DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 9 in the amendments filed 3/16/2026.
Given the new ground(s) of rejection(s) set forth below, the following action is made non-final.
The indicated allowability of claims 1-5, 7-10, 13-14, 16-20 and 22-23 is withdrawn in view of the newly discovered reference(s) set forth below. Rejections based on the newly cited reference(s) follow.
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 3/16/2026, with respect to the objections of claims 1, 13-14, 16 and 20-21 as set forth in paragraphs 7-12 of the action mailed 12/23/2025, have been fully considered and are persuasive. The objections of claims 1, 13-14, 16 and 20-21 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 3/16/2026, with respect to the rejection of claims 1-10 and 22-23 and claims 13 and 17 and claims 14 and 18 and claims 16 and 19 under 35 U.S.C. 112(b) as set forth in paragraphs 14-20 of the action mailed 12/23/2025, have been fully considered and are persuasive. The rejection of claims 1-10, 13-14, 16-19 and 22-23 has been withdrawn, EXCEPT as noted below.
Applicant’s arguments, see the claim amendments and the remarks filed 3/16/2026, with respect to the rejection of claim 20 under 35 U.S.C. 112(b) as set forth in paragraphs 21-24 of the action mailed 12/23/2025, have been fully considered and are persuasive. The rejection of claim 20 has been withdrawn, EXCEPT as noted below.
Applicant’s arguments, see the claim amendments and the remarks filed 3/16/2026, with respect to the rejection of claim 9 under 35 U.S.C. 112(d) as set forth in paragraph 26 of the action mailed 12/23/2025, have been fully considered and are persuasive. The rejection of claim 9 has been withdrawn.
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 § 112
Claims 1-5, 7-8, 10, 13-14, 16-19 and 22-23 are 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.
Regarding claim 1, it is unclear from the claim limitations what is being claimed as it is unclear what units are being recited in regards to the proportions of the recited plasticizer (wt%, volume %, etc.).
Regarding claim 2, it is unclear from the claim limitations what is being claimed as it is unclear what units are being recited in regards to the proportions of the recited polyvinylaromatic-polydiene (wt%, volume %, etc.).
Regarding claims 4-5, It is unclear from the claim limitations, and in light of the specification, if the recited polyvinylaromatic-polydiene diblock copolymer A’-B’ and the at least hydrogenated diblock copolymer having the recited peak molecular weight are the same as each other or different from each other.
Claim 20 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.
Regarding claim 20, it is unclear from the claim limitations what is being claimed as it is unclear what units are being recited in regards to the proportions of the recited plasticizer (wt%, volume %, etc.).
Claim 20 recites the limitation "the ring-and-ball method" in lines 20-21. There is insufficient antecedent basis for this limitation in the claim as a ring-and-ball method has not been previously introduced.
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 7-8 and 23, is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) in view of Hatfield et al. (US 2006/0229411 A1), and in light of the evidence provided by Holguin et al. (US 6558790 B1). The Examiner notes that citations from the ‘051 reference were taken from machine translations, which is included with the current action.
Regarding claims 1-5, 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 copolymers (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).
The styrene content of the (SEBS) block copolymer is 30% by weight or less, which overlaps that presently claimed (at least 18 wt%, 20 to 36 wt%, current claim 2), towards a balance of cohesive strength, hardness and high adhesion (para 0013). The molar ratio of the ethylene to the butylene in the (SEBS) block copolymer is 1.0 to 2 towards a balance of alkaline resistance, hardness and adhesion (para 0014). The molecular weight of ethylene is 28 g/mol and that of butylene is 56 g/mol. Thus, the molar ratio of 2 as disclosed in Uchida provides the ethylene in the SEBS block copolymer at 50 wt% based on the EB block, which overlaps that presently claimed.
Uchida also teaches that the block copolymer comprises a diblock copolymer (elastomer component) comprising the styrene monomer block and the conjugated butadiene block (polyvinylaromatic-polydiene hydrogenated diblock copolymer A’B’, A’ = A and B’ = B, current claim 4) in an amount of 10 to 90 % by weight, which overlaps that presently claimed (at most 25 wt%, current claim 5), 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 (at least 60 wt%).
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).
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.
The Examiner notes that, while Uchida teaches that the molecular weight of the base polymers (i.e., the disclosed SEPS block and styrene/conjugated butadiene diblock copolymers) are provided in weight-average molecular weight (Mw) rather than the presently claimed peak molecular weight, Uchida does teach that the block copolymers have an Mw of 50,000 to 600,000 towards compatibility of the block copolymers 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).
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 weights of the SEPS block copolymer identical to that presently claimed (80 000 to 500 000 g/mol) and the styrene/conjugated butadiene diblock copolymer identical to that presently claimed (less than 100 000 g/mol, current claim 5), 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.
Uchida continues to teach that the PSA composition comprises plasticizers, but does not disclose the presently claimed compounds of, inter alia, ethylene/propylene, ethylene/butylene, butylene homopolymers, iso-butylene homopolymers, or butylene/iso-butylene copolymers, and mineral oils, nor their proportions.
However, Hatfield teaches hot melt PSAs comprising styrene-butadiene block copolymers, tackifier resin, and at least one plasticizer (para 0004-0010) present at 5 to 25 weight %, which overlaps that presently claimed (at least 2 and not more than 20 %) towards adjusting the viscosity and improved wetting. The at least one plasticizer(s) are selected from, inter alia, naphthenic oils (mineral oils), polyisobutylenes (iso-butylene homopolymers) and poly-1-butylenes (butylene homopolymers) (para 0034).
Uchida moreover 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 terpene phenol tackifier resin (T1) per 100 parts by weight of the base polymer towards a balance of a suppressed increase in adhesion and adhesive residue; removability; and resistance to alkaline solutions (para 0022, 0027). The softening point of the terpene phenol tackifier resin (T1) is at least 145 ℃ (greater than 95 ℃) (para 0021).
The Examiner notes that proportions of 100 parts by weight base polymer, 3 to 85 parts by weight for a combination of tackifiers (T1), (T2) and (T3) as taught by Uchida, and 5 to 25 weight % of the plasticizer(s) as taught by Uchida/Hatfield, provides said base polymers in the PSA composition of Uchida/Hatfield in a range which overlaps the presently claimed proportions of the elastomer component a) (38 to 58 wt%, 40 to 55 wt%, current claim 3).
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 to provide the block copolymers and the plasticizers of the cited prior art in proportions identical to that of the recited elastomer component a) and the plasticizer component based on the balance of a suppressed increase in adhesion and adhesive residue; removability; resistance to alkaline solutions; viscosity; and wetting of the PSA composition as required of the prior art’s intended application as in the present invention.
Regarding claim 7, as noted above, Uchida/Hatfield teaches that the PSA layer comprises the tackifiers (T1), (T2) and (T3) in a range which overlaps that presently claimed (35 to 60 wt%).
Regarding claim 8, Uchida teaches that the tackifier resin is selected from, inter alia, hydrogenated petroleum resins such as C5/C9 copolymer petroleum resins (para 0023-0026).
Regarding claim 23, as noted above, Uchida/Hatfield teaches that the plasticizers are mineral oils.
Claim(s) 10 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) in view of Hatfield et al. (US 2006/0229411 A1) and in further view of Pitko (US 2017/0292048 A1), and in light of the evidence provided by Holguin et al. (US 6558790 B1).
Regarding claims 10 and 22, Uchida/Hatfield teaches the PSA layer comprising the block copolymers, the tackifier resins and plasticizers as in the rejection of at least current claim 1 set forth above. comprising a hydrogenated block copolymers, but does not specify the polyisobutylene and poly-1-butylene plasticizers as a Type 2 butylene/isobutylene copolymer having a Mw of 3,000 to 20,000.
It is noted that Hatfield discloses that the preferred molecular weight of the polyisobutylene plasticizers are 600 to 5000, but Hatfield does not discourage one skilled in the art away from molecular weights outside this range (para 0034).
However, Pitko teaches PSAs (para 0057) comprising styrene butadiene copolymers and polybutene plasticizers (para 0025) such as hydrogenated styrene butadiene block copolymers (para 0027-0034), which said plasticizers are selected from, inter alia, TER Chemicals such as, inter alia, TE PIB 2600 (para 0049; 0087, Table 2), which is identical to that presently disclosed as providing the presently claimed Type 2 butylene/iso-butylene copolymer having a Mw of 9200 g/mol.
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Also, 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).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the presently claimed Type 2 plasticizer for the PSA layer of Uchida/Hatfield 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.
Claim(s) 13 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) in view of Hatfield et al. (US 2006/0229411 A1).
Regarding claims 13 and 17, Uchida/Hatfield teaches the PSA tape (adhesive tape) comprising a substrate (carrier) and a PSA layer laminated thereon as in the rejection of claims 1-5, 7-8 and 23 set forth above. Uchida also teaches that the substrate is, inter alia, polyethylene foam or a polyurethane foam (foam carrier) (para 0030).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) in view of Hatfield et al. (US 2006/0229411 A1).
Regarding claim 14, Uchida/Hatfield teaches the PSA tape (tape) comprising a substrate and a PSA layer laminated thereon as in the rejection of claims 1-5, 7-8 and 23 set forth above. Uchida also teaches that the substrate is, inter alia, polyethylene foam or a polyurethane foam (foam carrier) (para 0030).
Claim(s) 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) in view of Hatfield et al. (US 2006/0229411 A1) and in further view of Fenske et al. (US 2019/0292416).
Regarding claims 16 and 19, Uchida/Hatfield teaches the PSA tape (adhesive tape) comprising a polyethylene foam or a polyurethane foam substrate (foam carrier) and the PSA layer laminated thereon as in the rejection of claims 1-5, 7-8 and 23, and claims 13 and 17, and claim 14 set forth above, but is silent to a component comprising ethylene (co)polymer, propylene (co)polymer, EPR EPM and/or EPDM.
However, Fenske teaches an adhesive composition similar to that disclosed in Uchida (para 0001, 0010-0019, 0024, 0026-0028, 0052) and an adhesive tape comprising the adhesive composition on a carrier (para 0073-0074). Fenske further teaches that the tape is then applied to a substrate (a component) such as, inter alia, a polypropylene substrate (para 0084).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the PSA tape of Uchida/Hatfield in the manner as disclosed in Fenske, and thereby arrive at the presently claimed invention from the disclosures of the cited prior art.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) in view of Hatfield et al. (US 2006/0229411 A1) and in further view of Kopf et al. (US 10717905 B2).
Regarding claim 18, Uchida/Hatfield teaches the PSA tape comprising a polyethylene foam or a polyurethane foam substrate (foam carrier) and the PSA layer laminated thereon as in the rejection of claims 1-5, 7-8 and 23, and claims 13 and 17, and claim 14, is silent to the foam substrate being a viscoelastic foamed poly(meth)acrylate carrier.
However, Kopf instructs that polyacrylate viscoelastic foam carriers are known for use with synthetic rubber adhesives (column 1, line 52 to column 2, line 3) such as vinyl-aromatic/diene-based adhesives (column 2, line 35 to column 3, line 28).
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Case law holds that the mere substitution of an equivalent (something equal in value or
meaning, as taught by analogous prior art) is not an act of invention; where equivalency
is known to the prior art, the substitution of one equivalent for another is not
patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the PSA tape of Uchida/Hatfield comprising the substrate of Kopf, and thereby arrive at the presently claimed invention from the disclosures of the cited prior art.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) in view of Hatfield et al. (US 2006/0229411 A1) and in further view of Kopf et al. (US 10717905 B2).
Regarding claim 20, Uchida/Hatfield/Kopf teaches the PSA tape as in the rejection of claims 1-5, 7-8 and 23, and claims 16 and 18set forth above, which is equally applicable to the current claim.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 3/16/2026, with respect to the rejection of claims 1-10 and 22-23 and claims 13 and 17 and claims 14 and 18 and claims 16 and 19 under 35 U.S.C. 112(b) as set forth in paragraphs 14-20 of the action mailed 12/23/2025, have been fully considered but they are not persuasive.
The rejection of claim 1 following paragraph 17 has not been addressed in the remarks nor has the claim been amended to correct the deficiency. Thus, the rejection is maintained and repeated above.
Applicant’s arguments, see the claim amendments and the remarks filed 3/16/2026, with respect to the rejection of claim 20 under 35 U.S.C. 112(b) as set forth in paragraphs 14-20 of the action mailed 12/23/2025, have been fully considered but they are not persuasive.
The rejections of claim 20 following paragraph 21 and set forth in paragraph 23 have not been addressed in the remarks nor has the claim been amended to correct the deficiency. Thus, the rejections are maintained and repeated above.
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 4/10/2026
Prosecution Insights