The arguments and amendments submitted 12/09/2025 have been considered. 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, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kopke (US PG Pub 2014/0242377) in view of Blomker (US PG Pub 2017/0137246).
Regarding claim 1, Kopke teaches a pressure-sensitive adhesive tape (abstract, para. 0062) comprising a paper base material (para. 0067) and a pressure-sensitive adhesive layer provided on a surface of the paper base material (as shown in Figs. 1-2),
the pressure-sensitive adhesive layer comprising a rubber component comprising natural rubber (para. 0024, including various types including crepe rubber which is one type of natural rubber in the instant disclosure),
the pressure-sensitive adhesive layer having a biobased content of 95% or more (para. 0019), thus falling within the claimed range, SP adhesive force of 2.67 N/cm (example 1 in the 1st row of the table in para. 0151), which is greater than the minimum level recited of 4 N/24 mm, which equals 1.6 N/cm, and a ball tack value of 49.8 to 59.4 (table in para. 0151), which falls within the recited range of 8 or more.
Kopke does not explicitly teach an amount of a residual solvent in the pressure-sensitive adhesive layer is less than 10 ppm.
However, Blomker teaches that when making adhesive tapes using natural rubber adhesives “the solvent is largely eliminated from the production process” and that “if residual solvents are present in the adhesive compound” it is only in “the minimal % or ppm range” of solvents per para. 0032, “with only a very small amount of residual solvent…most preferably less than 0.2%” per para. 0033, wherein 0.2% = 2000 ppm, thus encompassing the claimed range and rendering it obvious for the reasons described below. Furthermore, Blomker teaches that coating of the base material with the adhesive can be carried out in a solvent-free manner (para. 0120), wherein this condition falls within the claimed range.
A prior art range which encompasses, partially overlaps, or touches the claimed range is sufficient to establish a prima facie case of obviousness, in the absence of any unexpected results. See MPEP § 2144.05.I and In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003)
In view of Blomker’s teachings and the above considerations, it would have been obvious to one of ordinary skill in the adhesive tape arts to make Kopke’s adhesive tape with very low (or even zero) amount of residual solvent to ensure the adhesive is not excessively runny during application of the adhesive to the base material.
Regarding the last paragraph of claim 1, Kopke implicity teaches wherein an amount of unmelted materials, which is a value obtained by dividing the number of the unmelted materials of the rubber component having a long diameter of 100 microns or more observed per a 50 mm square in the pressure-sensitive adhesive layer by a thickness (microns) of the pressure-sensitive adhesive layer, is 0.1 or less for the following reasons. First, the adhesive material composition and adhesive layer parameters of the adhesive tape of Kopke as modified by Blomker match and/or fall within the ranges defined by the recitations in claim 1, as described above. Furthermore, Kopke’s adhesive composition is kneaded (e.g. para. 0136) and melted prior to coating on the base material to form the layer (para. 0077). Therefore, since the composition has been melted, there cannot be any unmelted material remaining. Lastly, the courts have held that if the composition is physically the same as that claimed, as in the instant case comparing the adhesive composition of Kopke as modifed by Blomker to the one recited in claim 1, 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 for further details.
Regarding claim 4, Kopke does not explicitly teach this feature but does teach that viscosity is a result effective variable which provides wet of the application surface even under low applied pressure (para. 0003), thus rendering this feature obvious optimization of a result-effective variable.
Regarding claim 5, Kopke teaches the paper base material is kraft paper (para. 0080).
Response to Arguments
Regarding presently amended claim 1, Applicant presents an argument contending that Kopke does not teach or suggest the requirement added to claim 1 that an amount of a residual solvent in the pressure-sensitive adhesive layer is less than 10 ppm, and therefore Kopke does not teach or suggest all of the materials and key parameters recited in claim 1 and cannot implicitly teach that the amount of unmelted materials is 0.1 or less.
However, this argument is not persuasive because it does not consider that the requirement that an amount of a residual solvent in the pressure-sensitive adhesive layer is less than 10 ppm is an obvious modification to Kopke in view of Blomker for the reasons described in the rejection above, necessitated by the present amendment to claim 1 reciting a new combination of features.
Regarding presently amended claim 1, Applicant presents an argument contending that the claimed tape provides unexpected improvements to corrugated cardboard packaging on the basis of results presented for Examples 4-7 and 9-11 in Table 1 of the instant disclosure.
However, this argument is not persuasive for the following reasons:
The remarks and specification are missing identification and comparison with the closest prior art.
The description of the corrugated cardboard packing performance in the specification for Table 1 includes vague and highly subjective characterizations of performance (e.g. “a certain level of the pressure-sensitive adhesive performance could be maintained over a long period of time” in para. 0109). What is this certain level of performance and how was it measured? How long is considered a long period of time? Where the measurement conditions consistent across each ranking?
The presently filed remarks include a statement that each of the examples has the same resin composition. However, this is not accurate, as Table 1 shows composition differences among the different examples (e.g. differing amounts of tackifier components between examples 9-11 as well as different kneading conditions which could also affect results obtained)
The remarks do not describe which of the claimed ranges are critical for providing the asserted unexpected results.
For any ranges considered critical, the results must span the entire range and include a sufficient number of tests both inside and outside the claimed range to demonstrate the criticality of the claimed range.
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.
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/JRS/
Examiner
Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745