DETAILED ACTION
Applicant’s amendment submitted on June 29, 2026 (“amendment”) in response to the Office action (OA) mailed on March 31, 2026 (“previous OA”) have been fully considered.
In view of the amendment, the objection to claims as set forth in the previous OA is withdrawn.
In view of the amendment, the rejection of claims 1-4 under 35 USC 102(a)(1) over Hiramatsu et al. (US 20070218276 A1) as set forth in the previous OA is withdrawn.
In view of the amendment, the rejection of claims 1-9 are rejected under 35 USC 103 as being unpatentable over Dollase et al. (US 20150037560 A1) in view of Watanabe (WO 2021039878 A1) is withdrawn.
In view of the amendment, a new rejection under 35 USC 103 over Dollase et al. (US 20150037560 A1) in view of Watanabe (WO 2021039878 A1) and Takizawa et al. (US 20030008140 A1) is introduced.
In view of the amendment, a new rejection under 35 USC 112(a) is introduced.
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.
Claims 1-7 and 9 are 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.
Claim 1 recites “at least one tackifier comprising at least one (meth)acrylate resin”. This recitation means there are more than one (meth)acrylate resin present in the tackifier for which there is no support. The specification provides support to claim at least one tackifier (see original claim 8) and the at least one tackifier comprises a (meth)acrylate resin (see 0100 of the published application). However, there is no support to claim “at least one (meth)acrylate resin”.
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 1-7 and 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) and Takizawa et al. (US 20030008140 A1).
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 least one PU and/or silicone-based filler and at least one tackifier comprising at least one (meth)acrylate resin”.
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).
Further, as to claim 1, Dollase as modified by Watanabe is silent as to disclosing “at least one tackifier comprising at least one (meth)acrylate resin”.
Takizawa discloses acrylic PSA composition containing adherent polymer (a) comprising (meth)acrylic ester component, (b) a tackifier resin comprising (meth)acrylic ester component as principal structural unit ((meth)acrylate resin tackifier), and (c) monomers whose principal component is a (meth)acrylic ester (abstract). Takizawa further discloses that the addition of the tackifier resin (b) in the PSA exhibits strikingly enhanced bond strength to polyolefins which is two or more times than when the tackifier resin (b) is not added (0180).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a tackifier such as (meth)acrylate resin disclosed by Takizawa in the acrylic based PSA of Dollase, motivated by the desire to achieve enhanced bond strength to polyolefin substrate that is two or more times than when the tackifier resin (b) is not added.
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.
Response to Arguments
Applicant's arguments filed in the amendment have been fully considered but they are not persuasive.
With respect to the 35 USC 103 rejection of claims 1-9 as being unpatentable over Dollase et al. (US 20150037560 A1) in view of Watanabe (WO 2021039878 A1) as set forth in the previous OA, applicant argues by pointing to paragraph 0031 in Watanabe that Watanabe explicitly warns skilled artisan that incorporating fillers into an adhesive composition typically degrades its adhesive properties. Therefore, one of ordinary skill in the art would not be motivated to modify Dollase and Watanabe. Page 7 of the amendment.
The examiner respectfully disagrees. The examiner submits that paragraph 0031 of Watanabe further states “…However, since the particles have excellent dispersibility in the adhesive composition, a decrease in adhesive performance due to adding the particles is suppressed and it is possible to ensure the adhesive strength of the adhesive tape.” Accordingly, applicant’s argument is not found persuasive.
Applicant points to Table 1 of the present application and argues that Inventive Examples when compared with Comparative Example demonstrate highly unexpected, synergistic performance due to specific combination of (meth)acrylate resin tackifier and polyurethane or silicone based filler within a poly(meth)acrylate matrix. Pages 8-9 of the amendment.
The examiner respectfully disagrees. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." See MPEP 716.02(d). At present, the claimed invention is broader in scope than the alleged unexpected results. Specifically, Inventive Examples 1-5 pointed by applicant use specific PSA compound (e.g. see paragraphs 0158-0159 of the published application) whereas the claimed invention is broader in scope. Accordingly, the unexpected results are not commensurate in scope with the claimed invention. As such, applicant’s argument is not found persuasive.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANISH P DESAI/Primary Examiner, Art Unit 1788 August 17, 2026
Prosecution Insights