DETAILED ACTION
This is an Office action based on application number 18/294,142 filed 31 January 2024, which is a national stage entry of PCT/US2022/038800 filed 29 July 2022, which claims priority to US Provisional Application No. 63/228,246 filed 2 August 2021. Claims 85-101 are pending. Claims 1-84 are canceled.
Amendments to the claims, filed 15 May 2024, have been entered into the above-identified application.
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 of Group III, claims 90-94 and 100 in the reply filed on 2 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 85-89, 95-99, and 101 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2 February 2026.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 90-94 and 100 are rejected under 35 U.S.C. 103 as being unpatentable over Lipman (US Patent Application Publication No. US 2007/0078448 A1) (Lipman) in view of Balijepalli et al. (US Patent Application Publication No US 2015/0065613 A1) (Balijepalli).
Regarding instant claim 90-94:
Lipman discloses a fluid-absorbing pressure sensitive adhesive material comprising at least one continuous phase (paragraph [0025]).
Lipman further discloses the continuous phase comprises at least 10 to about 60 wt% of a low-molecular weight polyisobutylene (PIB) having a viscosity average molecular weight of about 30,000 to about 70,000 (paragraph [0043]). This corresponds to Component (b) of claim 90.
Lipman further discloses that the continuous phase comprises a high molecular weight PIB having a viscosity average molecular weight of about 200,000 to about 600,000 in an amount of from 0% to 50% of the total weight of the continuous phase (paragraph [0045]). This corresponds to component (a) of claim 90.
It is noted that the amounts and molecular weights disclosed by Lipman overlap or include the ranges recited by claim 90; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Lipman further discloses that fumed silica is useful as an additional optional to increase the shear strength of the continuous phase and improve cold flow performance (paragraph [0074]).
Lipman does not explicitly disclose the surface-treated silica and the amount thereof.
However, Balijepalli discloses an adhesive composition comprising at least a first filler to improve the viscosity of the composition (paragraph [0049]).
Balijepalli further discloses that said fillers are inclusive of fumed silica and fumed silica that has been reacted with a compound (usually an organosilicon compound such as dimethylchlorosilane, trimethoxyoctylsilane, polydimethylsiloxane, or hexamethyldisilazane) (paragraph [0050]).
Balijepalli further discloses that the amount of the first filler is used in an amount of from 1 wt% to 40 wt% based on the total weight of the composition (paragraph [0054]). It is noted that the amount of filler disclosed by Balijepalli includes the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the fumed silica reacted with the organosilicon compound in the amount prescribed by Balijepalli in the composition of Lipman. The motivation for doing so would have been that the fumed reacted fumed silica is a functionally equivalent adhesive filler to the fumed silica desired by Lipman that also provides improved viscosity.
Therefore, it would have been obvious to combine Balijepalli with Lipman to obtain the invention as specified by the instant claims.
Regarding instant claim 100:
Lipman further discloses that the composition is pressed between two sheets of silicone release paper (paragraph [0111]).
The structure of the composition pressed between two sheets meets the claimed tape.
One sheet of silicone release paper meets the claimed substrate necessarily comprising an upper and lower surface.
The other sheet of silicone release paper meets the claimed release liner having a surfaced that contacts at least a portion of the composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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.
/TAM/Examiner, Art Unit 1788 02/20/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788