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 .
Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated April 28, 2026. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
Examiner’s Note
Claims 8 – 13 and 20 are all labeled as “(Currently Amended)”. It appears that none of the claims have been amended and the claim identifier is incorrect.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 13 and 18 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The phrase “An adhesive tape support substrate, comprising an outer surface, an outwardly facing surface and/or an outermost surface of the support substrate is or visually appears black or near black in colour, or is or appears visually as another colour other than black or near black” in claims 1 and 18 is unclear, which render the claims vague and indefinite. It is still unclear from the claim language what is being claimed as the preamble is not limited to a core with a tape wrapped around the surface of said core. The preamble still may read to include a substrate coated with an adhesive that is used to form a tape. Therefore, it is unclear to one of ordinary skill in the art what is being claimed.
The phrase “wherein approximately wherein 30%” in claim 6 is unclear, which render the claims vague and indefinite. It is still unclear from the claim language what is being claimed with the above phrase.
Claims 2 – 13, 19, and 20 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, due to their dependency on the above rejected claims.
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 – 13, 16 and 18 - 20 are rejected under 35 U.S.C. 103 as being unpatentable over BR 202016018386.
A machine-generated translation of BR 202016018386 accompanied the office action dated January 28, 2026. In reciting this rejection, the examiner will cite this translation.
BR 202016018386 discloses an adhesive tape support substrate for supporting adhesive tape in use (Figure 1, #1; Abstract), comprising an outer surface, an outwardly facing surface and/or an outermost surface of the support substrate is or visually appears black or near black in colour (Figure 1, #1; Abstract), or an outer surface, an outwardly facing surface and/or an outermost surface of the support substrate wherein the entire or substantially the entire surface area of the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black or near black in colour, or is or appears visually as another colour other than black or near black (Figure 1, #1; Abstract) as in claims 1 and 18. With respect to claim 2, wherein at least 30% of the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black (Figure 1, #1; Abstract). Regarding claims 3 and 19, wherein approximately 90% or more of the surface area of the outer surface, outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black or near black in colour (Figure 1, #1; Abstract). In claim 5, the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate is a matte surface or a gloss surface (Figure 1, #1; Abstract, wherein plastic may be either matte or glossy; Page 1, lines 19 - 22). With respect to claims 8 and 20, the adhesive tape support substrate includes a surface that is or appears black or near black in colour (Figure 1, #1; Abstract). Regarding claim 9, a surface or layer, the outermost surface or layer and/or an outwardly facing surface or layer of the adhesive tape support substrate is provided with, consists of and/or includes a heat resistant or heat protective layer, coating or surface (Figure 2, #2). For claim 10, the adhesive tape is wound onto or around the adhesive tape support substrate; or wherein the adhesive tape is wound onto or around the adhesive tape support substrate multiple times to provide a multi-layered adhesive tape product (Figure 2, #2). In claim 11, the support substrate is cylindrical or substantially cylindrical in shape (Figures 1 and 2). With regard to claim 12, the adhesive tape is transparent or substantially transparent (Figure 1, #2). As in claim 13, the adhesive tape is single sided adhesive tape (Figure 1, #2). BR 202016018386 further disclose an adhesive tape, said adhesive tape wound around an adhesive tape support substrate according to claim 1 (Figures 1 and 2, #2) as in claim 16. However, BR 202016018386 fails to disclose a light reflection value (LRV) of approximately 65% or less and/or a light absorption value (LAV) of approximately 35% or more of light, approximately 90% or more of the surface area of the outer surface, outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black or near black in colour, or is or appears visually as another colour other than black or near black and has a LRV of approximately 65% or less and/or a LAV of approximately 35% or more; the outwardly facing surface and/or the outermost surface of the support substrate has a LRV approximately 20% or less and a LAV of approximately 80% or more; wherein 30% or more surface area of the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate, has an average LRV of approximately 25% or less across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm- 700nm), and an average LAV of approximately 75% or more across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm), the average LRV is 5% or less, across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm); and wherein the average LAV is 80% or more, 85% or more, 90% or more or 95% or more, across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm).
With regard to the limitations of “a light reflection value (LRV) of approximately 65% or less and/or a light absorption value (LAV) of approximately 35% or more of light, approximately 90% or more of the surface area of the outer surface, outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black or near black in colour, or is or appears visually as another colour other than black or near black and has a LRV of approximately 65% or less and/or a LAV of approximately 35% or more; the outwardly facing surface and/or the outermost surface of the support substrate has a LRV approximately 20% or less and a LAV of approximately 80% or more; wherein 30% or more surface area of the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate, has an average LRV of approximately 25% or less across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm- 700nm), and an average LAV of approximately 75% or more across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm), the average LRV is 5% or less, across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm); and wherein the average LAV is 80% or more, 85% or more, 90% or more or 95% or more, across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm)”, although BR 202016018386 does not explicitly teach the above limitations, it is reasonable to presume that said limitations are inherent to the invention. Support for said presumption is found in the use of similar materials (i.e. an outer surface, an outwardly facing surface and/or an outermost surface of the support substrate is or visually appears black or near black in colour having a cylindrical shape that is covered by a transparent adhesive article) and in the similar production steps (i.e. a molding process) used to produce the adhesive tape support. The burden is upon the Applicant to prove otherwise. MPEP 2112.
Claims 1 – 11, 13, 16, and 18 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006298991 A.
A machine-generated translation of JP 2006298991 A accompanied the office action dated January 28, 2026. In reciting this rejection, the examiner will cite this translation.
JP 2006298991 A discloses an adhesive tape support substrate for supporting adhesive tape in use (Figure 1, #1; Abstract), comprising an outer surface, an outwardly facing surface and/or an outermost surface of the support substrate is or visually appears black or near black in colour ((Page 3, line 21 to Page 4, line 33), or an outer surface, an outwardly facing surface and/or an outermost surface of the support substrate wherein the entire or substantially the entire surface area of the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black or near black in colour, or is or appears visually as another colour other than black or near black (Page 3, line 21 to Page 4, line 33) as in claims 1 and 18. With respect to claim 2, wherein at least 30% of the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black (Page 3, line 21 to Page 4, line 33). Regarding claims 3 and 19, wherein approximately 90% or more of the surface area of the outer surface, outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black or near black in colour (Page 3, line 21 to Page 4, line 33). In claim 5, the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate is a matte surface or a gloss surface (Page 3, line 21 to Page 4, line 33). With respect to claims 8 and 20, the adhesive tape support substrate includes a surface that is or appears black or near black in colour (Page 3, line 21 to Page 4, line 33). Regarding claim 9, a surface or layer, the outermost surface or layer and/or an outwardly facing surface or layer of the adhesive tape support substrate is provided with, consists of and/or includes a heat resistant or heat protective layer, coating or surface (Page 3, line 21 to Page 4, line 33, wherein the substrate may contain additional materials to give it different properties). For claim 10, the adhesive tape is wound onto or around the adhesive tape support substrate; or wherein the adhesive tape is wound onto or around the adhesive tape support substrate multiple times to provide a multi-layered adhesive tape product (Page 8, lines 19 – 26). In claim 11, the support substrate is cylindrical or substantially cylindrical in shape (Page 8, lines 19 – 26, wherein a roll is cylindrical). As in claim 13, the adhesive tape is single sided adhesive tape (Abstract). JP 2006298991 A further disclose an adhesive tape, said adhesive tape wound around an adhesive tape support substrate according to claim 1 (Page 8, lines 19 – 26, wherein a roll is cylindrical) as in claim 16. However, JP 2006298991 A fails to disclose a light reflection value (LRV) of approximately 65% or less and/or a light absorption value (LAV) of approximately 35% or more of light, approximately 90% or more of the surface area of the outer surface, outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black or near black in colour, or is or appears visually as another colour other than black or near black and has a LRV of approximately 65% or less and/or a LAV of approximately 35% or more; the outwardly facing surface and/or the outermost surface of the support substrate has a LRV approximately 20% or less and a LAV of approximately 80% or more; wherein 30% or more surface area of the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate, has an average LRV of approximately 25% or less across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm- 700nm), and an average LAV of approximately 75% or more across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm), the average LRV is 5% or less, across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm); and wherein the average LAV is 80% or more, 85% or more, 90% or more or 95% or more, across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm).
With regard to the limitations of “a light reflection value (LRV) of approximately 65% or less and/or a light absorption value (LAV) of approximately 35% or more of light, approximately 90% or more of the surface area of the outer surface, outwardly facing surface and/or the outermost surface of the support substrate is or visually appears black or near black in colour, or is or appears visually as another colour other than black or near black and has a LRV of approximately 65% or less and/or a LAV of approximately 35% or more; the outwardly facing surface and/or the outermost surface of the support substrate has a LRV approximately 20% or less and a LAV of approximately 80% or more; wherein 30% or more surface area of the outer surface, the outwardly facing surface and/or the outermost surface of the support substrate, has an average LRV of approximately 25% or less across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm- 700nm), and an average LAV of approximately 75% or more across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm), the average LRV is 5% or less, across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm); and wherein the average LAV is 80% or more, 85% or more, 90% or more or 95% or more, across the entire, or substantially the entire visible part of the electromagnetic spectrum (400nm-700nm)”, although JP 2006298991 A does not explicitly teach the above limitations, it is reasonable to presume that said limitations are inherent to the invention. Support for said presumption is found in the use of similar materials (i.e. an outer surface, an outwardly facing surface and/or an outermost surface of the support substrate is or visually appears black or near black in colour having a cylindrical shape) and in the similar production steps (i.e. a molding process) used to produce the adhesive tape support. The burden is upon the Applicant to prove otherwise. MPEP 2112.
Response to Arguments
Applicant's arguments filed April 28, 2026 have been fully considered but they are not persuasive.
In response to Applicant’s argument that “BR202016018386 discloses a cylindrical tube for winding a textile line around the same. The cylindrical tube is black and has a single adhesive label applied to the same to allow identification of the textile line that is wound around it in use. This document does not disclose or teach an adhesive tape core for supporting adhesive tape in use, comprising an outer surface, an outwardly facing surface and/or an outermost surface of the support substrate. It is the combination of the adhesive tape core being black and/or having a LAV or LRV within the claimed range that makes the present invention unique and solves a specific problem relating to a roll of adhesive tape (i.e. of being able to identify the outermost free end of the adhesive tape when wound onto the roll in multiple layers). Thus, BR 202016018386 does not teach to the problem or solution of the present invention. Since the textile line is likely to be opaque, there would be no incentive to the skilled person to adapt the invention in BR 202016018386 for use with an adhesive tape and there is no teaching in the reference that would make it obvious for a skilled person to use the reference as a starting point or to understand there is a problem with finding the free end when adhesive tape is used on a substrate. As such, amended claim 1 is both novel and inventive over BR 202016018386. The present invention is both surprising and unexpected and solves a long felt need in the technical field in question.”, the Examiner respectfully disagrees. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Also, this is not deemed persuasive since arguments cannot take the place of evidence in the record to overcome a rejection. See MPEP 2145. Applicant has provided no evidence that the support substrate of BR 202016018386 would not function as the claimed invention.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., tape rolled on a core) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 1 and 18. When reading the preamble in the context of the entire claim, the recitation “An adhesive tape support substrate” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
In response to Applicant’s argument that “Thus, there is no teaching in '991 to an adhesive tape support substrate (or roll core) about which the adhesive tape (base material and adhesive layer) is wound around multiple times being coloured or having a required light reflection or light absorption value as per the claimed invention. The tape roll arrangement in '991 is for a different technical purpose to the present invention, it relates to a different problem and solution to the present invention and use of the arrangement of '991 would not create a solution as per the presently claimed invention of allowing the end of the tape to be visualized using the colour of the roll core on which the adhesive tape is wound. The present invention is therefore novel and inventive over '991.”, the Examiner respectfully disagrees. As stated above, “An adhesive tape support substrate, comprising an outer surface, an outwardly facing surface and/or an outermost surface of the support substrate is or visually appears black or near black in colour, or is or appears visually as another colour other than black or near black” in claims 1 and 18 is unclear, which render the claims vague and indefinite. It is still unclear from the claim language what is being claimed as the preamble is not limited to a core with a tape wrapped around the surface of said core. The preamble still may read to include a substrate coated with an adhesive that is used to form a tape. Therefore, it is unclear to one of ordinary skill in the art what is being claimed. This is also not deemed persuasive since arguments cannot take the place of evidence in the record to overcome a rejection. See MPEP 2145. Applicant has provided no evidence that the support substrate of JP 2006298991 would not function as the claimed invention.
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 Patricia L Nordmeyer whose telephone number is (571)272-1496. The examiner can normally be reached 10am - 6:30pm EST, Monday - Friday.
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/ Primary Examiner, Art Unit 1788 May 27, 2026
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