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 .
Examiner’s Note
The Examiner acknowledge the amendments of claim 21, and the addition of new claims 40 – 41. Claims 1 – 20 & 27 have been cancelled. Claim 39 was withdrawn as being drawn to a non-elected claim (although not indicated in Applicant’s claim amendment filed 9/10/2025).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21 – 26, 28 – 38, & 40 – 41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With regard to independent claim 21, Applicant has amended the claim to recite “(e) 0.1 and 5 parts by weight of at least one thickener based on the mass of the dried polymer dispersion.” Specification, pg. 20, teaches “[t]ypical concentrations are 0.1 to 5 wt%, based on the mass of the dried polymer dispersion.” Parts by weight and percentage by weight are not the same unit of measurement and are calculated differently. Therefore, this amendment is considered new matter.
Claims 22 – 26, 28 – 28, 40 – 41 are dependent on claim 21 and therefore also rejected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21 – 26, 28 – 38, & 40 – 41 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.
With regard to independent claim 21, Applicant has amended the claim to recite “(e) 0.1 and 5 parts by weight of at least one thickener based on the mass of the dried polymer dispersion” and “an organic rheological additive is added to the polymer dispersion such that the polymer dispersion has a viscosity before drying of 40 Pa*s up to 80 Pa*s at a shear rate of 10/s and a viscosity before drying of 3000 Pa*s up to 8000 Pa.”
First, claim 21 recites the at least one thickener and organic rheological agent as two separate and distinct components. However, the specification teaches the “thickener” and “rheological additive” are synonyms (spec, pg. 18), and thus the same component. Claim 21 fails to clearly articulate a difference between thickener and rheological additive, and is therefore indefinite.
Second, “parts by weight, based on the mass of the dried polymer dispersion” does not make sense. Unlike percent by weight, the unit measurement of “parts” is not a measurement based on the relative amounts of the other components of the composition. In other words, it is possible for a composition to contain more than 100 parts by weight total.
Third, the claim recites (total) thickener is present in both the amount of 0.1 parts by weight and 5 parts by weight (for a single embodiment). Specification, pg. 20, teaches “[t]ypical concentrations are 0.1 to 5 wt%, based on the mass of the dried polymer dispersion.” It is not possible for a single embodiment to contain both 0.1 parts by weight and 5 parts by weight of total thickener. It is assumed the recitation of two separate and distinct amounts of thickener is a typographical error, in which Applicant intended to recite the content of total thickener as a range of 0.1 parts by weight to 5 parts by weight.
As discussed above “parts by weight” is considered new matter and Applicant’s specification supports the total thickener (including organic rheological additive) present in the amount of 0.1 – 5 wt.% based on the mass of the dried polymer dispersion. Therefore, for the current office action, the Examiner has assumed Applicant intended to recite 0.1 – 5 wt.% total thickeners (including organic rheological additive) based on the mass of the dried polymer dispersion. However, clarification by amendment is required.
Claims 22 – 26, 28 – 28, 40 – 41 are dependent on claim 21 and therefore also rejected.
Claim Rejections - 35 USC § 103
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(s) 21 – 24, 26, 29 – 33, 35 – 38, & 40 – 41 are rejected under 35 U.S.C. 103 as being unpatentable over Siebert (US 2012/0279637 A1), in view of Hänle et al. (US 2019/0106601 A1) and Figge et al. (U.S. Patent No. 6,242,512 B1).
With regard to claim 21, Siebert et al. teach an adhesive tape for wrapping (i.e. jacketing) a plurality of cables (i.e. a bundle), a cable loom, or a cable harness (paragraphs [0001] – [0002], [0114], [0016], & [0017]), wherein the tape comprises a carrier and a pressure sensitive adhesive (PSA) applied as a polymer dispersion to at least one side of the carrier (paragraphs [0005] & [0017]). The adhesive was applied to the textile as a dried adhesive (paragraph [0166]). The PSA suggests a polymer dispersion comprising at least one of monomeric acrylates (paragraph [0065]) and ethylenically unsaturated monomers (paragraphs [0064] & [0069]).
The dispersion contains tackifier for improved adhesion properties. The typical amount of tackifier is 10 – 100 parts by weight, based on the solids (paragraphs [0080] – [0081] & [0083]), but do not teach tackifier in the amount of 4 – 8 wt.% of the dried (solid) polymer dispersion.
Hänle et al. teach an adhesive tape for covering (i.e., “jacketing”) an elongated good, such as a cable set, cable loom, or harness (paragraphs [0002] – [0004], [0009], [0019], & [0140] – [0144]), wherein the tape comprises a carrier and a pressure sensitive adhesive comprising dried polymer dispersion comprising (a) 95 – 100 wt.% n-butyl acrylate and/or 2-ethylhexyl acrylate (i.e., “monomeric acrylates”), and (b) 0 – 5 wt% of ethylenically unsaturated (co)monomer (paragraphs [0021] – [0024]). Additionally, the dried polymer dispersion comprises up to 15 parts (0 – 15 parts) by weight tackifier, based on 100 parts by weight of the dried polymer dispersion, for boosting peel adhesion values of the pressure sensitive adhesive (paragraphs [0025] & [0043]). In other words, the dried polymer dispersion contains 0 – 13 wt.% tackifier, which contains Applicant’s claimed range of 4 – 8 wt.%.
Therefore, based on the teachings of Hänle et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate up to 13 wt.% tackifier in an acrylate polymer dispersion for an adhesive tape in order to achieve the desired peel adhesion values for an adhesive tape for covering an elongated item, such as a cable set, cable loom, or cable harness. 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).
Siebert et al. do not explicitly teach the presence of kaolin.
Figge et al. teach an aqueous dispersion as a bonding agent in adhesives, wherein the dispersion comprises a water-insoluble polymer, such as methacrylic acid esters, protection colloid, tackifier, thickening agents, and an antiblocking agent, such as kaolin in the amount of 0 – 30 wt.%, preferably 4 – 20% by wt., based on the total polymeric components (i.e., based on total weight of dried polymerized monomers and tackifiers) (Col. 2, Lines 9 – 36, Col. 4, Line 51 – Col. 5, Line 7, & Col. 5, Lines 45 – 56).
Therefore, based on the teachings of Figge et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate kaolin into the adhesive in the form of a polymer dispersion for providing the adhesive with anti-blocking properties. Applicant’s claimed range of 1 – 10 wt.% is within the range of 0 – 30 wt.% taught by Figge et al. 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).
Siebert et al. do not explicitly teach the amount of monomeric acrylates and/or ethylenically unsaturated comonomers in the dispersion. Applicant’s claim does not require the ethylenically unsaturated comonomers to be present (zero percent).
However, as discussed above, Siebert et al. suggests a PSA comprising copolymers or monomers of acrylate and/or ethylenically unsaturated monomers for a polymer dispersion and tackifier. Hänle et al. teach tackifier in the amount of 0 – 13 wt.% and (see discussion above). Figge et al. teach kaolin in the amount of 4 – 20 wt.%, Therefore, Siebert et al., Hänle et al., & Figge et al. suggest the polymer dispersion (before thickening/rheological additives are added) comprises about 67 wt.% to about 96 wt.% polymers and/or monomers, such as monomeric acrylate (paragraph [0064]) in an unthickened dried dispersion, which overlaps with Applicant’s claimed total range of 88 – 98 wt.% monomeric acrylates and 0 – 50 wt.% of ethylenically unsaturated comonomers.
Additionally, Siebert et al. teach shear rates of 40 – 3,000 Pa*s at a shear rate of 0.01/s. (Table 2), which overlaps with Applicant’s claimed shear rate of 3,000 – 8,000 Pa*s. 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).
Siebert et al. do not teach the adhesive viscosity when measured at shear rates of 10/s.
Siebert et al. teach associative thickeners (“rheological additives”) (paragraph [0074]) for adjusting pseudoplastic flow behavior (shear rate dependent viscosity) (paragraph [0076]). Furthermore, the viscosity is adjusted for achieving a desired depth of immersion of the dried pressure-sensitive adhesive composition into the textile carrier (paragraph [0015] & [0016]) for permanent attachment to said carrier (paragraph [0020]). If the viscosity of the adhesion dispersion is not harmonized with the construction of the fabric, the adhesive dispersion may strike through the carrier in the course of the coating operation (paragraph [0158]).
Therefore, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the amount of thickener through routine experimentation in order to achieve an adhesive having the desired (shear) viscosity at a desired shear rate such that an adhesive tape comprising a pressure sensitive adhesive composition is immersed into a textile carrier to a desired depth for permanent attachment without striking through the carrier. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Siebert et al. teach both organic thickeners (“organic rheological additives”)(paragraphs [0072] – [0074]) and inorganic thickeners, such as phyllosilicates (paragraph [0077]), are typically added to the adhesive dispersion in the amount of 0.1% to 5% by weight, based on the solids (i.e., dried dispersion). Therefore, the thickeners are present in the amount of 0.1 – 5 wt.%, which overlaps with Applicant’s claimed range of thickeners, including organic rheological additive.
With regard to claim 22, Siebert et al. teach acid amides, such as acrylamide or methylacrylamide (paragraph [0065]).
With regard to claim 23, Siebert et al. teach esters of ethylenically unsaturated dicarboxylic and tricarboxylic acids and anhydrides, such as vinyl toluene (“aromatic vinyl monomer”) (paragraph [0064]).
With regard to claim 24, Seibert et al. teach acrylic or methacrylic acid (paragraph [0064]).
With regard to claim 26, as discussed above, Figge et al. teach 0 – 13 wt% kaolin, more preferably 4 – 20 wt% kaolin.
With regard to claim 29, Siebert et al. teach the inventive PSA examples meet the tolerable unwind force level mandated by the automotive standard LV312 of 3.0N/cm to 9.0 N/cm at 30 m/min (paragraph [0157] – [0158] & Table 4).
With regard to claims 30 – 31, Siebert et al. teach the carrier is a nonwoven or woven fabric, preferably made of polyester (paragraphs [0021] – [0022] & [0046] – [0048]).
With regard to claim 32, as discussed above for claim 22, Siebert et al. teach acid amides, such as acrylamide or methylacrylamide (paragraph [0065]).
With regard to claim 33, as discussed above for claim 23, Siebert et al. teach esters of ethylenically unsaturated dicarboxylic and tricarboxylic acids and anhydrides, such as vinyl toluene (paragraph [0064]).
With regard to claims 35 – 36, Siebert et al. teach the polyester woven fabric (paragraphs [0046] – [0048]) preferably contains warp threads in the range of 30 – 60/cm, weft threads in the range of 23 – 50/cm, a density (yarn weight) in warp direction of 40 – 180 dtex and linear yarn density (weight) in weft direction of 100 to 400 dtex (paragraphs [0050] – [0054]). 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).
With regard to claim 37, Siebert et al. teach the adhesive tape consists of a carrier and the pressure-sensitive adhesive applied on one side of the carrier (paragraph [0123]).
With regard to claim 38, Siebert et al. teach the adhesive tape for wrapping cable (elongated item jacketed with an adhesive tape) is inside motor vehicles (paragraph [0003]).
With regard to claim 40, Seibert et al. teach organic thickeners (rheological additive) includes polyacrylic acids and polycoacrylic acids (i.e., acrylate copolymer) (paragraphs [0072] – [0073]).
With regard to claim 41, Seibert et al. teach the distance between the fabric to be coated with adhesive and the bottom edge of the coating knife was set so as to result, after drying, in the desired weight per unit area of the pressure-sensitive adhesive (PSA) in accordance with the examples (paragraph [0128]), for example 100 g/m2 with a tolerance of +/- 0.3 g/m2 (paragraph [0165] – [0167]), which is within Applicant’s claimed range of between 40 and 160 g/m2.
Claim(s) 25 & 34 are rejected under 35 U.S.C. 103 as being unpatentable over Siebert et al., Hänle et al. and Figge et al., as applied to claim 21 above, and further in view of Günzler et al. (US 2014/0044960 A1).
With regard to claim 25, Siebert et al. do not teach gel content greater than 40% (C5) or 45% (C18) determined via Soxhlet extraction.
Günzler et al. teach acrylic-based adhesives for wrapping around elongated items with a gel fraction greater than 40% as determined by Soxhlet extraction (paragraphs [0027] & [0041]). The high gel content results from the chain transfer reactions in the dispersion particles, increasing the probability of crosslinking (paragraph [0026]). A high gel value allows the composition to be used as pressure-sensitive adhesive compositions without the need for further crosslinking (paragraph [0026]).
Therefore, absent a showing of criticality with respect to thickness (a result effective variable), it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the amount of crosslinking in the polymer dispersion through routine experimentation in order to achieve the desired gel content for using the polymer dispersion composition as a pressure-sensitive adhesive. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 28 is rejected under 35 U.S.C. 103 as being unpatentable over Siebert et al., Hänle et al., and Figge et al., as applied to claim 21 above, and further in view of Korthals et al. (US 2012/0282837 A1).
With regard to claim 8, Siebert et al. teach the viscosity during coating is measured at 25°C (paragraph [0019]) and, as discussed above the viscosity is critical for deposition of the adhesive onto the textile carrier for penetrating the textile without striking through the textile. Additionally, Siebert et al. teach the processing temperature (deposition temperature) is above the glass transition temperature for achieve viscoelastic properties (paragraph [0068]). Therefore, Siebert et al. suggest the glass transition temperature of the PSA is below 25°C.
However, Siebert et al. do not explicitly teach the glass transition temperature of the PSA is less than 15°C.
Korthals et al. teach a cable jacketed with adhesive tape, wherein a pressure sensitive adhesive (PSA) of the tape comprises 90 – 90 wt% acrylate monomers, 0 – 20 wt% ethylenically unsaturated monomers, tackifier (paragraph [0024]), and rheological additives (thickeners) (paragraph [0058]). The PSA has a glass transition temperature below +15 degrees for obtaining pressure-sensitive adhesive and viscoelastic properties at normal ambient temperatures (paragraph [0040]). The glass transition temperature of the acrylate polymers can be estimated from the glass transition temperatures of their relative proportions. Due to the presence of tackifier, which raises the glass transition temperature, only acrylates polymers having a transition temperature of 0°C or less are suitable (paragraph [0041]).
Therefore, based on the teachings of Korthals et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to use acrylate monomers with a glass transition temperature below 0°C when mixed with ethylenically unsaturated monomers, tackifier, and rheological modifiers in order to achieve a pressure sensitive adhesive with a glass transition temperature below +15 degrees for achieving the desired adhesive and viscoelastic properties for an adhesive tape used for jacketing a cable.
Response to Arguments
Applicant argues, “Applicant would like to point that there appears to be errors in the Office Action because the first prior art rejection is based on the combined teachings/suggestions of Siebert, Hanle, and Figge, while the two subsequent prior art rejections are based on Siebert, Centner, and Figge in view of Gunzler and Korthals. With that said, it appears to Applicant that the Patent Office meant to cite to Hanle and not Centner as set forth throughout the present specification” (Remarks, Pgs. 6 – 7).
EXAMINER’S RESPONSE: Applicant's assumption is correct. The current rejection has been corrected accordingly.
Applicant argues, “In the Office Action, the Patent Office alleges that Applicant’s asserted unexpected results are not commensurate in scope with the claims (see page 15 of the Office Action). Applicant respectfully disagrees with the Patent Office’s allegations as set forth throughout the pending Office Action at least the following reasons. Moreover, based on the experimental data set forth in the present application, as originally filed, the following technical relationships have been demonstrated by Applicant:
“Too much Kaolin leads to negative effects on the peel adhesion and the unwind force (see cf. example 1);
“High viscosities and too less Kaolin leads to too high peel adhesion and too high unwind force (see cf. example 2);
“too high viscosity and reasonable amount of Kaolin leads to too high unwind force (see cf. example 10);
“too low viscosity leads to too low peel adhesion, too low unwind force, and the risk of not material not being able to coated; and
“too high amount (i.e., more than 10 wt.-%) leads to cable incompatibility” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. In order for the claims to be commensurate in scope with the asserted unexpected results, the independent claims must contain all details of the working examples, not simply the amount of kaolin present in the adhesive composition, especially in light of the fact that Applicant has argued the presence, type, and amount of additional thickener is necessary for achieving said results. Furthermore, the data provided in Applicant’s specification is insufficient for demonstrating unexpected results for the following reasons:
Independent claim 21 recites 3 - 8 wt.% kaolin. However, the data in the specification does not include comparative examples containing 1 - 2 wt.% or 9 - 11 wt.% kaolin for comparison. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d).II.
Independent claim 21 recites kaolin present in the range of 1 – 8 wt.%. However, original claim 21 and the specification teaches a range of 1 – 10 wt.% is acceptable. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d).II.
Independent claim 21 recites a large genus of "monomeric acrylates" in the dispersion. However, the inventive examples were specifically species of ethylhexylacrylate, butylacrylate, acrylic acid, acrylnitrile, ethylacrylate, hydroxyethylacrylate, vinylacetate. In order for the evidence to be commensurate in scope with the claims, the specific species of monomers in the dispersion must be recited in the independent claim. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In the case of In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777, the claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims. Therefore, Applicant’s results are not commensurate in scope with claims. See MPEP 716.02(d).
Applicant's claim 21 recites the ethylenically unsaturated comonomers are present in the amount of 0 - 50 wt.%. The only non-acrylate ethylene comonomer used in the examples was vinylacetate in the amount of 0 - 8 wt.%. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Furthermore, in the case of In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777, the claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims. Therefore, Applicant’s results are not commensurate in scope with claims. See MPEP 716.02(d).
App's "inventive" examples 6 - 9 tackifiers were limited to colophony ester resin, terpenic phenol, fully hydrogenated rosin ester in the amounts of 1 - 8 wt.%. Independent claim 21 is not limited to these species. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In the case of In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777, the claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims. Therefore, Applicant’s results are not commensurate in scope with claims. See MPEP 716.02(d).
Applicant's ex 6 - 9 used thickeners of Tubivis® (acrylic acid thickener), Rheovis® (polyurethane associative thickener), Borgi Gel® (polyurethane associative thickener). Independent claim 21 recites a general thickener (unclear if intended as the organic rheological agent), which is a large genus. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In the case of In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777, the claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims. Therefore, Applicant’s results are not commensurate in scope with claims. See MPEP 716.02(d).
Applicant's values for defining acceptable and unacceptable peel adhesion (2 vs. 3 rating) overlaps. For example, if a sample had a peel adhesion of 2.0 N/cm, Applicant's specification teaches it would be rated both acceptable and unacceptable (2 and 3). Similarly, a sample with an unwind force of 3 or 9 would be rated by acceptable and unacceptable (2 & 3). As such, Applicant's criteria for demonstrating unexpected results is inconsistent and indefinite.
Independent claim 21 recites 0.1 - 5 parts by weight on the mass of the dried dispersion. Applicant argues the presence of this thickener (in addition to kaolin) is critical, but examples do not disclose amount of thickener in each example. The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d).II.
Independent claim 21 does recite the specific species of tackifier used in the inventive examples. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In the case of In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777, the claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims. Therefore, Applicant’s results are not commensurate in scope with claims. See MPEP 716.02(d).
Applicant's inventive examples 6 – 9 had a viscosity 10/s in the range of 41.2 - 72.3, but independent claim 21 recites a range of 40 - 80. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d).II.
Applicant’s inventive examples 6 – 9 had a viscosity 0.01/s is 3471 - 5217, but independent claim 21 recites a range of 3000 - 8000. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d).II.
Applicant argues, “Viscosities and amounts of Kaolin play an important role for the presently claimed invention. Within the given range of viscosity, Kaolin’s main effect (and task) is to reduce the unwind force (wherein it might act synergistically as a thickener, but is not able to perform thickening alone; cf. next argument). In comparison example 5, the unwind force is moderate/bad and needs to be adjusted by Kaolin in the right amounts.
“Regarding viscosity, the Patent Office’s allegations refer to Kaolin as a thickener. Applicant does not agree, as it is essential to combine the materials within the presently claimed mass ranges with the viscosity resulting from the thickener. Within the presently claimed ranges, Kaolin alone is not capable of achieving the presently required viscosity without sacrificing peel adhesion and/or unwind force.
“In contrast, the presently claimed Kaolin is not a thickener. This is due the fact that Kaolin alone would not be sufficient to achieve the presently claimed viscosity level for textile coating without penetration. The term viscosity is used for a rather ‘liquid phase’ of the dispersion” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant asserts the unexpected results are based on the unwind force and the peel adhesion tests. However, Applicant’s criteria for measuring unwind force and peel adhesion (see pg. 40 of the originally filed specification) is indefinite because the specification has defined overlapping measured ranges (with regard to both of these properties) as “acceptable” (2) and “unacceptable” (3).
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For example, a sample with a measured peel adhesion of 2.0 is measured as labeled as both “very good or good” (a rating of 2) AND “unacceptable” (a rating of 3). Also, a sample with a measured unwind force of 3 N/cm or 9 N/cm is labeled as both “very good or good” (a rating of 2) and “unacceptable” (a rating of 3) Applicant’s working examples (inventive and comparative) simply indicate ratings of 1 – 5, without disclosing the specific measured results of the samples. Unexpected results cannot be shown when the criteria for measuring the results asserted as unexpected are not clearly defined.
Second, Applicant asserts kaolin alone, without the presence of at least one (additional) thickener, the sample would not be able to achieve the presently claimed viscosity level. Despite Applicant’s assertion that the presence of thickener/organic rheological agent is critical, Applicant has failed to provide any examples in their specification to support their argument that there would be insufficient viscosity (and thus insufficient peel adhesion or unwinding force) without the presence of additional thickener (organic rheological agent).
Third, it is understood that the amount of type of thickener/rheological agent directly correlates with the viscosity (i.e., rheology) of a composition before drying. This is an obvious result and therefore not unexpected results.
Fourth, the primary reference teaches the presence of thickeners (plural), wherein the thickeners may be inorganic, organic, or both.
Fifth, Figge et al. teach kaolin as an anti-blocking agent (i.e., unwinding force). Therefore, for the reasons given above, Applicant has failed to demonstrate non-obviousness.
Applicant argues, “None of Siebert, Hanle, and Figge, taken singly or in combination, teaches or suggests an unthickened dried polymer dispersion comprising 88 to 93 wt.% of monomeric acrylates; 0 to 50.0 wt% of ethylenically unsaturated comonomers which are not acrylates; 1 to 8 wt% of tackifier; 3 to 8 wt% of kaolin, and 0.1 and 5 parts by weight of at least one thickener based on the mass of the dried polymer dispersion, as recited in amended independent claim 1” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed in the previous rejection, Hanle teaches a dried polymer dispersion comprising 85 – 100 wt.% monomeric acrylates, 0 – 5 wt% ethylenically unsaturated comonomer, 0 – 13 wt.% tackifier.
Furthermore, Sieberts teaches 0.1 to 5% by weight thickeners (i.e., phyllosilicates and organic rheological agents). Figge et al. teach kaolin in the amount of 0 – 30 wt.%, preferably 4 – 20 wt.%.
Therefore, the combined references teach encompassing or overlapping ranges of the recited components of the dried polymer dispersion of amended claim 21. 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).
Applicant argues, “Siebert, at best, describes the use of different thickeners for thickening the polymer dispersion. In paragraph [0077] of Siebert, inorganic thickeners like phyllosilicates of natural or synthetic origin are disclosed with specific examples being hectorites and smectites. However, Kaolin is not mentioned through phyllosilicates set forth in Siebert. These thickeners according to Siebert (without any mention to Kaolin) may be usable for increasing the shear viscosities of commercial dispersions. However, Siebert does not disclose a combination of different thickeners. Moreover, the examples of Siebert, at best, only utilize one single thickener per adhesive” (Remarks, Pgs. 8 – 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant’s claim does not require the presence of more than one inorganic thickener.
Second, Siebert et al. teach the following:
[0078] The thickeners can in some cases be stirred directly into the adhesive dispersion or in some cases are advantageously prediluted or predispersed in water beforehand. Typical use concentrations are 0.1% to 5% by weight, based on the solids.
[0091] For improving the processing properties, the adhesive formulation can additionally be blended with customary process assistants such as rheological additives (thickeners), defoamers, deaerating agents, wetting agents or flow control agents. Suitable concentrations are situated in the range from 0.1 up to 5 parts by weight, based on the solids.
In paragraphs [0078] and [0091], Siebert et al. used the term “thickeners” and “rheological additives,” which are used in the plural form. One of ordinary skill in the art would interpret the teachings of Siebert et al. such that one or more thickeners may be present in the dispersion.
Third, Siebert et al. has a common assignee as the current application. The disclosure of Siebert et al. uses the same vernacular to describe “the thickeners” and “rheological additives” as Applicant’s specification. As such, the examiner’s rationale for taking the position that Applicant’s specification provides sufficient support for the recited “at least one thickener” is the same rationale for the examiner’s assertion that Siebert et al. also teach “at least one thickener” and “an organic rheological additive.”
Fourth, the teachings of the Siebert et al. reference are not limited to the examples. MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Fifth, as discussed in the rejection above, Figge et al. teach an adhesive formed from a dispersion comprises a water-insoluble polymer, such as methacrylic acid esters, protection colloid, tackifier, thickening agents, and an antiblocking agent, such as kaolin. In this case, Figge et al. teach kaolin is present in the adhesive for the purpose of providing anti-blocking properties (i.e., preventing layers from sticking during production or use, which improves unwinding properties), not as a thickening additive.
Applicant argues, “The teachings/suggestions of Hanle may only, at best, adjust the viscosity of the composition. However, the thickeners disclosed in Hanle could not have achieved the presently claimed viscosities because too large of an amount of Hanle’s thickeners would be necessary and a resulting composition utilizing Henle’s thickeners would be inoperable” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The rejection cited Hänle et al. because Hänle et al. teach a motivation to use the recited amount of tackifier in the adhesive composition taught by Siebert et al. Contrary to Applicant’s assertion, the rejection did not suggest modifying the primary reference with the type or amount of thickeners taught by Hänle et al. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues, “But surprisingly and not known before, the presently jacketed elongate item comprising the presently claimed combination of organic thickeners with Kaolin have a superior and surprisingly different influence on peel adhesions to steel, unwind forces, and cable compatibilities of the resulting adhesive tape(s) that achieve an unexpected synergistic effect as shown in working Examples 6 – 9 when directly compare to Comparative Examples and 1 – 4 and 10 – 12 (see pages 40 – 45 of the present application)” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, for the reasons given above, Applicant has failed to demonstrate unexpected results.
Furthermore, as discussed in the previous office action mailed 6/11/2025 (pgs. 15 – 17), based on the teachings of evidentiary references of Zhang et al. (2019), Fellahi et al. (2001), Zhang et al. (2020), & Figge et al. (1999), it has long been known in the art before Applicant’s filing date that incorporating kaolin into an adhesive composition may improve the anti-blocking (unwinding) properties and adhesive (peel) strength of said adhesive. Therefore, contrary to Applicant’s assertions, the unwinding and peel strength properties of an adhesive when kaolin is present, would have been expected by one of ordinary skill in the art.
Applicant argues, “A teaching that only Kaolin is suitable as a phyllosilicate for an adhesive tape is neither described in Siebert not suggested by the teachings of Sibert. On the contrary, a skilled person, with a reasonable appreciation of the teachings/suggestions of Siebert, would have been motivated to refrain from using a phyllosilicate, such as Kaolin.
“Based on the teachings/suggestion of Sibert, a skilled artisan would not have been motivated to combine the teachings of Siebert with the teachings of Hanle and Figge, as alleged by the Patent Office” (Remarks, Pg. 10).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Siebert et al. explicitly teach a preferred embodiment of inorganic thickeners include phyllosilicates (paragraph [0077]). A person of ordinary skill in the art would not “motivated to refrain from using phyllosilicate” because Siebert et al. teach phyllosilicates as a preferred embodiment of inorganic thickeners used.
Second, as discussed above, Siebert et al. teach the use of thickeners, such as phyllosilicates (genus). As discussed in the rejection above, kaolin is known in the art to be a species of phyllosilicates. Although Siebert et al. do not teach kaolin as the most preferred embodiment of phyllosilicate, Siebert’s silence of kaolin is not a teaching against kaolin.
MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Applicant argues, “The influences of kaolin on the peel adhesion on steel and on the unwind force of an adhesive tape comprising kaolin are not addressed, disclosed in, or even mentioned in Hanle or Figge, thus, the skilled artisan would not have had any motivation or reason to look to Hanle or Figge to modify Siebert to achieve the presently claimed adhesive tape as alleged by the Patent Office” (Remarks, Pg. 10).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, for the reasons given above, Applicant’s working examples fail to provide sufficient evidence of unexpected results.
Second, Figge et al. explicitly teach an adhesive comprising kaolin used as an anti-blocking (unwinding) agent.
Third, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below). See MPEP 2144.IV.
Applicant argues, “Neither Gunzler nor Korthals, taken singly or in combination, remedies the deficiencies of Siebert, Hanle, and Figge because both these references also fail to teach or suggest at least the presently claimed invention, as set forth in independent claim 21” (Remarks, Pgs. 10 – 11).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781