RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claims 1-19, filed on 29 January 2026, have been entered in the above-identified application. Claim 20 has been added. Claims 1-20 are pending.
WITHDRAWN REJECTIONS
The objections to claims 2-19 made of record on page 7, paragraph 8 of the office action mailed 29 September 2025 have been withdrawn due to Applicant’s amendments in the response filed 29 January 2026.
The 35 U.S.C. § 112(b) and (d) rejections of claims 1-19, made of record on pages 8-12, paragraphs 10-12 of the office action mailed 29 September 2025 have been withdrawn due to Applicant’s amendments in the response filed 29 January 2026.
NEW AND REPEATED 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-11 and 13-20 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of copending Application No. 18/812,453. The claims filed on 22 August 2024 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, claim 13 of the ‘453 application recites a self-adhesive product redetachable by extensive stretching adhesive comprising a layer of a pressure-sensitive adhesive compound of claim 1. Claim 1 recites elastomer component a) which is present in the amount of 28-58 wt. %. The fraction of elastomer component is based on the total weight of the pressure-sensitive adhesive. This component has requirements i), ii), iii), and iv) which meet the limitations of a) i), ii), iii) and iv) as claimed. Note that the presently claimed limitation in requirement iii) that the ethylene fraction in the B blocks is optionally at least 50 wt. % is optional and thus not required by the claim.
Claim 1 also recites b) a tackifier resin component, c) an optional plasticizer component, and e) optionally further adjuvants, reading on claimed component d).
Claim 13 also recites a temporary carrier material, reading on the claimed at least one ply of a temporary carrier material.
Furthermore, Claim 16 also recites a self-adhesive product redetachable by extensive stretching comprising the adhesive components a), b), c), and d) as claimed and a temporary carrier material.
Regarding Claim 2, claim 10 of the ‘453 application recites that the plasticizer component is present in the amount of 2-20% by weight.
Regarding claim 3, claim 14 of the ‘453 application recites this limitation.
Regarding claim 4, claim 3 of the ‘453 application recites that the elastomer component comprises 35% to 58% by weight of the pressure-sensitive adhesive compound, which overlaps the claimed range.
Regarding claim 5, claim 4 of the ‘453 application recites this limitation.
Regarding claim 6, claim 1 of the ‘453 application recites in part a) iv) that the elastomer component contains at least one kind of a hydrogenated diblock copolymer having an A’B’ structure in which A’ is polyvinylaromatic and B’ is ethylene and butylene or ethylene and propylene. This reads on the claimed polyvinylaromatic-polydiene diblock copolymer when the polydiene is fully hydrogenated.
Regarding claim 7, claim 7 of the ‘453 application recites this limitation.
Regarding claim 8, claim 8 of the ‘453 application recites this limitation.
Regarding claim 9, claim 9 of the ‘453 application recites this limitation.
Regarding claim 10, claim 10 of the ‘453 application recites that the plasticizer component is present in the amount of 2-20% by weight which is within the claimed range of not more than 30 wt. %.
Regarding claim 11, claim 11 of the ‘453 application recites this limitation.
Regarding claim 13, claim 12 of the ‘453 application recites this limitation.
Regarding claim 14, claims 14 and 15 of the ‘453 application recites at least one ply of an extensible permanent carrier material. Claim 20 further recites that this film is made of polyolefins, polyurethanes polyesterpolyurethanes, polyetherpolyurethanes, polycaprolactonepolyurethanes, or rubber-based materials.
Regarding claim 15, claim 16 of the ‘453 application recites that the self-adhesive product redetachable by extensive stretching is a single layer, double-sided self-adhesive tape consisting of a single layer of the pressure-sensitive adhesive compound.
Regarding claim 16, claim 17 of the ‘453 application recites that the self-adhesive product redetachable by extensive stretching consists of a single layer permanent carrier which is a polyolefin with an elongation at break of 100%, and each side of the carrier bears a respective applied layer of the pressure-sensitive adhesive compound.
Regarding claim 17, claim 17 of the ‘453 application recites that the self-adhesive product redetachable by extensive stretching consists of a single layer permanent carrier with an elongation at break of 100%, and each side of the carrier bears a respective applied layer of the pressure-sensitive adhesive compound. Claim 18 of the ‘453 application also recites a single layer polyurethane carrier.
Regarding claim 18, claim 20 of the ‘453 application recites an ethylene or propylene used as a permanent carrier material which includes the adhesive layer.
Regarding claim 19, claim 19 of the ‘453 application recites an adhesively bonded assembly comprising a substrate in contact with a layer of the adhesive compound described in claims 1 and 13. As the claim recites that the product is adhesively bonded, this reads on the claimed method of bonding a substrate by applying the self-adhesive product to the substrate.
Regarding claim 20, claim 13 of the ‘453 application recites a self-adhesive product redetachable by extensive stretching adhesive comprising a layer of a pressure-sensitive adhesive compound of claim 1. Claim 1 recites elastomer component a) which is present in the amount of 28-58 wt. %. The fraction of elastomer component is based on the total weight of the pressure-sensitive adhesive. This component has requirements i), ii), iii), and iv) which meet the limitations of a) i), ii), iii) and iv) as claimed. Note that the presently claimed limitation in requirement iii) that the ethylene fraction in the B blocks is optionally at least 50 wt. % is optional and thus not required by the claim.
Claim 1 also recites b) a tackifier resin component, c) an optional plasticizer component, and e) optionally further adjuvants, reading on claimed component d).
Claim 2 recites that the amount of plasticizer component is from 2-25 wt. %, which overlaps the claimed range of 2 to 30 wt. %.
Claim 13 also recites a temporary carrier material, reading on the claimed at least one ply of a temporary carrier material.
Furthermore, Claim 16 also recites a self-adhesive product redetachable by extensive stretching comprising the adhesive components a), b), c), and d) as claimed and a temporary carrier material.
Claim Rejections - 35 USC § 103
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Osterwinter (U.S. Pat. 10,351,740 B2).
Regarding claim 1, Osterwinter discloses an adhesive strip redetachable by extensive stretching comprising at least one layer of adhesive and at least one carrier. See abstract and col. 6, lines 38-47. The adhesive layer A includes an elastomer part (a1), a tackifying resin part (a2), an optional plasticizer part (a3), and optionally further additives (a4), see col. 7, lines 58-61. The tackifying resin, optional plasticizer, and optional additives read on components b), c) and d) as claimed. The adhesive strip also includes a temporary carrier release liner, see col. 21, lines 29-36.
The elastomer part (a1) of Osterwinter is present in the amount of 40-55 wt. % of the overall adhesive composition, see col. 8, lines 1-4. This part includes at least 90 wt. % of polyvinylaromatic-polydiene block copolymers and have a polyvinylaromatic content of from 12-35 wt. %, preferably from 20-32 wt. %, see col. 7, line 61 through col. 8, line 1. This copolymer has an A-B, or A-B-A, or (A-B)n, or (A-B)nX, or (A-B-A)nX construction in which the A blocks represent the vinylaromatic and the B blocks represent the diene portion, n is the integer 2, and X is derived from the coupling reagent or initiator. See col. 10, lines 19-35. The diene portion may be partly or fully hydrogenated, see claim 13. Suitable example materials are described in the table at col. 24-25 and include KRATON D1118 which is a linear SBS block polymer having a polystyrene fraction of 33 % and a molecular weight of 150,000 g/mol, KRATON D1116 which is a radial SBS polymer with a polystyrene fraction of 23% and a molecular weight of 300,000 g/mol, and others as shown. These materials read on the elastomer component meeting requirements i) and iii) as claimed.
While these example polymers are not described to be fully hydrogenated, Osterwinter teaches that the B blocks of the polymers may be partly or fully hydrogenated, see claim 13. Thus it would have been obvious to fully hydrogenate or substantially fully hydrogenate the polydiene blocks of the block copolymers to arrive at the claimed invention.
Inventive example 6.1 shown in col. 31 teaches adhesive composition A1 which combines 18 wt. % of KRATON D1116 polymer, 30 wt. % of KRATON D1118 polymer, PICCOLYTE tackyfing resin, WINGTACK 10 plasticizing resin, and IRGANOX 1010 additive. See raw materials at col. 24-25 for further description. The D1118 polymer is present in the amount of 62.5 wt. % based on the total of D1118 and D1116 and thus reads on the claimed elastomer component a) i). The D1116 polymer reads on the hydrogenated diblock copolymer of component a) iv). Although in the example, this is present in the amount of 37.5 wt. % based on the total of D1116 and D1118, Osterwinter also teaches suitable ranges of these components at col. 16, lines 5-29 which allows for amounts of these two copolymers within the ranges specified for components a) i) and a) iv).
Accordingly, Osterwinter renders the claimed invention obvious.
Regarding claim 2, Osterwinter teaches using up to 5 wt. % of plasticizing resins based on the overall adhesive composition, see col. 12, lines 59-61.
Regarding claim 3, Osterwinter teaches that the adhesive structure includes a temporary carrier release liner, see col. 21, lines 29-36, and also teaches including at least one ply of an extensible carrier layer B which is arranged between two adhesive layers. See col. 16, lines 30-37. This reads on the claimed extensible permanent carrier material.
Regarding claim 4, the amount of vinylaromatic block copolymers in the adhesive is preferably from 40-55 wt.% of the overall adhesive composition. See col. 15, lines 32-40. This reads on the fraction of elastomer component as claimed.
Regarding claim 5, Osterwinter teaches that the polyvinylaromatic fraction of the elastomers is preferably from 20-32 wt. %, see col. 7, line 62 through col. 8, line 1. This is within the claimed range. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claims 6 and 7, Osterwinter teaches that suitable elastomer parts (a1) having an A-B, or A-B-A, or (A-B)n, or (A-B)nX, or (A-B-A)nX construction in which the A blocks represent the vinylaromatic and the B blocks represent the diene portion, n is the integer 2, and X is derived from the coupling reagent or initiator. See col. 10, lines 23-35. The block copolymer preferably includes diblocks A-B, see col. 10, lines 53-58. The amount of vinylaromatic diblock copolymers in the adhesive composition is preferably from 10-35 wt. %, see col. 11, line 58 through col. 12, line 4.
As for the molecular weight of this material Osterwinter teaches that the carrier layer may include a polyvinylaromatic-polydiene block copolymer with a weight-average molecular mass of at least 85,000 g/mol, see col. 18, lines 50-64. Osterwinter also teaches that the same polymers can be used for adhesive components (a1) and/or carrier components (b1), see raw materials list in col. 24-25. Thus, it is apparent that a polyvinylaromatic-polydiene block copolymer with a molecular weight of less than 100,000 g/mol can also be included in the adhesive layer.
Regarding claim 8, Osterwinter teaches using from 42.5% to 59.5 wt. % of the tackifying resins in the adhesive composition, see col. 15, lines 50-58. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claim 9, Osterwinter teaches suitable tackifier resins at col. 12, lines 40-52. These include hydrogenated and non-hydrogenated polymers of dicyclopentadiene and the other tackifiers specified in the claim. In the examples, PICCOLYTE A115 tackifier resin is used which is a poly-α-terpene, see col. 25, lines 8-10.
Regarding claim 10, Osterwinter teaches using up to 5 wt. % of plasticizing resins based on the overall adhesive composition, see col. 12, lines 59-61.
Regarding claim 11, Osterwinter teaches that a suitable further additive may be ethylene-propylene rubber which reads on an ethylene/propylene copolymer, see col. 13, lines 24-37. Although this is described to be a further additive, such a copolymer also reads on being a plasticizer resin.
Regarding claims 12 and 13, the Examiner notes that the plasticizer component is recited to be an optional component of claim 1 and thus is not required. Claims 12 and 13 recite further details of an optional component while not requiring its presence in the self-adhesive product.
Regarding claim 14, Osterwinter teaches that the carrier layer may include rubber or polyolefins, see col. 19, lines 24-60. Synthetic rubbers are also described at col. 17, lines 5-9.
Regarding claim 15, Osterwinter teaches that the adhesive structure includes a temporary carrier release liner, see col. 21, lines 29-36, and also teaches including at least one ply of an extensible carrier layer B which is arranged between two adhesive layers. See col. 16, lines 30-37. This reads on the claimed multi-layer, double-sidedly self-adhesive tape having a permanent carrier in between two layers of the pressure-sensitive adhesive and in combination with a temporary carrier material.
Regarding claim 16, Osterwinter teaches that the adhesive structure includes a temporary carrier release liner, see col. 21, lines 29-36, and also teaches including at least one ply of an extensible carrier layer B which is arranged between two adhesive layers. See col. 16, lines 30-37 and col. 21, lines 50-54. The same adhesive composition is applied to each side, meeting the optional limitation that the adhesives are identical. The carrier layer B has an elongation at break of at least 800%, see col. 21, lines 43-49. This layer is also a single-layer intermediate permanent carrier and has a resilience of more than 50% as optionally claimed. The limitation that the carrier is optionally containing polyolefin is considered optional and thus not required by the claim. However, Osterwinter also teaches that the carrier layer may include polyolefins, see col. 19, lines 24-60.
Regarding claim 17, Osterwinter teaches that the adhesive structure includes a temporary carrier release liner, see col. 21, lines 29-36, and also teaches including at least one ply of an extensible carrier layer B which is arranged between two adhesive layers. See col. 16, lines 30-37 and col. 21, lines 50-54. The same adhesive composition is applied to each side, meeting the optional limitation that the adhesives are identical. The carrier layer B has an elongation at break of at least 800%, see col. 21, lines 43-49. This layer is also a single-layer intermediate permanent carrier and has a resilience of more than 50% as optionally claimed. The limitation that the carrier is optionally composed of polyurethane is considered optional and thus not required by the claim.
Regarding claim 18, Osterwinter teaches a carrier layer B having the adhesive layer A applied on each side. See col. 16, lines 30-37 and col. 21, lines 50-54. Osterwinter also teaches that the carrier layer may include polyolefins such as ethylene-propylene copolymers and ethylene-propylene rubber, see col. 19, lines 24-60. This reads on the claimed substrate.
Regarding claim 19, Osterwinter teaches a method of forming the adhesive material including applying a layer of pressure-sensitive adhesive to a carrier, see col. 24, lines 29-40. The carrier reads on the claimed substrate.
Regarding claim 20, Osterwinter discloses an adhesive strip redetachable by extensive stretching comprising at least one layer of adhesive and at least one carrier. See abstract and col. 6, lines 38-47. The adhesive layer A includes an elastomer part (a1), a tackifying resin part (a2), an optional plasticizer part (a3), and optionally further additives (a4), see col. 7, lines 58-61. The tackifying resin, optional plasticizer, and optional additives read on components b), c) and d) as claimed. The adhesive strip also includes a temporary carrier release liner, see col. 21, lines 29-36.
The elastomer part (a1) of Osterwinter is present in the amount of 40-55 wt. % of the overall adhesive composition, see col. 8, lines 1-4. This part includes at least 90 wt. % of polyvinylaromatic-polydiene block copolymers and have a polyvinylaromatic content of from 12-35 wt. %, preferably from 20-32 wt. %, see col. 7, line 61 through col. 8, line 1. This copolymer has an A-B, or A-B-A, or (A-B)n, or (A-B)nX, or (A-B-A)nX construction in which the A blocks represent the vinylaromatic and the B blocks represent the diene portion, n is the integer 2, and X is derived from the coupling reagent or initiator. See col. 10, lines 19-35. The diene portion may be partly or fully hydrogenated, see claim 13. Suitable example materials are described in the table at col. 24-25 and include KRATON D1118 which is a linear SBS block polymer having a polystyrene fraction of 33 % and a molecular weight of 150,000 g/mol, KRATON D1116 which is a radial SBS polymer with a polystyrene fraction of 23% and a molecular weight of 300,000 g/mol, and others as shown. These materials read on the elastomer component meeting requirements i) and iii) as claimed.
While these example polymers are not described to be fully hydrogenated, Osterwinter teaches that the B blocks of the polymers may be partly or fully hydrogenated, see claim 13. Thus it would have been obvious to fully hydrogenate or substantially fully hydrogenate the polydiene blocks of the block copolymers to arrive at the claimed invention.
Osterwinter teaches using up to 5 wt. % of plasticizing resins based on the overall adhesive composition, see col. 12, lines 59-61. This reads on component c).
Inventive example 6.1 shown in col. 31 teaches adhesive composition A1 which combines 18 wt. % of KRATON D1116 polymer, 30 wt. % of KRATON D1118 polymer, PICCOLYTE tackifying resin, WINGTACK 10 plasticizing resin, and IRGANOX 1010 additive. See raw materials at col. 24-25 for further description. The D1118 polymer is present in the amount of 62.5 wt. % based on the total of D1118 and D1116 and thus reads on the claimed elastomer component a) i). The D1116 polymer reads on the hydrogenated diblock copolymer of component a) iv). Although in the example, this is present in the amount of 37.5 wt. % based on the total of D1116 and D1118, Osterwinter also teaches suitable ranges of these components at col. 16, lines 5-29 which allows for amounts of these two copolymers within the ranges specified for components a) i) and a) iv).
The PICCOLYTE tackifying resin reads on component b) and WINGTACK 10 reads on component c).
Osterwinter teaches that the adhesive structure includes a temporary carrier release liner, see col. 21, lines 29-36
Accordingly, Osterwinter renders the claimed invention obvious.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 29 January 2026 regarding the 35 U.S.C. § 103 rejection of claims 1-19 of record over Osterwinter (U.S. Pat. 10,351,740 B2) have been carefully considered but are deemed unpersuasive.
Applicant argues that Osterwinter does not teach, suggest, or disclose the hydrogenated block copolymers are recited in independent claim 1. See p. 9 of the remarks.
The Examiner is not persuaded. Osterwinter does read on the claimed self-adhesive product as described in detail in the rejection above. In particular, the diene portion of the elastomer component may be partly or fully hydrogenated, see claim 13. The rejection of claim 1 set forth above maps the claimed limitations to their disclosure in the reference.
Applicant argues that the comparative examples set forth on pp. 32-37 of the present specification show that the formulations expressly mentioned in the prior art do not solve the task currently given, namely to achieve the required high thermal shear strength (SAFT, Test IV) and low tearing rate (Test V).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., high thermal shear strength and low tearing rate) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Accordingly, this 35 U.S.C. § 103 rejection is maintained.
Applicant’s comments on p. 8 of the response filed 29 January 2026 regarding the provisional double patenting rejections of record are noted. Applicant requests reconsideration and withdrawal of the double patenting rejection.
The Examiner is note persuaded. MPEP § 804(I)(B) notes that a provisional double patenting rejection should continue to be made by the Examiner in each application as long as there are conflicting claims in more than one application unless the provisional double patenting rejection is the only rejection remaining. Accordingly, the provisional double patenting rejections are repeated herein.
Conclusion
All claims are rejected.
THIS ACTION IS MADE FINAL. 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 extension fee 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 Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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