The arguments and amendments submitted 03/10/2026 have been considered. In light of amendments made, all prior claim objections and USC § 112(b) rejections are hereby withdrawn. The merits of the claims, however, remain unpatentable over the prior art as set forth below.
Claim Rejections - 35 USC § 103
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.
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, 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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 4-16 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita (JP 2002201457A, with citations to attached English translation) in view of Garnier (WO 2020/128200A1, with citations to attached English translation).
Regarding claim 1, Fujita teaches a method of reversibly bonding a first substrate surface to a second substrate surface (abstract, 2nd and 3rd paragraphs on pg. 7) comprising the steps of:
(a) adhering the first substrate surface to the second substrate surface by contacting the first substrate surface (2nd and 3rd paragraphs on pg. 7), wherein said first substrate surface is coated with a cured, thermally-reversible adhesive (3rd paragraph on pg. 7, 6th and 7th paragraphs on pg. 6, claims 1-10), with the second substrate surface at a first temperature (para. 0005 on pg. 2, 8th through 10th paragraphs on pg. 2; claims 1-2);
(b) heating the adhesive to a second temperature which is at least about 20°C above said first temperature and below the temperature at which the adhesive undergoes thermal degradation (4th and 5th paragraphs on pg. 7; claims 2 and 11); and
(c) separating the first substrate surface from the second substrate surface at said second temperature (4th and 7th paragraphs on pg. 7; claim 11),
wherein the adhesive comprises a cured product of a silyl-terminated polyether (“Examples of the thermosetting resin used as the crosslinkable polymer of the present invention include…Modified silicone resins, such as silyl group-terminated polyethers into which silyl groups have been introduced” per the 6th paragraph on pg. 5) and a tackifying resin (“The crosslinkable polymer of the present invention may contain another resin as long as the adhesiveness and the easy releasability are not impaired. Examples of these resins include polymerizable double bond-containing monomers such as unsaturated polyesters and prepolymers thereof; polybutadiene, maleated butadiene, epoxidized butadiene, maleated butadiene, butadiene-acrylonitrile copolymer and its carboxyl group-containing copolymer. Resin, polychloroprene, maleatedbutadiene, butadiene-acrylonitrile copolymer and its carboxyl group-containing resin, polychloroprene, butadiene-styrene copolymer, polyisoprene, butyl rubber, low molecular weight liquid to high molecular weight elastomers such as fluororubber and natural rubber; polyethylene, polypropylene, polybutene, poly-4-methylpentene, polystyrene, AS resin, MBS resin, ABS resin, polyethylene-propylene copolymer, tetrafluoroethylene-Hexafluoropropylene copolymers; polycarbonate, polyphenylene ether, polysulfone, polyester, polyimide” per the 2nd and 3rd paragraphs on pg. 6).
Fujita does not explicitly teach step d) as recited. However, Fujita does teach “An object of the present invention is to provide an adhesive excellent in properties such as being easily recyclable (reusable)” (last sentence in para. 0003), wherein such reuse of the adhesive implies re-adhering to another substrate.
Garnier, directed to compositions and methods for adhesive bonding (1st paragraph on pg. 6), which includes an adhesive comprising a cured product of a silyl-terminated polyether (“According to a very particularly preferred embodiment of the invention, the polymer (A) is a silylated polymer of formula (HT) in which R2 is a divalent radical derived from a polyether, preferably from a poly (oxyalkylene) diol, and even more particularly of a polypropylene glycol” per the 7th paragraph on pg. 11) and a tackifying resin (“The adhesive composition which can be crosslinked by heating according to the invention also comprises at least one tackifying resin (B). Said resin can be any resin compatible with the silylated polymer (s)” per pg. 11), teaches after a transferring step, which is a type of separating step, cooling the adhesive to the first temperature and re-adhering the first substrate surface to a third substrate surface, by contacting the first substrate surface with the third substrate surface, at said first temperature (“step (d) of the above-described method consists in transferring the crosslinked adhesive layer onto a flexible support layer (which may be a plastic film) after the crosslinked adhesive layer has cooled to a temperature below the degradation or softening temperature of the material making up the support layer” per the 1st paragraph on pg. 30).
In view of Garnier’s teachings, it would have been obvious to one of ordinary skill in the art at the time of filing to combine Garnier’s cooling and re-adhering steps with Fujita’s method to predictably enable transfer of the adhesive layer from one substrate to another, thereby reusing the adhesive and/or providing associated cost-savings from the use of less adhesive.
Regarding claim 4, these steps are merely repeating steps taught by Fujita and/or Garnier, as cited above, and would have been obvious to one of ordinary skill in the art to predictably provide re-use of the substrates and/or adhesive layer without the need for preparing and coating the adhesive layer for every bonding or transfer operation.
Regarding claim 5, Fujita teaches said first temperature is about 25°C (para. 0005 on pg. 2; claim 1).
Regarding claim 6, Fujita teaches the first substrate forms, with the adhesive, a tape, and the material of the first substrate is selected from the group consisting of polyester, polyolefin, and polystyrene (“As the material of the adherend, for example…plastics such as polyolefin, polycarbonate, polystyrene, polyester” per the 11th and 12th paragraphs on pg. 6).
Regarding claims 7-11, Fujita teaches a silyl-terminated polyether, but is silent regarding the structures, features, and properties recited in these claims.
However, Garnier teaches that a silyl-terminated polyether, wherein the silyl-terminated polyether comprises an oxyalkylene polymer, with the structure, features, and properties of the polyether recited in these claims (paragraphs at bottom of pg. 9 bridging to middle of pg. 11; and claims 3-5) is useful for adhesive bonding and transfer applications (1st paragraph on pg. 30) and provides improved breaking strength, tack, and adhesive power (last three paragraphs on pg. 3).
The courts have held that selection of a known material on the basis of suitability for its intended use is obvious and within the capability of one of ordinary skill in the art. "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. See MPEP § 2144.07, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Furthermore, per MPEP §2143.I, simple substitution of one known element for another to obtain predictable results is sufficient to establish a prima facie case of obviousness. See MPEP §2143.I (rationale B) and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Thus, in view of Garnier’s teachings, the above considerations, and/or KSR rationale B, it would have been obvious to one of ordinary skill in the art at the time of filing to select or substitute Garnier’s silyl-terminated polyether adhesive for the adhesive in Fujita’s bonding method to predictably obtain a suitable adhesive for Fujita’s method and/or obtain the beneficial properties taught by Garnier as cited above.
Regarding claims 12-16, Fujita does not explicitly teach these claims.
However, the courts have held that if the composition is physically the same as that claimed, it must have the same properties. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. See MPEP § 2112.01.II. Therefore, since Garnier teaches a silyl-terminated polyether with identical chemical structure as in claims 7-11, the properties Applicant discloses and/or recites in claims 12-16 are necessarily present in Garnier’s composition and adhesive, as well as the reversible bonding method of Fujita as modified by Garnier.
Response to Arguments
Applicant's arguments filed 03/10/2026 have been fully considered and are addressed below.
Regarding presently amended claim 1, Applicant presents an argument contending that if Fujita’s adhesive is peeled off after initial use, then it cannot be re-adhered to a substrate and therefore the modification to re-adhere the adhesive to another substrate, suggested by Garnier’s teachings, renders the primary reference unsatisfactory for its intended purpose and changes its principle of operation.
However, this argument is not persuasive for the following reasons. First, although Fujita does not explicitly teach all of the features recited in the re-use step, there is nothing in Fujita’s teachings that states the peeling of the adhesive renders it unusable for readhering. In fact, Fujita explicitly teaches that the adhesive disclosed therein was designed to be reusable. Secondly, Applicant has not provided any explanation why peeling Fujita’s adhesive would render it unusable for reuse. Furthermore, reuse of adhesive and/or adhesive tapes, such as that described in broad terms by Fujita and more specifically described in Garnier’s teachings, as cited above, are ubiquitous in the prior art and everyday life with the accompanying cost-savings and reduction of waste very broadly appreciated by one of ordinary skill.
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 JIM R SMITH whose telephone number is (303)297-4318. The examiner can normally be reached Mon-Fri. 9-6 MST.
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, Phillip Tucker can be reached at 571-272-1095. 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.
/JRS/
Examiner
Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
Prosecution Insights