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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 14 October 2025. A preliminary amendment was filed on 05 April 2023 amending claims 3, 4, 6-11, 13-16, 20-21, 23 and 25. Claims 1-25 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05 April 2023 and 12 July 2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election with traverse of Group I, Claims 1-22 in the reply filed on 08 December 2025 is acknowledged. The traversal is on the ground(s) that the previous Office Action did not establish an undue search burden of the claims. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I and II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in paragraph 2 of the previous Office Action. The requirement is still deemed proper and is therefore made FINAL.
Claims 23-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 08 December 2025.
Drawings
The drawings received on 05 April 2023 are acceptable.
Claim Objections
Applicant is advised that should claim 16 be found allowable, claim 18 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 3, 6, 8, 9, 11, 12, 16, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 0,637,618 A1.
Regarding claim 1, EP ‘618 discloses a biodegradable adhesive tape which includes a substrate, an adhesive layer formed on one side of the substrate, and a release agent layer formed on the other side of the substrate, see p. 3, lines 3-5. The substrate is made of a biodegradable polymer layer, see p. 3, line 58 through p. 4, line 2. In Example 1 at p. 9, lines 48-50, the substrate includes polyvinyl alcohol as a biodegradable polymer layer (a). Note that polyvinyl alcohol is a water-soluble polymer, see p. 5, lines 6-9 of the present specification.
The reference thus anticipates the claimed invention.
Regarding claims 2 and 3, EP ‘618 further teaches that the adhesive tape substrate is a laminate of a biodegradable polymer layer (a) and a paper layer (b), see p. 5, lines 15-17. Paper is a cellulosic material.
Regarding claim 6, EP ‘618 teaches laminating the paper layer and biodegradable polymer layer together at a temperature of 100-300 °C using an extrusion molding machine, reading on being thermally bonded as claimed. See p. 5, lines 22-24.
Regarding claim 8, the release agent layer 3 is shown to be formed on the surface of biodegradable polymer layer 1a, see FIG. 2 and description at p. 5, lines 1-3 and lines 15-17.
Regarding claim 9, the adhesive layer 2 is shown to be formed on the surface of paper layer 1b, see FIG. 2 and description at p. 5, lines 15-17.
Regarding claim 11, In Example 1 at p. 9, lines 48-50, the substrate includes polyvinyl alcohol as a biodegradable polymer layer (a).
Regarding claim 12, this the limitation “is formed by hydrolysis of polyvinyl acetate” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because EP ‘618 discloses a polyvinyl alcohol substrate layer 1a as described above.
Regarding claim 16, EP ‘618 describes a biodegradable adhesive tape which includes a substrate, an adhesive layer formed on one side of the substrate, and a release agent layer formed on the other side of the substrate, see p. 3, lines 3-5. In Example 1 at p. 9, lines 48-50, the substrate includes polyvinyl alcohol as a biodegradable polymer layer (a). Note that polyvinyl alcohol is a water-soluble polymer, see p. 5, lines 6-9 of the present specification.
Regarding claim 18, EP ‘618 describes a biodegradable adhesive tape which includes a substrate, an adhesive layer formed on one side of the substrate, and a release agent layer formed on the other side of the substrate, see p. 3, lines 3-5. In Example 1 at p. 9, lines 48-50, the substrate includes polyvinyl alcohol as a biodegradable polymer layer (a). Note that polyvinyl alcohol is a water-soluble polymer, see p. 5, lines 6-9 of the present specification.
Regarding claim 19, EP ‘618 describes a biodegradable adhesive tape which includes a substrate, an adhesive layer formed on one side of the substrate, and a release agent layer formed on the other side of the substrate, see p. 3, lines 3-5. EP ‘618 further teaches that the adhesive tape substrate is a laminate of a biodegradable polymer layer (a) and a paper layer (b), see p. 5, lines 15-17. Paper is a cellulosic material. In Example 1 at p. 9, lines 48-50, the substrate includes polyvinyl alcohol as a biodegradable polymer layer (a). Note that polyvinyl alcohol is a water-soluble polymer, see p. 5, lines 6-9 of the present specification.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4, 5, 17, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0,637,618 A1 in view of Nowak (U.S. Pub. 2021/0207006). Note that Nowak is based on documents filed June 2020 and earlier.
Regarding claims 4 and 5, EP ‘618 is relied upon as described above but does not specify a lamination adhesive between the paper layer and biodegradable polymer layer.
Nowak teaches a paper reinforced tape having a continuous paper strip, a continuous paper backing layer, and an adhesive composition disposed between the paper strip and continuous paper backing layer, see abstract and p. 4, [0066]. The tape also optionally includes a continuous fiber substrate which is water-soluble or water-dispersible, see p. 5, [0092] and [0094] such a polyvinyl alcohol or other materials, see p. 5, [0098] and [0100]. A layer of adhesive composition is disposed between the continuous paper backing layer and the continuous paper strip as a lamination adhesive, and suitable adhesives are water dispersible or water soluble adhesives, see p. 5, [0081]. Thus an aqueous adhesive is used as the lamination adhesive in the substrate layers of the adhesive tape.
EP ‘618 and Nowak are analogous because they are similar in structure and function as each discloses paper-containing tapes which may employ polyvinyl alcohol and paper substrate layers.
It would have been obvious to one of ordinary skill in the art at the time of the invention to use a water-dispersible or water-soluble laminating adhesive to form the laminate substrate of EP ‘618 in order to arrive at the claimed invention, as this adheres the substrates together while also providing for a water-dispersible adhesive material, see p. 5, [0081] of Nowak. This is desirable in a biodegradable adhesive tape as that of EP ‘618 to help degrade the adhesive tape after use.
Regarding claims 17 and 20-22, Nowak teaches using the tape as a tear tape for packaging of containers, see p. 3, [0058-0060]. Suitable packaging can include paper substrates (reading on cellulosic material) or Tyvek™ which is a polymeric film, see p. 3, [0059]. Nowak teaches pulling on an exposed end of a tear tape which tears through the packaging enabling it to open, see id.
Claims 7 and 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0,637,618 A1 in view of GB 2,469,441 B.
Regarding claims 7 and 14, EP ‘618 discloses a biodegradable adhesive tape which includes a substrate, an adhesive layer formed on one side of the substrate, and a release agent layer formed on the other side of the substrate, see p. 3, lines 3-5. The substrate is made of a biodegradable polymer layer, see p. 3, line 58 through p. 4, line 2. In Example 1 at p. 9, lines 48-50, the substrate includes polyvinyl alcohol as a biodegradable polymer layer (a). Note that polyvinyl alcohol is a water-soluble polymer, see p. 5, lines 6-9 of the present specification.
EP ‘618 further teaches that the adhesive tape substrate is a laminate of a biodegradable polymer layer (a) and a paper layer (b), see p. 5, lines 15-17. Paper is a cellulosic material.
EP ‘618 does not specify that the core comprises a layer of ink.
GB ‘441 describes a linerless self-adhesive label material with a water-soluble protective layer, see title and abstract and p. 6, lines 6-10. The water-soluble protective layer is a non-edible water soluble polymer, see p. 2, lines 27-29. The face material may include paper, see p. 3, lines 5-9 and p. 5, lines 15-19. The self-adhesive material may include printing ink on the face material, see p. 3, line 27 through p. 4, line 2. The water-soluble protective layer may also be printed, see p. 4, lines 25-27. See also p. 8, lines 9-16 describing a printing process to form labels.
EP ‘618 and GB’ 441 are analogous as they each disclose self-adhesive label materials with paper facestock layers. It would have been obvious to have printed the facestock layers to provide a printed label having desired indicia.
Regarding claim 15, GB ‘441 further teaches laminating the face material to the protective layer by means of an adhesive layer, see p. 2, lines 23-25 and p. 6, lines 18-22. This reads on the lamination adhesive as claimed.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over EP 0,637,618 A1 in view of Mitchell (U.S. Pub. 2014/0311001).
Regarding claim 10, EP ‘618 is relied upon as described above but does not specify that the polyvinyl alcohol polymer film is monoaxially oriented.
Mitchell describes a wash-off pressure-sensitive label which is a multilayered base film with two layers laminated together, each layer having a different degree of orientation, see abstract. Different layers may be monoaxially or biaxially oriented, see p. 3, [0034]. This is done so that in hot water washing conditions, the asymmetrically-oriented base film will curl severely causing it to be washed off of a package and easily removed, see p. 3, [0035].
EP ‘618 and Mitchell are analogous as they each describe adhesive labels with polymeric film substrate layers. It would have been obvious to have monoaxially oriented the polymer layer of EP ‘618 as disclosed in Mitchell to arrive at the claimed invention as this allows for the label to be easily removed and washed from the package in hot washing conditions as described above.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over EP 0,637,618 A1 in view of EP 2,518,121 A1.
Regarding claim 13, EP ‘618 is relied upon as described above but does not specify that the polyvinyl alcohol polymer film includes a plasticizer.
EP ‘121 also describes a water degradable adhesive tape which includes a layer of water degradable polymer film which is used as a packaging material, see abstract. Suitable polymer films are disclosed at p. 4, [0026-0028], with polyvinyl alcohol being the preferred such material, see p. 4-5, [0029]. The film may include usual additives or ingredients including a plasticizer which is beneficial to control the flexibility and stretchability of the film, see p. 5, [0035].
EP ‘618 and EP ‘121 are analogous as they each describe biodegradable adhesive tapes including a polyvinyl alcohol film layer. It would have been obvious to have included a plasticizer as taught in EP ‘121 to give the polymer film desired properties such as flexibility and stretchability, which are useful for adhesive tapes. See EP ‘121 at p. 5, [0035].
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759