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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9 in the reply filed on February 2, 2026 is acknowledged. The traversal is on the ground(s) that proper restriction requirement requires that the invention must be independent or distinct and there must be a serious burden on the examiner if restriction is not required. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). The test for lack of unity analysis is whether or not special technical features can be established. It is noted that inventions listed as Groups I-IV do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in the Office action mailed on December 9, 2025.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 2, 2026.
Information Disclosure Statement
The listing of references in the specification (e.g. see paragraph 0092 of the published application) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claims 6 and 9 are objected to because of the following informalities:
As to claim 6, at line 2, insert “further” before “comprises” in order to better characterize the claimed invention.
As to claim 9, replace “the” before “radical” with “a”.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hiramatsu et al. (US 20070218276 A1).
As to claim 1, Hiramatsu teaches a double-faced pressure sensitive adhesive (PSA) tape or sheet, which comprises a PSA layer (web-form PSA compound) disposed on one surface of the base material (abstract). Further, Hiramatsu teaches that the PSA layer includes an acrylic polymer (A1) (poly(meth)acrylate) and spherical shape or ball shape silicone rubber fine particles (A2) (silicone-based filler) (0043-0045, 0134). Further, as to claim 1, Hiramatsu discloses that the PSA layer includes white colorant (0093) such as polyurethane resin particles (polyurethane based filler) (0212).
As to claim preamble “A web-form pressure sensitive adhesive (PSA) compound”, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
The examiner submits that preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. web-form PSA compound, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art of Hiramatsu and further that the prior art structure which is a PSA layer identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
As to claim 2, Hiramatsu as set forth previously discloses spherical shape or ball shape silicone rubber fine particles (A2) (silicone-based filler) (0043-0045, 0134), which meets claimed silicone-based filler comprising silicone beads.
As to claim 3, Hiramatsu teaches that the average particle size of the silicone rubber particles are 1 to 10 μm (0135), which is within the claimed range of 1 to 80 μm.
As to claim 4, Hiramatsu teaches a PSA composition containing 100 parts by weight of acrylic polymer, 5 parts by weight of silicone rubber fine particles, 0.02 parts by weight of epoxy-type crosslinking agent, and 1 part by weight of an isocyanate type crosslinking agent (0305). As such, calculated wt% of the silicone rubber fine particles in the PSA compound of Hiramatsu is 4.72 wt% (calculated as (5/(100+5+0.02+1)) * 100 = 4.72%), which is within the claimed range of 0.1-10% by weight based on total weight of the PSA compound.
Based on the above, Hiramatsu anticipates the claimed invention.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Dollase et al. (US 20150037560 A1) in view of Watanabe (WO 2021039878 A1; US 20220251428 A1 is relied upon as English equivalent document in the Office action).
As to claim 1, Dollase discloses a pressure-sensitive adhesive tape including a layer of PSA (web-form PSA compound) (abstract and 0110). Further, the PSA of Dollase includes at least one poly(meth)acrylate (abstract and 0013). The adhesive tape of Dollase can be used in sectors of technology where the use of adhesive tapes to join components is on the increase e.g. automobile (0001-0003).
As to claim 1, the difference between the claimed invention and the prior art of Dollase is that Dollase is silent as to disclosing at lest one PU and/or silicone-based filler.
Watanabe discloses adhesive tape having excellent drop impact resistance by having a predetermined adhesive layer (0016). Further, Watanabe discloses that since the adhesive tape has excellent workability and high adhesive reliability, it is widely used in joining means in various industrial fields such as OA equipment, IT or home appliances, and automobiles for fixing parts (0002). Further, the adhesive of Watanabe includes acrylic based adhesive resin (0157-0158) and particles having an average particle diameter of 4-40 μm and a surface of which is a silicone resin (silicone-based filler) (0026). Moreover, Watanabe discloses commercially available products such as KMP-601 for silicone particles (0144), which is identical to silicone based filler disclosed in the present application (see 0148 of the published application disclosing KMP601 as silicone based filler).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the silicone particles and its amount as disclosed by Watanabe and use it in the PSA of Dollase, motivated by the desire to provide drop impact resistance and to suppress peeling of the PSA from adherend (0140 of Watanabe).
As to claim 2, Watanabe as set forth previously discloses identical silicone filler as claimed. Thus, Watanabe discloses silicone filler comprises silicone beads as claimed.
As to claim 3, Watanabe discloses that the particles have average particle diameter of 4 to 40 μm (0138), which is within the claimed range of 1 to 80 μm.
As to claim 4, Watanabe discloses particle content of 3-50 parts by mass per 100 parts by mass of the adhesive resin (0026), which converts to 2.91 wt% to 33.33 wt% (calculated as 3/103 * 100 = 2.91% and 50/150 * 100 = 33.33%). The claimed range of 0.1 to 10 wt% overlaps or lies within the range disclosed by Watanabe, such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 5, Dollase discloses that that the PSA has a thickness of from 100 μm to 5,000 μm (0110). The claimed range of 50-1,500 μm overlaps or lies within the range disclosed by Dollase, such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 6, Dollase discloses this claim at 0013.
As to claims 7 and 8, Dollase discloses these claims in abstract and at 0013.
As to claim 9, Dollase discloses this claim in claim 5.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO2019020363A1 discloses web-like adhesive compound foamed with microballoons. Ziemelis (US 4370160) discloses process for preparing silicone microparticles. Kanamaru et al. (US 20080308225 A1) discloses adhesive composition suitable to be applied by screen printing. Petersen et al. (US 20230220242 A1) discloses poly(meth)acrylate based PSA comprising at least one acrylonitrile-butadiene rubber.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
March 25, 2026