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 on May 21,2026 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has been timely paid, the finality of the previous Office action mailed on April 17, 2026 (“previous OA”) has been withdrawn pursuant to 37 CFR 1.114. Applicant’s amendment filed on May 21, 2026 (“amendment”) has been entered.
Support for the claims 1 and 23 amendment can be found e.g. in Figure 1 and paragraph 0022 of the published application.
In view of the amendment, the rejection of claim 21 under 35 USC 112(b) as set forth in the previous OA is withdrawn.
In view of the amendment, the rejection of claims 1-3, 6, 8, and 9 under 35 USC 102(a)(1) as being anticipated by Ho et al. (US 5468532), as set forth in the previous OA is withdrawn.
In view of the amendment, the rejection of claims 1-3, 6, 8, 9, and 21 under 35 USC 102/103 over Reafler (US 6673428 B1) is withdrawn.
In view of the amendment, new rejections under 35 USC 112(a) and 35 USC 112(b) are introduced.
In view of the amendment, new grounds of prior art rejections are introduced.
Claim Objections
Claim 22 objected to because of the following informalities:
At lines 1 and 2, insert “plastic” before “substrate layer” in order to provide consistency with the recitation “plastic substrate layer” in parent claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 22 recites “the substrate layer including a hard coat forming at least one of the first or second surfaces of the substrate layer”. The specification fails to provide support for the aforementioned recitation. The specification discloses that the plastic substrate can include a hard coat layer on one or both surfaces of the plastic substrate layer (e.g. positioned on the top surface and/or the bottom surface). See paragraph 0014 of the published application. Therefore, while there is support to claim a hard coat layer is present on the first and/or second surfaces of the plastic substrate layer, there is no support to claim that the first and/or second surfaces of the plastic substrate layer is formed by a hard coat.
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.
Claim 22 is 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 22 recites “the substrate layer including a hard coat forming at least one of the first or second surfaces of the substrate layer”. The recitation “hard coat forming” is ambiguous. It is unclear whether applicant intends to claim at least one of the first or second surfaces of the plastic substrate layer is hard (“hard coat forming”) or a hard coat layer is present on the first and/or the second surfaces of the plastic substrate.
For purpose of examination, the claim is interpreted as a hard coat layer is present on the first and/or second surfaces of the plastic substrate layer. See 0014 of the published application.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3, 6, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yokoyama et al. (US 20050163995 A1).
As to claim 1, Yokoyama teaches a pressure-sensitive adhesive (PSA) tape (industrial tape) comprising a substrate 1 comprising a supporting substrate 12 (plastic substrate), and a layer of pressure sensitive adhesive 2 directly on at least one side of the substrate e.g. PSA layer 2 on the bottom surface of the supporting substrate 12 (Figure 2, 0025-0031,and 0035). Thus, Yokoyama teaches an adhesive layer applied to a second surface of the plastic substrate layer opposite to the first surface, wherein the adhesive layer is a bottommost layer of the industrial tape. Further, Yokoyama teaches that the substrate 1 includes colored layers 11 (Figure 2 and 0035). Moreover, Yokoyama teaches that the PSA layer 2 located on the B layer side is colored black (0057, Figure 2). Thus, the black colored PSA layer 2 and the colored layers 11 together equate to claimed paint layer applied directly on a first surface of the plastic substrate layer, wherein the paint layer is a topmost layer of the industrial tape. The examiner submits that “pant layer” as recited in the claim encompasses one or more layers.
Moreover, as to claims 1 and 6, Yokoyama teaches that the preferred material of the supporting substrate 12 is polyethylene terephthalate (0040).
As to claim 3, Yokoyama discloses supporting substrate 12 between the paint layer (2/11) and the adhesive layer (2) in the thickness direction of the tape (Figure 2).
As to claim 8, Yokoyama discloses PSA (0031).
As to claim 9, Yokoyama discloses colored layers include polyurethane (0042).
Claim Rejections - 35 USC § 102/103
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.
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, 3, 6, 8-10, and 22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Murata (US 20020039651 A1), and as evidenced by Imataki et al. (US 4965153).
As to claim 1, Murata discloses an adhesive film for display (industrial tape) comprising at least three layers which are a transparent substrate 11 (plastic substrate layer), a colored optical functional layer 12 (paint layer), and a colored adhesive layer 13 (0009, Figure 1, 0081).
Further, as to claims 1 and 6, the transparent substrate of Murata is formed of polycarbonate, polyethylene, and polyethylene terephthalate (0019-0020).
Further, as to claim 1, the colored optical functional layer 12 of Murata is directly on a first surface of the plastic substrate layer 11 and it is a topmost layer of the adhesive film (Figure 1 and 0081). Further, the adhesive layer 13 of Murata is applied to a second surface of the plastic substrate layer opposite the first surface (Figure 1 and 0081).
Further, as to the claim 1 limitation of the adhesive layer is a bottommost layer of the industrial tape, in Figure 1, Murata discloses a separation film 14 further provided on the surface of the adhesive layer 13 (0081). However, one of ordinary skill in the art would recognize that the separation film in Murata’s adhesive film is temporary and would be removed before the adhesive film is applied to the display. Murata discloses that the adhesive film comprises at least three layers (transparent substrate, optical functional layer, and an adhesive layer) (0009). As such, the separation film is not required in the adhesive film of Murata. Therefore, it is clear that the adhesive layer 13 of Murata’s adhesive film is inherently a bottommost layer of the adhesive film. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrive at the adhesive layer as the bottommost layer in Murata’s adhesive film by removal of the separation film, motivated by the desire to adhere the adhesive film to a display and practice the invention of Murata.
As to claim 3, as shown in Figure 1, the plastic substrate layer 11 of Murata is between the colored optical functional layer12 and the adhesive layer 13.
As to claim 8, no difference is seen between the claimed PSA and the adhesive of Murata (0047). Further, a person having ordinary skill in the art would recognize that acrylic adhesive disclosed by Murata (0048-0051) is known pressure sensitive adhesive.
As to claim 9, Murata discloses anti-reflection layer as functional layer, which contains urethane resin (0025-0028).
As to claim 10, Murata discloses that the pigment or dye is mixed in a transparent substrate (0015). Further, as examples of pigments, Murata discloses anthraquinone and dioxazine (0016). The examiner submits that anthraquinone and dioxazine are known reflective materials as evidenced by column 3, lines 60-65 of Imataki (see “As the material for constituting the light-reflective layer, it may include organic, reflective materials, for example dyes such as anthraquinone derivatives…dioxazine compounds and derivatives thereof…”).
As to claim 22, Murata discloses an adhesive film including a transparent substrate 21, a hard coat layer 22 on one surface of the substrate layer 21 (Figure 2 and 0082).
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 23 is rejected under 35 U.S.C. 103 as being unpatentable over Murata (US 20020039651 A1) and as evidenced by Imataki et al. (US 4965153) as applied to claim 1 above, and further in view of Imono et al. (US 20030219592 A1).
Murata discloses an industrial tape but silent as to disclosing a roll of an industrial tape having a core.
Imono discloses a protective tape for optical member (industrial tape) (abstract). Further, Imono discloses protective tape wound up on a core (0053).
It would have been obvious to form a roll of an industrial tape as claimed, motivated by the desire to store the tape in a rolled form so that it can be easily shipped.
Response to Arguments
Applicant’s arguments in the amendment 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
June 16, 2026
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