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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 17, 2026 has been entered.
Examiner’s Note
The Examiner acknowledges the amendments of claim 21. Claims 1 – 20, 22, 27, & 40 have been cancelled.
Claim 39 is drawn to non-elected claim. However, Applicant has not used the proper claim status identifier (“withdrawn”) for claim 39. See MPEP 1893.01(a)(4).
Claims 21, 23 – 26, 28 – 38, & 40 are examined herein.
Claim Objections
Claim 21 is objected to because of the following informalities:
With regard to claim 21, “colophony” is known in the art as a synonym for “rosin.” As such, “colophony ester resin” and “rosin ester” are synonyms. Appropriate correction is required.
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, such as 2-ethylhexyl(meth)acrylate n-butyl(meth)acrylate, and combinations thereof (paragraphs [0064] – [0065]), and ethylenically unsaturated (co)monomers (paragraphs [0064], [0066], & [0069]).
The dispersion taught by Siebert et al. contains tackifier, such as terpene-phenolic resins (i.e., “terpenic phenol”) and esterified rosins (i.e., “rosin ester” and “colophony ester resin”) (paragraph [0081]) for improved adhesion properties. The typical amount of tackifier is 10 – 100 parts by weight, based on the solids (paragraphs [0080] – [0081] & [0083]), but Siebert et al. do not teach the tackifier is present 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 3 – 8 wt.% is within the preferred 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]). Examples of the thickeners include alkali-swellable emulsions (ASEs) (paragraph [0073]), hydrophobically modified alkali-swellable emulsions (HASEs) and hydrophobically modified ethyleneoxide urethane (paragraph [0074]). 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 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 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, “Seibert, Hanle, Figge, Gunzler, and Korthals, taken singly or in combination would not have provided the skilled artisan with the necessary and required motivation to combine the presently one or more monomeric acrylates (comprising either 2-ethylhexyl acrylate or a combination of n-butyl acrylate and 2-ethylehexyl acrylate), at least one tackifier (comprising a colophony ester resin, a pentaerythritol ester of colophony, a terpenic phenol, or a rosin ester) and at least one thickener (consisting of one or more alkali-swellable emulsions, one or more hydrophobically modified ethyleneoxide urethanes, or a combination thereof) to achieve the presently claimed unthickened dried polymer, as recited in amended claim 21” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed in the rejection above, the primary reference (Siebert et al.) explicitly teaches a pressure sensitive adhesive comprising 2-ethylhexylacrylate and/or n-butyl acrylate as the monomeric acrylate, a rosin ester, colophony ester resin, and/or a terpenic phenol resin as the tackifier, and at least one thickener comprising alkali-swellable emulsions, hydrophobically modified alkali-swellable emulsions, and/or hydrophobically modified ethylene oxide urethanes.
As discussed above, the other limitations of claim 21 are obvious.
Applicant argues, “Further in response to the Patent Office’s allegation set forth throughout the FOA, Applicant submits that amended claim 1 is commensurate in scope with the asserted unexpected results disclosed in the present specification, as originally filed.
“With respect to the unexpected results and the comparative experimental data set forth in the originally filed specification, page 40 specifically sets forth:
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“For peel adhesion on steel [N/cm] set forth in the above table, a value of ‘1’ is assigned for values greater than (>) 2.5 and there is no overlap between the values ‘1’ and ‘2’ because the value of ‘2’ does not include values > 2.5.
“Forth cable compatibility [h] in the above table, a value of ‘1’ is assigned for values greater than (>) 2500 and there is no overlap between the values ‘1’ and ‘2’ because the value of ‘2’ does not include values > 2500.
“In view of lack of any overlap regarding the values ‘1’ and ‘2’ for peel adhesion on steel and cable compatibility, Applciant submits that (i) inventive examples 6 – 8 achieved values for 1 for peel adhesion which are surprisingly superior and unexpected when directly compared to Comparative Examples 1 – 5 and 10 – 12 and (ii) Inventive Examples 6 – 9 achieved values of 1 for cable compatibility which are surprisingly superior and unexpected when directly compared to Comparative Examples 1 – 5 and 10 – 12 (Remarks, Pg. 8 – 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant has asserted unexpected results for only those examples that were rated a “1” for both peel adhesion and cable compatibility (example 6 – 8). 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). As shown in the data provided by Applicant’s specification (see below), Applicant’s evidence of examples 6 – 8 are not commensurate in scope with the claims for the following reasons:
Examples 6 – 8 contains 88 – 89 wt. % monomeric acrylate, but Applicant’s claim 21 recites 88 – 93% monomeric acrylate. As such, the amount of 90 – 93% are not commensurate in scope. 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).
Examples 6 – 8 contains tackifier resins H1, H3, & H4, but not H2. H2 is pentaerythritol ester of colophony, which is recited in claim 21.
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).
Applicant's examples 6 – 8 contained thickeners of Tubivis® (acrylic acid thickener), Rheovis® PU1191 + Rheovis AS1130 (polyurethane associative thickener), Borgi Gel® 0625 (polyurethane associative thickener) + Evo Dot VD2 (thickener based on polyacrylic acid derivative). However, Applicant’s claim 21 recites “one or more alkali-swellable emulsions, one or more hydrophobically modified alkali-swellable emulsions, one or more hydrophobically modified ethyleneoxide urethanes, or a combination thereof. Applicant’s claim 21 limitations regarding thickener are significantly broader than the thickeners of the inventive examples. The showing of unexpected results must be reviewed to see if the results occur over the entire claimed genuses. Furthermore, Applicant’s specification does not disclose the exact amount of thickener in each inventive 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.
Applicant's inventive examples 6 – 8 had a viscosity 10/s in the range of 41.2 – 46.6, 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 – 8 had a viscosity 0.01/s is 3471 - 3917, 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.
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Second, 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. Furthermore, original claim 21 and the specification teaches a range of 1 – 10 wt.% is acceptable. Applicant does not provide any data for samples comprising 1 – 2 wt.% kaolin for demonstrating the criticality of the claimed lower endpoint. 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.
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, as discussed in previous office actions, the cited prior art teaches it is well known that the presence of kaolin in a pressure sensitive adhesive composition improves adhesive (peel) strength. Therefore, Applicant’s peel strength results would have been expected by one of ordinary skill in the art.
Fifth, Applicant’s example 9 meets all the limitations of claim 21 and achieved a peel strength ranking of “2”, which is less than applicant’s asserted unexpected results ranking of “1”. Therefore, Applicant has failed to demonstrate the limitations of independent claim 21 lead to their asserted unexpected results. As discussed in the previous office action, Applicant did not provide raw data for their examples, and the definition between a ranking of “2” and a ranking of “3” are inconsistent and indefinite.
Applicant’s remaining arguments in the remarks filed 4/17/2026 were addressed by the Examiner in the previous office action mailed 12/18/2025
Conclusion
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
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