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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, in the reply filed on 11/10/2025 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/10/2025.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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).
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 flexural strength based on the degree of impact strength required of the floor making tape (10A) of the prior art’s 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.
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 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).
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 with the presently claimed flexural strength based on the degree of impact strength required of the protective sheet (10) of the prior art’s 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).
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 12/6/2025