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 .
Response to Amendment/Arguments
The Office has carefully considered Applicant’s amendments and accompanying remarks dated 07/08/2025.
Applicant’s amendments have been entered and are made of record.
Applicant has amended claims 1, 3-11 and 13, cancelled claim 2 and added new claim 16.
Newly submitted claim 16 and claims 5-7 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: they are patently distinct inventions, with Claims 16 and 5-7 directed to the method of making the wiring harness and not an adhesive tape for a sheathing cable.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 16 and 5-7 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant’s amendment to claim 11 is sufficient to rectify the objection in the previous non-final office action dated 06/17/2025 at ¶ 4. This objection is now withdrawn.
Applicant’s amendment to claim 1 and cancellation of claim 2 is sufficient to rectify the 35 USC § 112 2nd rejection in the previous non-final office action dated 06/17/2025 at ¶¶ 5-9. This objection is now withdrawn.
Applicant presented no remarks for the prior art rejections made over USPUB 2016/0280847 issued to Müssig et al. and thus failing to specifically point out the novelty of the claims and offering only a "mere allegation of patentability" is an inadequate response to a rejection. Applicant must provide specific evidence and reasoning to overcome a rejection based on prior art. The burden is on the Applicant to respond with a substantive rebuttal, not a conclusory statement, as such the prior art rejections are maintained and set forth below.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 4, 8-12 and 14-15 is/are rejected under 35 U.S.C. 102 (a 1 or 2) as being anticipated by USPUB 2016/0280847 issued to Müssig et al.
Regarding modified Claim 1, where Applicant seeks an adhesive tape for sheathing cables in automobiles, the adhesive tape comprising: a substrate tape and a polymeric adhesive coating on at least one face of the substrate tape, the adhesive coating being made using polymers derived from C02-based monomers separated from combustion gases based on, in particular, petrochemical combustion; Applicant is directed to the teachings of Müssig et al. who discloses adhesive tapes [title, abstract and ¶ 0001]. At ¶ 0104, the instant reference discloses that the biobased carrier material wherein either or both of the surfaces include an adhesive material. At ¶ 0108 and 0120, the instant reference teaches the use of an acrylate as the hot melt adhesive, more specifically at ¶ 0120 discloses that the hot melt adhesive can include acrylic or methacrylic esters. Regarding “the CO2 is separated from combustion gases based on, in particular, petrochemical combustion” this limitation is a product-by-process claim. The manner in which the polymer is derived does not make the polymer of the prior art different from that of the claimed polymer if both the prior art polymer and the claimed polymer have the same components. See MPEP 2113.
Regarding Claim 3, where Applicant seeks that the adhesive tape according to claim 1, wherein the adhesive coating is produced from acrylate; Applicant is directed to ¶ 0108 of the instant reference where the adhesive can be acrylate, silicone, natural rubber, synthetic rubber, and styrene block copolymer compositions.
Regarding Claim 4, where Applicant seeks that the adhesive tape according to claim 3, wherein the adhesive coating is composed of acrylic acid esters produced by polymerization of C02-based acrylate-ester acids; This claim is a product-by-process claim. The manner in which the polymer is derived does not make the polymer of the prior art different from that of the claimed polymer if both the prior art polymer and the claimed polymer have the same components. See MPEP 2113.
Regarding modified Claim 8, where Applicant now seeks that the adhesive tape according to claim 1, wherein the substrate tape is a film, paper or textile or a combination thereof; Applicant is directed to ¶ 0084-0088 discloses that the carrier material [substrate] comprises a biobased polymer in the form of a textile.
Regarding modified Claim 9, where Applicant now seeks that the adhesive tape according to claim 1, wherein the substrate tape is composed of bio-based polymers; Applicant is directed to ¶ 0084-0088 discloses that the carrier material [substrate] comprises a biobased polymer in the form of a textile.
Regarding modified Claim 10, where Applicant now seeks that the adhesive tape according to claim 9, wherein the substrate tape is a textile substrate tape made of bio-based polymer fibers and/or polymer filaments; Applicant is directed to ¶ 0084-0088 discloses that the carrier material [substrate] comprises a biobased polymer in the form of a textile.
Regarding modified Claim 11, where Applicant now seeks that the adhesive tape according to claim 9, wherein the bio-based polymer is polyethylene, polypropylene, polystyrene, polyvinyl chloride, polyethylene terephthalate, polyvinyl acetate, polyurethane or polylactams or a combination thereof; Applicant is directed to ¶ 0017, 0026 of the instant reference.
Regarding Claim 12, where Applicant seeks that the adhesive tape according to claim 1, wherein the substrate is formed in one or more layers; Applicant is directed to ¶ 0084-0088 of the instant reference which discloses that the carrier material [substrate] comprises a biobased polymer in the form of a textile.
Regarding Claim 14, where Applicant seeks that the adhesive tape according to claim 1, wherein the adhesive coating has an application weight of 20 g/m2 to 200 g/m2; Applicant is directed to ¶ 0110 of the instant reference which discloses an add-on weight of 15-200 g/m2 of the acrylate hot-melt adhesive.
Regarding Claim 15, where Applicant seeks a wiring harness, comprising a plurality of electrical cables that extend longitudinally and that are wound with an adhesive tape helically or are longitudinally sheathed with the adhesive tape according to claim 1; Applicant is directed to ¶ 0170 of the instant reference which discloses that when the adhesive tape is employed for sheathing by a cable harness by guiding the adhesive tape helically around the cable harness.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPUB 20160280847 issued to Müssig et al.
Regarding modified Claim 13, where Applicant now seeks that the adhesive tape according to claim 1, wherein the thickness of the substrate tape is less than 0.8 mm; Müssig et al do not teach the thickness of the substrate. A person having ordinary skill in the art before the effective filing date of the application has good reason to pursue known options within his or her technical grasp. It would have been obvious to optimize the thickness of the substrate of choice since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed thickness is critical and has unexpected results. In the present invention, as Müssig et al. teach the same end product of wrapping cables, one would have been motivated to optimize the thickness of the substrate by the desire to provide a product with the desired flexibility.
Conclusion
THIS ACTION IS MADE FINAL. 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 Arti R Singh-Pandey whose telephone number is (571)272-1483. The examiner can normally be reached Monday-Thursday 8:30-3:00 and 8:00-10:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at 571-272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Arti Singh-Pandey/
Primary Patent Examiner
Art Unit 1759
asp