DETAILED ACTION
Applicant’s amendment submitted on May 5, 2026 (“amendment”) in response to the Office action mailed on January 7, 2026 (“previous OA”) have been fully considered.
Support for the amendment to claim 1 can be found in paragraphs 0037, 0050, and 0057 of the published application, and support for the new claim 13 can be found in paragraph 0059 of the published application and in claim 3 as originally filed.
In view of the amendment, the rejection of claims 1-7 and 12 under 35 USC 112(b) as set forth in the previous OA that are not maintained are withdrawn.
In view of the amendment, the art rejections of record as set forth in the previous OA are modified.
In view of the amendment to claim 12, a new ground of rejection is introduced.
In view of the amendment, a new claim objection is introduced.
In view of claim 13, a new rejection under 35 USC 112(d) is introduced.
Claim Objections
Claim 1 is objected to because of the following informalities: at line 8, replace “with at least one adhesive” with “with the at least one adhesive”.
Appropriate correction is required.
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.
Claim 12 is 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.
As to claim 12, this claim recites “the pressure-sensitive adhesive comprises a synthetic rubber and a tackifier resin present in the pressure-sensitive adhesive in a mass fraction of 10 to 70%.”. This recitation can be interpreted as the mass fraction of synthetic rubber and tackifier is 10 to 70%, which is not supported by the specification. For example, claim 12 as originally filled refers the mass fraction of 10% to 70% as the amount of the tackifier resin (see claim 12 “…and the tackifier resin has a mass fraction of 10 to 70%.”). Accordingly, claim 12 is not supported by the specification.
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 2, 4, 6, and 12 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.
As to claim 2, this claim recites “at least one tackifier resin”. It is unclear whether “at least one tackifier resin” refers to “tackifier resins” of parent claim 1 or different tackifier.
As to claim 4, this claim recites “a synthetic rubber”. It is unclear whether this recitation refers to "synthetic rubbers” of parent claim 1 or different rubber.
Further, as to claim 4, this claim at line 5 recites “one or more poly(meth)acrylates”. It is unclear whether this recitation is additional polymer or further refers to “poly(meth)acrylates” in claim 1.
As to claim 6, it is unclear from the specification and claim what is meant by the recitation “degree of foaming” and “at start temperature of the microballoons”. On page 6 of the amendment, applicant points to paragraphs 0047 and 0049 of the published application. However, the examiner respectfully submits that these paragraphs do not provide any guidance as to what is meant by “at start temperature of the microballoons”. Therefore, it is unclear how applicant arrives at the claimed degree of foaming. For purpose of examination, if prior art discloses claimed pressure-sensitive adhesive and/or plastic, it will meet the claim.
As to claim 12, this claim recites “the pressure-sensitive adhesive comprises a synthetic rubber and a tackifier resin present in the pressure-sensitive adhesive in a mass fraction of 10 to 70%.” The examiner submits that original claim 12 referred to “the tackifier resin has a mass fraction of 10 to 70%”. With respect to current amendment to claim 12, it is unclear whether the recitation “a tackifier resin” refers to “tackifier resins” of parent claim 1. Further, it is unclear whether the mass fraction of 10 to 70% refers to the amount of synthetic rubber, tackifier resin, or both the synthetic rubber and tackifier resin.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 recites that the polymer of the syntactically foamed plastic is PET. This claim depends from claim 3, wherein claim 3 recites that the polymer is “selected from the group consisting of polyolefins, polyesters, poly (meth)acrylates, and polyvinyl chloride.” As such, claim 13 fails to further limit the subject matter of the claim upon which it depends, or fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burmeister et al. (US 20140323604 A1).
As to claim 1, Burmeister teaches a double-sided self-adhesive tape (multilayer adhesive tape) comprising a carrier layer formed of syntactically foamed plastic of a polymer (0062, 0001, 0002, 0004, 0019, 0043, 0044). Further, the syntactically foamed plastic of Burmeister comprises expanded microballoons (0037). Further, Burmeister teaches at least one layer of self-adhesive disposed on the carrier layer (0062) and comprises syntactically foamed pressure-sensitive adhesive (PSA) (0002, 0004, 0043, 0044, and 0051). Further, Burmeister teaches that the syntactically foamed PSA comprises polyacrylate and synthetic rubbers (0019), and expanded microballoons (0037).
Further as to claim 1 recitation “at least one adhesive layer optionally include one or more of: tackifier resins…and fillers”, Burmeister teaches tackifier resins (0081).
Further, as to claim 1 recitations “carrier layer consists essentially of a syntactically foamed plastic of a polymer and a multiplicity of microballoons”, and “at least one adhesive layer consists essentially of a syntactically foamed pressure-sensitive adhesive”, the examiner submits that for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” (consists essentially of) is construed as equivalent to “comprising.” See, e.g. PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. Further, according to the MPEP, “If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of”, applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention” (MPEP 2111.03 and In re DeLajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964)).
Based on the above, the examiner respectfully submits that at present applicant has not provided any factual evidence on the record that would indicate that the presence of additional steps or materials (if any) in Burmeister’s carrier layer and the adhesive layer materially change the characteristics of the claimed adhesive tape. Accordingly, the phrase “consists essentially of” is interpreted as “comprising” (see MPEP 2111.03).
As to claim 2, Burmeister teaches tackifier (0081).
AS to claim 3, Burmeister teaches that the syntactically foamed plastic comprises polyacrylate and synthetic rubbers (0019).
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Burmeister et al. (US 20140323604 A1).
Burmeister as set forth previously teaches claimed invention except for the properties recited in claims 6 and 7. However, it is submitted that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). Burmeister as set forth previously discloses at least one adhesive layer and the carrier layer as claimed. Accordingly, absent any factual evidence on the record, it is reasonable to presume that the aforementioned properties are inherently present in the multilayer adhesive tape of Burmeister. Alternatively, the aforementioned properties would obviously be present once the multilayer adhesive tape of Burmeister is provided.
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, 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.
Claims 4, 5, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Burmeister et al. (US 20140323604 A1) as applied to claim 1 above, and further in view of Schubert et al. (US 20190112508 A1).
Burmeister is silent as to disclosing claims 4, 5, and 12.
Schubert discloses a PSA based on vinylaromatic block copolymers (synthetic rubber) that has higher ageing stability and can be used for PSA products having high thermal stability (0024). Further, the PSA of Schubert is foamed with microballoons (0033).
As to claim 4, Schubert discloses that the PSA contains 35 wt% to 65 wt% of vinylaromatic block copolymer (0081-0082). The claimed range of synthetic rubber of 40% or more overlaps or lies within the range disclosed by Schubert such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a PSA comprising synthetic rubbers with a mass fraction as claimed and as rendered obvious by Schubert, motivated by the desire to form a PSA having high ageing stability and high thermal stability.
As to claim 5, Schubert discloses from 0.25 wt% to 5 wt% of microballoons in the adhesive in order to provide the adhesive with good balance between adhesion and cohesion (0102).
It would have been obvious to provide a PSA adhesive having the claimed amount of expanded microballoons as disclosed by Schubert, motivated by the desire to form a PSA having good balance between adhesion and cohesion.
As to claim 12, Schubert as set forth previously discloses synthetic rubber as main constituent of the PSA. Further, Schubert discloses that the adhesive includes 34.6 wt% to 45 wt% of tackifying resin (0081), which is within the claimed mass fraction range of 10 to 70%.
It would have been obvious to provide PSA adhesive having the claimed amount of tackifier resin as disclosed by Schubert, motivated by the desire to form a PSA having desired tack.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Burmeister et al. (US 20140323604 A1) as applied to claim 1 above, and further in view of Schubert et al. (US 20190112508 A1) as applied to claim 3 above, and further in view of Kato et al. (US 20070218269 A1).
Burmeister is silent as to disclosing claim 13.
Kato discloses a substrate with a PSA layer on the substrate (abstract). Further, Kato discloses that the substrate can be formed of e.g. a foamed film of PET (0060).
It would have been obvious to use a PET as a polymer of the polymer foam of the carrier layer of Burmeister, motivated by the desire to form a polymer foam of Burmeister and Burmeister discloses that further monomers can also be used in the formation of the polymer foam (0019).
Response to Arguments
Applicant's arguments submitted in the amendment have been fully considered but they are not persuasive.
With respect to the rejection of claims under 35 USC 102(a)(1) over Burmeister et al. (US 20140323604 A1), applicant argues that the transitional phrase “consisting essentially of” in the claims excludes the definition of the polymer foam as defined in paragraph 0045 of Burmeister. According to applicant, the claimed invention by use of “consisting essentially of” excludes Burmeister’s required cavities without their own shell. Pages 6-7 of the amendment.
The examiner respectfully disagrees. As to claim 1 recitations “carrier layer consists essentially of a syntactically foamed plastic of a polymer and a multiplicity of microballoons”, and “at least one adhesive layer consists essentially of a syntactically foamed pressure-sensitive adhesive”, the examiner submits that for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” (consists essentially of) will be construed as equivalent to “comprising.” See, e.g. PPG, 156 F.3d at 1355, 48 USPQ2d at 1355. Further, according to the MPEP, “If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of”, applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of the claimed invention” (MPEP 2111.03 and In re DeLajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964)).
Based on the above, the examiner respectfully submits that at present applicant has not provided any factual evidence on the record that would indicate that the presence of additional steps or materials (e.g. cavities without their own shell) in Burmeister’s carrier layer and the adhesive layer materially change the characteristics of the claimed adhesive tape. Accordingly, the phrase “consists essentially of” is interpreted as “comprising” (see MPEP 2111.03). Therefore, contrary to applicant’s argument, the claimed carrier layer does not exclude Burmeister’s foam which includes cavities without their own shell.
With respect to the rejection of claims 6 and 7 under 35 USC 102/103 over Burmeister et al. (US 20140323604 A1),applicant has incorporated same arguments that are set forth previously. See also page 8 of the amendment.
In response, the examiner incorporates his comments as set forth previously here by reference.
With respect to the rejection of claims 4, 5, and 12 under 35 USC 103 as being unpatentable over Burmeister et al. (US 20140323604 A1) as applied to claim 1 above, and further in view of Schubert et al. (US 20190112508 A1), applicant repeats the same arguments that are set forth previously.
Applicant further argues that a skilled artisan would not omit cavities without their own shell from the matrix in the disclosure of Burmeister, because doing so would undermine the crux of Burmeister’s teaching. Page 8 of the amendment.
In response, the examiner respectfully submits that the basis for the rejection is not to remove or exclude cavities without their own shell as disclosed by Burmeister in paragraph 0045. Accordingly, applicant’s argument is not commensurate in scope with the basis of the rejection.
Applicant further argues that Schubert does not disclose any liner or support which meets claim 1 limitation “wherein the carrier layer consists essentially of a syntactically foamed plastic of a polymer and a multiplicity of expanded microballoons.” Page 9 of the amendment.
In response to applicant’s argument against the disclosure of Schubert individually, the examiner respectfully submits that Schubert is relied upon to render obvious claims 4, 5, and 12. The examiner respectfully submits that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See MPEP 2145 (IV). Further, the examiner submits that as set forth in the current OA, Burmeister is relied upon to render obvious claim 1 limitation “the carrier layer consists essentially of a syntactically foamed plastic of a polymer and a multiplicity of expanded microballoons.”
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 ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
July 1, 2026
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