhesive tape of Hamada is reasonably considered to correspond to a pressure-sensitive adhesive tape in which the adhesive material is a pressure-sensitive adhesive material.
Regarding Claim 19. Hamada teaches a roll composed of the the foam sheet of Claim 1 [0056].
Claims 2 and 13 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by WO 2019/235529 to Hamada et al. (hereinafter Hamada). For the purposes of examination, citations for Hamada are taken from the machine translation of the document filed by applicant on March 29, 2023.
Regarding Claims 2 and 13. In Example 5, Hamada teaches a foam sheet comprising an elastomer (DYNARON® 6200P) and a polyolefin (KERNEL® KF283) ([0070] and [0074]). KERNEL® KF283 is not set forth by Hamada or in the instant application as containing a 4-methyl-1-pentene unit and therefore is reasonably expected to be free of such a unit.
Hamada is silent with respect to the glass transition temperature(s), peak value of the loss tangent, 25% compressive strength of the foam sheet, and water vapor transmission rate of the foam sheet. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Hamada teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Hamada further provides one of the same species of commercially available elastomer (DYNARON® 6200P) and one of the same species of commercially available polyolefin resin (DYNARON® 6200P) which are set forth as suitable in the instant specification. Therefore, the claimed effects and physical properties - i.e. a foam sheet having a Tg1, a peak value of loss tangent, a 25% compressive strength, water vapor transmission rate, and Tg2 in the instantly claimed ranges - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
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 17 is rejected under 35 U.S.C. 103 as being obvious over WO 2019/235529 to Hamada et al. (hereinafter Hamada), as applied to Claim 1 above. For the purposes of examination, citations for Hamada are taken from the machine translation of the document filed by applicant on March 29, 2023, except where expressly noted as being obtained from a machine translation of the table in the reference obtained from Google Translate in August 2026.
Regarding Claim 17. Hamada teaches the foam sheet of Claim 1. The elastomer is provided in an amount of 100 parts by weight and the polyolefin resin is provided in an amount of 10 parts by weight in Example 5 (see machine translation of table), corresponding to a mass ratio of elastomer to polyolefin resin of roughly 91:9.
The Office recognizes that this ratio lies just outside the instantly claimed range of 90:10 to 15:85. However, it is the Office’s position that the values are close enough that one of ordinary skill in the art would have expected similar properties. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Claim 3 is rejected under 35 U.S.C. 103 as being obvious over WO 2019/235529 to Hamada et al. (hereinafter Hamada). For the purposes of examination, citations for Hamada are taken from the machine translation of the document filed by applicant on March 29, 2023, except where expressly noted as being obtained from a machine translation of the table in the reference obtained from Google Translate in August 2026.
Regarding Claim 3. In Example 5, Hamada teaches a foam sheet comprising an elastomer (DYNARON® 6200P) and a polyolefin (KERNEL® KF283) ([0070] and [0074]). KERNEL® KF283 is not set forth by Hamada or in the instant application as containing a 4-methyl-1-pentene unit and therefore is reasonably expected to be free of such a unit.
Using the amounts of all ingredients reported for Example 5 in the table of the reference, a total content of the elastomer and polyolefin can be calculated as roughly 95 mass percent of the foam sheet.
Using the amounts of elastomer and polyolefin reported for Example 5 in the table of the reference, the amount of polyolefin resin in the foam sheet can be calculated to be roughly 9 mass percent based on the total resin amount of the foam sheet. The Office recognizes this amount of polyolefin resin lies outside the instantly claimed range of 50 mass percent or more. However, in the disclosure, Hamada teaches amounts of elastomer as low as 50% mass percent based on the total resin amount of the foam sheet may be provided [0039]. Consequently, it is the Office’s position that, before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to reduce the amount of elastomer in Example 5 to an amount as low as 50 mass percent based on the total resin amount of the foam sheet. The foam sheet would then comprise as high as 50 mass percent polyolefin resin based on the total resin amount of the foam sheet. The motivation would have been that Hamada teaches amounts of elastomer as low as 50 mass percent based on the total resin amount of the foam sheet are suitable for adjusting the sheet elongation rate and recovery rate to desirable ranges [0039].
Hamada is silent with respect to the glass transition temperature(s), peak value of the loss tangent at at least one glass transition temperature (Tg1), 25% compressive strength of the foam sheet, and relative dielectric constant of the foam sheet. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Hamada, when modified in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Hamada further provides one of the same species of commercially available elastomer (DYNARON® 6200P) and one of the same species of commercially available polyolefin resin (DYNARON® 6200P) which are set forth as suitable in the instant specification. Therefore, the claimed effects and physical properties - i.e. a foam sheet having at least one Tg1, a peak value of loss tangent at at least one Tg1, a 25% compressive strength, and a relative dielectric constant in the instantly claimed ranges - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Response to Arguments
Applicant’s arguments, filed June 26, 2026, with respect to the rejections of the instant claims under 35 U.S.C. 103 in view of WO 2013/191222 to Wakayama et al. have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made in view of WO 2019/235529 to Hamada et al.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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