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 .
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Savagian et al. (US 2011/0117336 A1) in view of Patki et al. (US 2022/0403669 A1).
Regarding claim(s) 1, Savagian teaches a floor marking tape (10A) consisting of, in order, translucent backing film (11) ((A) top layer), graphic layer (12) and pressure-sensitive adhesive (PSA) layer (13) ((B) adhesive layer) (para 0029, Fig. (1A)). The Examiner notes that, within the scope and definition of the presently disclosed invention, the PSA layer (13) is in contact (indirectly through graphic layer (12)) with the backing film (11) (see para 0037 presently disclosed). The thickness of the floor marking tape is 5-7 mils (total thickness less than 40 mils) (para 0011).
Savagian is silent to a polymer of the backing film (11) having a flexural strength of greater than 2,100 psi.
However, Savagian teaches that the backing film does not comprise plasticizer(s), but is formed from polymers having high hardness and modulus of elasticity (i.e., storage modulus (G’)) such as polyesters such as PET; polycarbonate; polyacrylate (i.e., a vinyl polymer); and the like (para 0034).
In addition, Patki teaches a floor element for forming a floor covering (title) comprising a decorative layer (2) and a support layer (3) (para 0120), which said support layer comprises, inter alia, polypropylene and PVC (para 0059) such as a rigid PVC having a flexural strength of 60 to 90 MPa, which is approximately 8,696 to 13,043 psi (greater than 2,100 psi) (para 0128). Patki teaches that the rigidity of a support layer provides improved impact strength (para 0062).
While Savagian/Patki teaches a flexural strength outside the presently claimed range, the Examiner respectfully submits that the Savagian/Patki invention does not teach away from the presently claimed flexural strength range, nor does Savagian/Patki dissuade one skilled in the art from employing flexural strengths below the disclosed lower limit of 60 MPa (i.e., 8696 psi). Indeed, Patki instructs one skilled in the art that the flexural strength provides a layer with absorption of impact energy towards improving the impact strength (para 0062 of Patki).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present to provide the backing film (11) of Savagian/Patki with the presently claimed flexural strength range based on the degree of impact strength required of the floor making tape (10A) of the prior arts’ intended use as in the present invention.
Regarding claims 3-4, as noted in the rejection of current claim 1 above, the backing film (11) comprises, inter alia, polycarbonate.
Regarding claim 5, as noted in the rejection of current claim 1 above, the backing film (11) of Savagian/Patki demonstrates a flexural strength of 60 to 90 MPa, which is approximately 8,696 to 13,043 psi. The backing film (11) of Savagian does not comprises PVC.
Regarding claim 6, Savagian teaches that the backing film (11) has a modulus of elasticity (i.e., storage modulus (G’)) of at least 200,000 (i.e., at least ~ 1380 MPa) (para 0035), which overlaps that presently claimed (1,000 to 2,000 MPa).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present to provide the backing film (11) of Savagian with the presently claimed elastic modulus based on the stiffness of the backing film (11) required of the prior art’s intended use as in the present invention.
Regarding claim 7, while Savagian does not specify that the PSA layer (13) has a uniform thickness extending from one edge to the opposing edge of the floor marking tape (10A) (vertical lines of Fig. (1A)), providing the PSA layer on the surface of layer (12) with a unform thickness would have been an obvious choice to the skilled artisan based on the intended use (e.g., on a level surface of an adherend to which the PSA layer is bonded).
Regarding claim 8, as noted in the rejection of current claim 1 above, the floor marking tape (10A) contains graphic layer (12) interim (non-surface layer) to the backing film (11) and the PSA layer (13), and comprises inks or colorants (pigments) (para 0026, 0038).
Regarding claim 10, as noted in the rejection of current claim 1 above, the backing film (11) is translucent.
Claim(s) 1-2 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayata et al. (US 2014/0158300 A1) in view of Patki et al. (US 2022/0403669 A1).
Regarding claim 1, Hayata teaches a protective sheet (10) (i.e., a protective sheet for glass etching) comprising substrate (1) (top layer (A)) and a PSA layer (2) (adhesive layer (B)) (para 0072), which said substrate is, inter alia, polyvinyl chloride (PVC) (para 0124-0127) and has a thickness of 10 to 1000 mm (i.e., ~ 0.4 to 40 mils) commensurate with the desired/required flexural strength towards the prevention of wrinkling, floating or twisting (para 0128). The PSA layer of Hayata has a thickness of 1 to 100 mm towards a balance of adhesive strength and sealability (para 0119), which in tandem with the thickness of the substrate (1), provides an overall thickness for the disclosed sheet (10) of 11 to 1100 mm (i.e., ~ 0.43 to 43 mils), which overlaps that for the presently claimed total floor marking tape thickness.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present to provide the protective sheet (10) with the presently claimed thickness (i.e., less than 40 mil) towards the prevention of wrinkling, floating or twisting, and based on the balance of adhesive strength and sealability required of the prior art’s intended use as in the present invention.
The Examiner notes that while the protective sheet (10) of Hayata is disclosed for use with a glass substrate, the layered structure of the protective sheet (10) is identical to that presently claimed, and thus the protective sheet (10) of Hayata would provide identical functionality (i.e. floor marking tape) as presently claimed.
The Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
Hayata does not specify that the substrate (1) has a flexural strength of greater than 2,100 to 8,000 psi.
However, Patki teaches a support layer (3) (para 0120) comprising, inter alia, PVC (para 0059) such as a rigid PVC having a flexural strength of 60 to 90 MPa, which is approximately 8,696 to 13,043 psi (greater than 2,100 psi) (para 0128). Patki teaches that the rigidity of a support layer provides improved impact strength (para 0062).
While Hayata/Patki teaches a flexural strength outside the presently claimed range, the Examiner respectfully submits that the Hayata/Patki invention does not teach away from the presently claimed flexural strength range, nor does Hayata/Patki dissuade one skilled in the art from employing flexural strengths below the disclosed lower limit of 60 MPa (i.e., 8696 psi). Indeed, Patki instructs one skilled in the art that the flexural strength provides a layer with absorption of impact energy towards improving the impact strength (para 0062 of Patki).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present to provide the substrate (1) of Hayata/Patki with the presently claimed flexural strength range based on the degree of impact strength required of the protective sheet (10) of the prior arts’ intended use as in the present invention.
Regarding claim 2, as noted above in the rejection of current claim 1, Hayata renders obvious the presently claimed thickness for the top layer (A) (i.e., 15 to 18 mils).
Regarding claim 9, as noted above in the rejection of current claim 1, Hayata renders obvious the presently claimed thickness for the recited floor making tape (i.e., 15 to 40 mils).
Response to Arguments
Applicant's arguments, see the claim amendments and the remarks filed 4/7/2026, with respect to the rejections of claims 1, 3-8 and 10 over Savagian et al. in view of Patki et al. under 35 U.S.C. 103 and claims 1-2 and 9 over Hayata et al. in view of Patki et al. under 35 U.S.C. 103 as set forth in paragraphs 6-7 of the action mailed 12/11/2025, have been fully considered but they are not persuasive.
The Examiner acknowledges the amendments to claim 1 to further limit the flexural strength of the top layer (1) to 2,100 to 8,000 psi. However, the Examiner also respectfully directs the Applicant’s attention to the updated prior art rejections set forth, wherein it is noted that Savagian/Patki and Hayata/Patki teaches or render obvious all the limitations of the presently claimed invention; and which is a fair and complete rebuttal to the Applicant’s argument against the current rejections over the Savagian/Patki and Hayata/Patki inventions.
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A 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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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 5/4/2026
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