Claims 1-14, and 16-21 are currently pending with claim 15 being cancelled. Claims 1-14 and 16-21 are rejected.
All of the rejections have been maintained.
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.
The factual inquiries 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, 2, 4-14, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0345367 to Eckhardt et al. (hereinafter “Eckhardt”) in view of US 2004/0033362 to Mino (hereinafter “Mino”).
As to claims 1 and 2, Eckhardt discloses a multilayer pressure sensitive adhesive (PSA) foam tape comprising: a PSA polymeric foam layer having a first major surface and a second major surface, a first PSA skin layer adjacent the first major surface of the polymeric foam layer, and a second PSA skin layer adjacent the first major surface of the polymeric foam layer (abstract, and paragraph 215).
Eckhardt discloses that the polymeric foam layer consists of 100 parts by weight of polyacrylate resin, 4 parts by weight of expandable microspheres and 5 parts by weight of activated carbon (table 6). The expandable microsphere reads on the claimed a density-reducing solid filler. The polyacrylate resin of the foam layer is either non-crosslinked or crosslinked (paragraphs 78 and 79). The non-crosslinking indicates that the polymeric foam layer is devoid of the crosslinking agent.
Turning to the claim, the term “comprising” before “at least one reactive functional group” allows the inclusion of a free-radical curable functional group (Z) derived from a crosslinking agent, in addition to the functional group (X).
Eckhardt discloses that the polyacrylate resin of the foam layer can be crosslinked using a crosslinking agent comprising benzophenone and/or substituted benzophenone, each of which corresponding to the claimed free-radical curable functional group Z (paragraph 85).
The Markush group indicates that the PSA comprises at least one of the polymer base materials listed. However, it does not limit the PSA to only the polymer base material devoid of a tackifier and a block copolymer. The term “comprise” allows the inclusion of the block copolymer and the tackifier in the PSA in addition to the polymer base material.
As indicated in the paragraphs 179-182, Eckhardt discloses that the first or second PSA comprises: 20-80 wt% of a linear block copolymer, 20-70 wt% of a tackifier, 3-25 wt% of a (meth) acrylate polymer, based on the total weight of the PSA. The (meth) acrylate polymer reads on the claimed polymer base material.
Eckhardt does not explicitly disclose the polymer base material having a weight-average molecular weight (Mw) no greater than 500,000g/mol.
Mino, however, discloses a crosslinked foamed PSA comprising an acrylate copolymer having a Mw of at least 100,000 g/mol, having excellent stress relaxing property, restoration property and solvent resistance (abstract). The Mw overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the molecular weight of the acrylate copolymer of the polymer foam layer will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a molecular weight is critical or provides unexpected results.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the polymer base material disclosed in Eckhardt having a Mw of at least 100,000 g/mol disclosed in Mino motivated by the desire to provide a polymeric foam layer excellent in stress relaxing property, restoration property and solvent resistance.
As to claim 4, 5 and 19, Eckhardt discloses that the polymeric foam layer comprises expandable microspheres (table 6).
As to claim 6, Eckhardt discloses that the polymeric foam layer consists of 100 parts by weight of polyacrylate resin, 4 parts by weight of expandable microspheres and 5 parts by weight of activated carbon (table 6). The (meth)acrylate copolymer is present in an amount of 91.7 wt% based on the weight of the polymeric foam layer.
As to claims 7-11, 20 and 21, Eckhardt discloses that the polymeric foam layer comprises 2-ethyl hexyl acrylate monomer, and acrylic acid monomer corresponding to the claimed carboxylic acid functional group X (table 6). The (meth)acrylate copolymer further includes crosslinking additives comprising benzophenone and/or substituted benzophenone, and each of which corresponding to the claimed free-radical curable functional group Z (paragraph 85).
As to claims 12 and 13, Eckhardt discloses that the polymeric foam layer comprises a polyacrylate whose main monomer component is a combination of at least two alkyl (meth)acrylate ester monomers (paragraphs 56-58). The (meth)acrylate copolymer further includes crosslinking additives comprising benzophenone and/or substituted benzophenone, and each of which corresponding to the claimed free-radical curable functional group Z (paragraph 85). A crosslinking product derived from a crosslinking reaction of the alkyl (meth)acrylate ester monomers and the benzophenone and/or substituted benzophenone would read on the claimed element (iii).
As to claim 14, Eckhardt discloses the foam tape exhibiting a VOC content of less than 500 ppm, or a FOG content of less than 600 ppm, according to Test Method VDA278 (paragraphs 209 and 210).
Claims 3, 12, 13, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Eckhardt in view of Mino as applied to claims 1 and 3 above, and further in view of US 2015/0030839 to Satrijo et al. (hereinafter “Satrijo”).
As to claim 3, neither Eckhardt nor Mino discloses or suggests the polymeric foam layer comprising a tackifier.
Satrijo, however, discloses a multilayer PSA foam tape comprising: a PSA polymeric foam layer having a first major surface and a second major surface, a first PSA skin layer adjacent the first major surface of the polymeric foam layer, and a second PSA skin layer adjacent the first major surface of the polymeric foam layer (paragraph 61). The PSA foam layer comprises 94 parts by weight of 2EHA, 6 parts by weight of AA, and 0.15 parts by weight of photoinitiator per 100 parts of total monomer (phr), 0.4 phr of an antioxidant, and 0.006 phr 1,6-hexanediol diacrylate (paragraph 106). The PSA foam layer also contains expandable microspheres (paragraph 44), a tackifier (paragraph 46), and activated carbon (paragraph 57).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a tackifier from Satrijo in the polymer base material disclosed in Eckhardt motivated by the desire to enhance adhesion properties.
As to claims 12 and 13, assuming that neither Eckhardt nor Mino discloses or suggests the polymeric foam layer comprising an ethylenically unsaturated monomer with a free-radical curable functional group (which the Examiner does not agree for the reasons discussed above), the claim is not rendered unobvious because a person of ordinary skill in the art would consider Satrijo’s disclosure regarding a photocrosslinker monomer when seeking to improve the adhesive and cohesive strength of the foam.
Satrijo, however, discloses that the PSA foam includes a photocrosslinker monomer comprising ethylenically unsaturated compound containing benzophenone or thioxanthone (paragraphs 34-38).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a photocrosslinker from Satrijo in the polymer base material of the foam layer disclosed in Eckhardt motivated by the desire to improve the adhesive and cohesive strength of the foam layer.
As to claim 16, Eckhardt discloses that the polymeric foam layer comprises expandable microspheres (table 6).
As to claims 17 and 18, Eckhardt discloses that the polymeric foam layer comprises 2-ethyl hexyl acrylate monomer, and acrylic acid monomer corresponding to the claimed carboxylic acid functional group X (table 6).
Response to Arguments
Regarding claim 1:
Applicant alleges that the combined disclosures of Eckhardt and Mino result in a multilayer PSA foam tape where the polymeric foam layer consists of a poly(meth)acrylate copolymer, and a crosslinking agent. However, the phrase “consists of” in claim 1 is sufficient to exclude a crosslinking agent from the polymeric foam layer. Therefore, the claim is not rendered obvious in view of the combined disclosures of Eckhardt and Mino.
The Examiner respectfully disagrees.
Eckhardt discloses that the polyacrylate resin of the foam layer is either non-crosslinked or crosslinked (paragraphs 78 and 79). The non-crosslinking indicates that the polymeric foam layer is devoid of the crosslinking agent.
Turning to the claim, the term “comprising” before “at least one reactive functional group” allows the inclusion of a free-radical curable functional group (Z) which is a crosslinking agent, in addition to the functional group (X). This interpretation is supported by claims 12 and 13 where the (meth)acrylate-based copolymer further includes a free-radical curable functional group (Z) which is a crosslinking agent.
Indeed, Eckhardt discloses that the polyacrylate resin of the foam layer can be crosslinked using a crosslinking agent comprising benzophenone and/or substituted benzophenone, and each of which corresponding to the claimed free-radical curable functional group Z (paragraph 85).
Regarding claims 2 and 3:
Applicant states that Eckhardt requires the PSA to include a block copolymer and a tackifier. Therefore, the combined teachings of Eckhardt and Mino fail to disclose a polymer base material for the PSA that is selected from the group consisting of poly(meth)acrylates, polyurethane, polyamines, polyamides, polyesters, polyethers, polyisobutylene, polyvinyls, polyvinylpyrrolidone, and any combinations or copolymers thereof, which is a closed group.
The examiner respectfully disagrees.
The Markush group indicates that the PSA can include at least one of the polymer base materials listed. However, it does not limit the PSA to only the polymer base material devoid of a tackifier and a block copolymer, contrary to the Applicant’s argument. The phrase “the first PSA skin layer and the second PSA skin layer independently comprise” allows the inclusion of the block copolymer and the tackifier in the respective PSA layer, in addition to the polymer base material.
As indicated in the paragraphs 179-182, Eckhardt discloses that the first or second PSA comprises: 20-80 wt% of a linear block copolymer, 20-70 wt% of a tackifier, 3-25 wt% of a (meth) acrylate polymer, based on the total weight of the PSA. The (meth) acrylate polymer reads on the claimed polymer base material.
Accordingly, the rejections over Eckhardt in view of Mino, and further in view of Satrijo have been maintained.
Claims 1-14, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0030839 to Satrijo et al. (hereinafter “Satrijo”) in view of Mino.
In the Office Action, claim 6 has been included in the rejection Satrijo in view of Mino (see reasons below).
As to claims 1-3, Satrijo discloses a multilayer PSA foam tape comprising: a PSA polymeric foam layer having a first major surface and a second major surface, a first PSA skin layer adjacent the first major surface of the polymeric foam layer, and a second PSA skin layer adjacent the first major surface of the polymeric foam layer (paragraph 61). The PSA polymeric foam layer is a multilayer foam structure comprising a first foam layer and a second foam layer (paragraph 28). The first foam layer comprises a styrenic block copolymer, an acrylate copolymer, expandable microspheres, a tackifier, and activated carbon (table 1).
Satrijo also discloses that the second foam layer is made of the same composition as the first foam layer or it can be selected from the materials listed in paragraph 27, and be free of the styrenic block copolymer, the acrylic copolymer or a combination thereof (paragraph 28).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form a second foam layer comprising an acrylic copolymer, additives used in the first foam layer in the absence of the styrenic block copolymer because such is acceptable and within the scope of the Satrijo reference.
The second foam layer reads on the claimed polymeric foam layer.
The foam layer’s acrylate copolymer comprises 94 parts by weight of 2EHA, 6 parts by weight of AA, and 0.15 parts by weight of photoinitiator per 100 parts of total monomer (phr), 0.4 phr of an antioxidant, and 0.006 phr 1,6-hexanediol diacrylate (paragraph 106).
Given a ratio of the acrylate copolymer and tackifier of 1:1 (table 1, foam # 1), relatively small amounts of the additives compared to the acrylate copolymer and the tackifier, as well as the absence of the styrenic block copolymer, the content of the acrylate copolymer would be approximately 40-50 wt% based on the weight of a second foamble composition prior to foaming.
Satrijo discloses that the first and second PSA skin layers independently comprise a polymer base material selected from the group consisting of an acrylic, a urethane, a polyamide or a polyester (paragraph 63).
Satrijo does not explicitly disclose the polymer base material having a Mw no greater than 500,000 g/mol.
Mino, however, discloses a crosslinked foamed PSA comprising an acrylate copolymer having a Mw of at least 100,000 g/mol, having excellent stress relaxing property, restoration property and solvent resistance (abstract). The Mw overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the molecular weight of the acrylate copolymer of the polymer foam layer will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a molecular weight is critical or provides unexpected results.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the polymer base material disclosed in Satrijo having a Mw of at least 100,000 g/mol disclosed in Mino motivated by the desire to provide a polymeric foam layer excellent in stress relaxing property, restoration property and solvent resistance.
As to claim 4, 5, 16 and 19, Satrijo discloses that the PSA foam comprises expandable microspheres (paragraph 44).
As to claim 6, Satrijo discloses that the PSA polymeric foam layer is a multilayer foam structure comprising a first foam layer and a second foam layer (paragraph 28). The first foam layer comprises a styrenic block copolymer, an acrylate copolymer, expandable microspheres, a tackifier, and activated carbon (table 1).
Satrijo also discloses that the second foam layer is made of the same composition as the first foam layer or it can be selected from the materials listed in paragraph 27 and be free of the styrenic block copolymer, the acrylic copolymer or a combination thereof (paragraph 28).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form a second foam layer comprising an acrylic copolymer, additives used in the first foam layer in the absence of the styrenic block copolymer because such is acceptable and within the scope of the Satrijo reference.
The second foam layer reads on the claimed polymeric foam layer.
The foam layer’s acrylate copolymer comprises 94 parts by weight of 2EHA, 6 parts by weight of AA, and 0.15 parts by weight of photoinitiator per 100 parts of total monomer (phr), 0.4 phr of an antioxidant, and 0.006 phr 1,6-hexanediol diacrylate (paragraph 106).
Given a ratio of the acrylate copolymer and tackifier of 1:1 (table 1, foam # 1), relatively small amounts of the additives compared to the acrylate copolymer and the tackifier, as well as the absence of the styrenic block copolymer, the content of the acrylate copolymer would be approximately 40-50 wt% based on the weight of a second foamble composition prior to foaming.
As to claims 7-11, 17, 18, 20 and 21, Satrijo discloses that the PSA foam comprises 2-ethyl hexyl acrylate monomer, and acrylic acid monomer corresponding to the claimed carboxylic acid functional group X (paragraph 106). The PSA foam also includes a photocrosslinker comprising benzophenone or thioxanthone corresponding to the claimed free-radical curable functional group Z (paragraphs 34-38).
As to claims 12 and 13, Satrijo discloses that the PSA foam contains a photocrosslinker monomer comprising ethylenically unsaturated compound containing benzophenone or thioxanthone, corresponding to the claimed element (iii) (paragraphs 34-38).
As to claim 14, Satrijo does not explicitly disclose the foam tape exhibiting a VOC content of less than 500 ppm, or a FOG content of less than 500 ppm, according to Test Method VDA278.
However, it appears that the foam tape of Satrijo in view of Mino meets all structural limitations and chemistry required by the claims.
The multilayer PSA foam tape comprises: a PSA polymeric foam layer having a first major surface and a second major surface, a first PSA skin layer adjacent the first major surface of the polymeric foam layer, and a second PSA skin layer adjacent the first major surface of the polymeric foam layer. The PSA foam layer contains expandable microspheres, a tackifier, and activated carbon. The PSA foam layer comprises 60 wt% or more of a (meth)acylate ester monomer, 0.1 to 30 wt% of an acrylic acid monomer corresponding to the claimed reactive functional group X. The PSA foam layer further includes ethylenically unsaturated monomer containing benzophenone or thioxanthone as a photocrosslinker. The resulting acrylate copolymer has a Mw greater than 100,000 g/mol.
Therefore, the examiner takes the position that the VOC content of less than 500 ppm, or a FOG content of less than 500 ppm, according to Test Method VDA278 would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Response to Arguments
Applicant alleges that the foam of Satrijo requires a styrenic block copolymer and a cross-linking agent. However, the phrase “consists of” in claim 1 is sufficient to exclude the styrenic block copolymer and a crosslinking agent from the foam. Therefore, the claim is not rendered obvious in view of the combined disclosures of Satrijo and Mino.
The Examiner respectfully disagrees.
Regarding the issue of the crosslinking agent:
The examiner interprets that the limitation of “the (meth)acrylate-based copolymer comprising” allows the inclusion of a free-radical curable functional group (Z), that is a crosslinking agent, in addition to the functional group (X). The interpretation is supported by claims 12 and 13 where the (meth)acrylate-based copolymer further includes a free-radical curable functional group (Z), that is a crosslinking agent.
Satrijo discloses that the PSA foam consists of 2-ethyl hexyl acrylate monomer, acrylic acid monomer, and additives in the presence of a photocrosslinker comprising benzophenone or thioxanthone (paragraphs 34-38 and 106). The acrylic acid corresponds to the claimed carboxylic acid functional group X while the photocrosslinker reads on the claimed free-radical curable functional group Z.
Regarding the issue of the styrenic block copolymer:
Satrijo discloses that the PSA polymeric foam layer is a multilayer foam structure comprising a first foam layer and a second foam layer (paragraph 28). The first foam layer comprises a styrenic block copolymer, an acrylate copolymer, expandable microspheres, a tackifier, and activated carbon (table 1).
Satrijo also discloses that the second foam layer is made of the same composition as the first foam layer or it can be selected from the materials listed in paragraph 27 and be free of the styrenic block copolymer, the acrylic copolymer or a combination thereof (paragraph 28).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form a second foam layer comprising an acrylic copolymer, additives used in the first foam layer in the absence of the styrenic block copolymer because such is acceptable and within the scope of the Satrijo reference.
The second foam layer reads on the claimed polymeric foam layer.
The foam layer’s acrylate copolymer comprises 94 parts by weight of 2EHA, 6 parts by weight of AA, and 0.15 parts by weight of photoinitiator per 100 parts of total monomer (phr), 0.4 phr of an antioxidant, and 0.006 phr 1,6-hexanediol diacrylate (paragraph 106).
Given a ratio of the acrylate copolymer and tackifier of 1:1 (table 1, foam # 1), relatively small amounts of the additives compared to the acrylate copolymer and the tackifier, as well as the absence of the styrenic block copolymer, the content of the acrylate copolymer would be approximately 40-50 wt% based on the weight of a second foamble composition prior to foaming.
Hence, claim 6 should be included in the rejection over Satrijo in view of Mino set forth in the Office Action mailed on 07/21/2026 for the reasons discussed above.
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 Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788