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 claim 20, filed on 29 July 2026, have been entered in the above-identified application. Claims 1-20 are pending.
New grounds of rejection are presented in this Office action which were not necessitated by applicant's amendment. Accordingly, this action is Non-Final.
WITHDRAWN REJECTIONS
The 35 U.S.C. § 103 rejection of claims 1-20 as over Osterwinter (U.S. Pat. 10,351,740 B2), made of record on page 8, paragraph 7 of the office action mailed 21 May 2026 has been withdrawn due to Applicant’s arguments in the response filed 29 July 2026. In particular, applicant correctly notes that the combination of elastomer component resins in Osterwinter fails to meet limitation a) iv as specified in the claims as the elastomers in the reference contain more than 35 wt. % of hydrogenated diblock copolymer (based on the elastomer component).
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 13-19 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 26 June 2026 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. Claim 6 recites that the elastomer component contains up to 35 wt. % of the hydrogenated diblock copolymer. 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.
Claim Rejections - 35 USC § 103
Claims 1, 3-9 and 11-19, are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021-188051 A) and in light of the evidence provided by Holguin et al. (US 6558790 B1). A machine translation of JP ‘051 was relied upon for analysis.
Regarding claim 1, Uchida teaches a PSA tape comprising a substrate and a PSA layer laminated thereon, said PSA layer comprises a tackifier resin and a base polymer comprising a hydrogenated block copolymer (elastomer component) comprising at least a styrene monomer block and a conjugated butadiene block (para 0008-0011) such as, inter alia, a styrene-ethylene-butylene-styrene (SEBS) block copolymer (para 0012). The disclosed (SEBS) block copolymer teaches a hydrogenated polyvinylaromatic-polydiene block copolymer having an ABA structure, wherein the styrene blocks provide A = polyvinylaromatic and wherein ethylene-butylene provides B = ethylene and butylene (fully hydrogenated polydiene block), reading on limitations a) ii and a) iii.
The Examiner notes that, while Uchida teaches that the molecular weight of the base polymer is provided in weight-average molecular weight (Mw) rather than the presently claimed peak molecular weight, Uchida does teach that the block copolymer has an Mw of 50,000 to 600,000 towards compatibility of the block copolymer with other components (para 0017). It is established in the art that the molecular weight of compounds is selected based on the balance of coatability, cohesion and tack required of the compounds contribution to the composition comprising the copolymer as evidenced via Holguin (see column 4, lines 20-24). This meets the molecular weight limitation of a) i.
The styrene content of the (SEBS) block copolymer is 30% by weight or less, which overlaps that presently claimed in a) i (at least 18 % by weight), towards a balance of cohesive strength, hardness and high adhesion (para 0013). Uchida also teaches that the block copolymer comprises a diblock copolymer (elastomer component) comprising the styrene monomer block and the conjugated butadiene block (at least one hydrogenated diblock copolymer, A’B’ structure, A’ = A and B’ = B) in an amount of 10 to 90 % by weight, which overlaps that presently claimed for a) iv (up to 35 % by weight), towards increased adhesiveness and maintaining cohesive strength (para 0016). Thus, Uchida provides the (SEBS) block copolymer in a converse amount of 10 to 90 % by weight, which overlaps that presently claimed in a) i (70 to 90 % by weight).
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).
These meet the limitations a) i, ii, iii, and iv as claimed.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the (SEBS) block copolymer and the diblock copolymer in the presently claimed proportions, and to provide said (SEBS) block copolymer with the presently claimed polyvinylaromatic and ethylene fraction towards the PSA of Uchida demonstrating a balance of increased adhesiveness, cohesive strength, hardness and alkaline resistance as in the present invention.
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to select the presently claimed peak molecular weight of the (SEPS) block copolymer identical to that presently claimed, based on the balance of coatability, cohesion and tack required of the prior art’s intended application, and towards compatibility with the other PSA components, as in the present invention.
Regarding component b), Uchida teaches that the PSA layer comprises 0-5 parts by weight or less of tackifiers (T2) and (T3) and 3 to 80 parts by weight of tackifier resin (T1) per 100 parts by weight of the base polymer. (para 0022, 0027). This allows for 100 parts of base polymer (elastomer) out of 185 total parts of resin, or at least 54.1 wt. % of elastomer, overlapping the claimed amount of at least 28 wt. % and at most 58 wt. % of the elastomer component a).
Regarding components c) and d), these are specified as optional and thus are not required by the claim. However, paragraph (0028) describes the use of plasticizers and other additives.
Further, given that Uchida teaches the presently claimed PSA layer which includes identical components to those presently claimed, and in the presently claimed proportions, it is reasonable to conclude that the PSA layer would be redetachable by extensive stretching.
Uchida teaches forming the PSA layer on a temporary carrier material, reading on a release film as claimed, see paragraph (0040).
Regarding claims 3 and 14, Uchida teaches that the adhesive layer is laminated on at least one surface of a substrate such as a polyolefin film sheet, see paragraph (0030), reading on an extensible permanent carrier material.
Regarding claim 4, as noted above, Uchida teaches that the PSA layer comprises 0-5 parts by weight or less of tackifiers (T2) and (T3) and 3 to 80 parts by weight of tackifier resin (T1) per 100 parts by weight of the base polymer. (para 0022, 0027). This allows for 100 parts of base polymer (elastomer) out of 185 total parts of resin, or at least 54.1 wt. % of elastomer, overlapping the claimed amount of at least 28 wt. % and at most 58 wt. % of the elastomer component a).
Regarding claim 5, Uchida teaches that the styrene content of the (SEBS) block copolymer is 30% by weight or less, which overlaps that presently claimed (18 to 35 % by weight).
Regarding claim 6, Uchida also teaches that the block copolymer comprises a diblock copolymer (elastomer component) comprising the styrene monomer block and the conjugated butadiene block (meeting at least one hydrogenated diblock copolymer, A’B’ structure, A’ = A and B’ = B), see (para 0016).
Regarding claim 7, as noted above, Uchida teaches that the block copolymer comprises the diblock copolymer in an amount of 10 to 90 % by weight, which overlaps that presently claimed (up to 35 % by weight), and that the block copolymers have an Mw of 50,000 to 600,000, which overlaps that presently claimed (< 100 000 g/mol). See paragraphs (0016, 0017).
Regarding claim 8, as noted above, Uchida teaches that the PSA layer comprises 0-5 parts by weight or less of tackifiers (T2) and (T3) and 3 to 80 parts by weight of tackifier resin (T1) per 100 parts by weight of the base polymer, which provides the tackifiers (T1), (T2) and (T3) in a range of approximately 3 to 46 % by weight and which overlaps that presently claimed (28 to 55% by weight).
Regarding claim 9, Uchida teaches that the tackifier resin is selected from, inter alia, hydrogenated terpene resins (para 0023).
Regarding claims 11-13, current claim 1, from which the present claims depend directly or indirectly, recites the plasticizer component as optional, and thus the prior art need not teach the presently recited plasticizer component or their Mw values to teach or render obvious the presently claimed invention.
Regarding claim 15, Uchida teaches that the adhesive layer is laminated on at least one surface of a substrate, thus allowing for double-sided tapes with a permanent resin film or foam substrate carrier layer, see paragraph (0030). The adhesive sheet includes release films over the adhesive layers, see paragraph (0040).
Regarding claims 16, 17, and 18, Uchida teaches that the substrate is, inter alia, polyethylene foam or a polyurethane foam (single-layer permanent carrier) and the PSA layer laminated on both sides of the substrate (para 0030), which said polyolefin and polyurethane foams are identical to those presently disclosed for providing the presently claimed elongation at break of at least 100 %.
Regarding claim 19, Uchida teaches applying the adhesive to a substrate such as a metal layer, see paragraph (0041) or a circuit board (paragraph 0042), reading on the claimed method.
Claims 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021-188051 A to Uchida et al. in further view of Osterwinter et al. (US 20180148618 A1), and in light of the evidence provided via Kanner et al. (US 7070051 B2).
Regarding claims 2 and 10, as noted above, Uchida teaches that the PSA composition may comprise plasticizers, but does not disclose the presently claimed proportions.
However, Osterwinter teaches PSAs comprising a polyvinylaromatic-polydiene block copolymer and a plasticizing resin part (a3) (para 0066) in an amount of at most 5 wt% (para 0073), which overlaps that presently claimed (at least 2 and not more than 30 % by weight, not more than 30 % by weight).
The Examiner notes that it is established in the art that plasticizers are employed in PSA compositions towards reducing the viscosity to provide more complete substrate wetting (see Kanner at column 8, line 58 to column 9, line 19 therein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA composition of Uchida with the presently claimed proportions of the plasticizer based on the viscosity of the PSA composition required of the prior art’s intended application as in the present invention.
Allowable Subject Matter
Claim 20 is allowed.
The following is an examiner's statement of the reasons for allowance:
The base claim is claim 20.
The present claims are deemed allowable over the references since the references do not disclose or render obvious an adhesive product that is redetachable by stretching comprising the specified components a), b) and c) having the specified properties.
While Uchida (JP 2021-188051 A) describes a self-adhesive product redetachable by stretching as noted above which includes a tackifying resin, the tackifying resin of Uchida has a ring-and-ball softening point of 145°C or higher rather than from 95 to 135 °C as claimed. There is no suggestion or motivation to replace the tackifying resin of Uchida with one having a lower softening point.
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 29 July 2026 regarding the 35 U.S.C. § 103 rejection of claims 1-20 of record over Osterwinter (U.S. Pat. 10,351,740 B2) have been considered but are moot due to the new grounds of rejection.
Applicant’s arguments in the response filed 29 July 2026 regarding the provisional double patenting rejections of record have been carefully considered but are deemed unpersuasive. Applicant requests to hold the rejections in abeyance pending a finding of otherwise allowable subject matter in this application or in copending application 18/812,453. However, 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
Claims 1-19 are rejected. Claim 20 is allowed.
New grounds of rejection are presented in this Office action which were not necessitated by applicant's amendment. Accordingly, this action is Non-Final.
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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