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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 12, 2025 has been entered.
Status of the Claims
By amendment filed December 10, 2025, claims 1, 3-8, 15 and 19 have been amended, claims 20-26 are new and claims 9, 12-14 and 16 have been cancelled. Claims 1, 3 through 8, 10, 11, 15 and 17 through 26 are currently pending.
Response to Arguments
Applicant's arguments filed December 10, 2025 have been fully considered but they are not fully persuasive. Applicant’s arguments and amendment have overcome the 112 rejections of the claims however applicant’s arguments against the 103 rejection of the claims are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Furthermore, applicant’s argument that the claimed distance range and upper temperature range for curing of the UV-cuarable holt melt produced unexpected results is not persuasive because applicant has not provided any objective evidence that the claimed ranges produced unexpected and superior results over the prior art commensurate with the scope of the claims. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."). Furthermore, "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). See MPEP section 716.02(b). As was discussed in the previous Office Action, temperature of the adhesive was a cause effective variable affecting the viscosity and melting state of the adhesive and therefore it would have been obvious to have determined an optimal temperature during curing through routine experimentation.
Furthermore, new reference Hosokawa (U.S. Patent # 6,261,685) is being cited to show that the distance between a radiation source and a substrate during UV curing was a cause effective variable affecting the UV intensity.
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.
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.
Claims 1, 3-8, 10, 15, 17, 20, 21 and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Yutou et al (U.S. Patent Publication No. 2014/0154450) in view of Beyers et al (U.S. Patent Publication No. 2011/0014404).
In the case of claim 1, Yutou teaches a process for manufacturing an adhesive-coated polymer substrate in the form of a polyvinyl chloride-based adhesive tape or sheet (Abstract). The method of Yutou comprised providing a base material layer comprised of a polymer/polyvinyl chloride-based resin and an additive in the form of a plasticizing agent (Page 2 Paragraph 0038). The base material layer of Yutou further comprised a carbon black pigment (Page 3 Paragraph 0056 and 0059). Yutou teaches that the tape was formed by applying the adhesive onto the base material layer followed by drying/curing for form an adhesive layer (Page 6 Paragraph 0144 and Page 7 Paragraph 0153).
Yutou further teaches that the base material layer/substrate had a thickness in the range of about 30 to about 1000 micrometers (Page 3 Paragraph 0061).
As for the limitation that the polymer has a Vicat A50 softening point according to DIN EN ISO 306 of up to 220 ℃, Yutou teaches that the polyvinyl chloride resin was a soft PVC (Page 7 Paragraph 0151), which according to claim 3 and Page 3 Paragraph 0009 of the specification of the present application as originally filed is a thermoplastic polymer having the required softening point.
Though Yutou teaches that the adhesive was ultraviolet ray curable (Page 4 Paragraph 0090) Yutou does not teach that the adhesive was applied as a hot melt and then cured with irradiation with UV light from a UV-C radiation source that emitted light in a wavelength of from 200 to 350 nm. Yutou does teach that suitable adhesives included acrylic copolymer comprising alkyl(meth)acrylates (Pages 3-4 Paragraphs 0065-0068).
Beyers teaches a meltable acrylate polymer used to form an adhesive layer in a resealable packaging (Abstract). The acrylate polymer of Beyers was an acrylic copolymer comprising alkyl acrylates (Page 1 Paragraphs 0013-0014). Beyers teaches that the acrylate polymer was used to form a PSA layer on a backing film (Page 4 Paragraph 0052) and that the adhesive/PSA layer was formed by applying the acrylate polymer as a hot melt onto the backing film followed by irradiating the adhesive with UV radiation to cure the adhesive layer (Page 5 Paragraphs 0076-0082). Beyers further teaches that the UV irradiation was conducted at a wavelength of 250 to 300 nm (Page 5 Paragraph 0085), which was within the required range and therefore was UV-C radiation.
Based on the teachings of Beyers, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used the acrylic polymer of Beyers as the adhesive in the method of Yutou and to have applied it as a holt melt which was cured by irradiation with UV light because this was a known acrylate copolymer in the art for forming an adhesive layer in an adhesive tape/sheet.
Furthermore, as was discussed previously, Beyers teaches that the holt melt pressure sensitive adhesive was irradiated and cross-linked cured with UV light. However, none of the references teach that the irradiation was done in such a way that at a distance of from 15 to 50 mm next to the surface of the coating of the adhesive on the substrate did not exceed an upper temperature to 120 ℃.
Beyers does teach that the acrylate polymer was viscous at temperature of 130 ℃ and above (Page 3 Paragraph 0038) and therefor temperature of the polymer affected the viscosity of the polymer. Section 2144.05.II.A of the MPEP states, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal surface temperatures of the substrate of Yutou in view of Beyers during UV light irradiation through routine experimentation in order to prevent thermally damaging the polymer substrate and remelting the adhesive coating.
Furthermore, Hosokawa teaches a method for forming an adhesive sheet (Abstract) wherein the sheet was formed by UV curing (Column 6 Lines 33-53). Hosokawa further teaches that the distance between the ultraviolet source and the substrate being irradiated was a cause effective variable affecting the intensity of UV rays onto the substrate (Column 6 Line 54 through Column 7 Line 1).
Based on the teachings of Hosokawa, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal distance between the radiation source and the coated substrate of Yutou in view of Beyers through routine experimentation because the distance between the ultraviolet source and the substrate being irradiated because this affected the intensity of UV rays irradiated onto the substrate.
As for claims 3-5, as was discussed previously, the polymer substrate of Yutou was made from soft PVC. Beyers further teaches that the holt melt adhesive as an acrylic copolymer mixture comprising 1 to 20 wt% of a monomer B which was a methyl(meth)acrylate and 80 to 99 wt% of a monomer A (Page 3 Paragraphs 0034-0036) which included n-butyl acrylate, 2-ethylhexyl acrylate and mixtures thereof (Page 1 Paragraphs 0013-0014).
As for claim 7, Yutou teaches that the base material layer/substrate comprised a plasticizer comprising di-octyl-adipate (Page 2 Paragraph 0045).
As for claim 8, Beyers teaches that the adhesive/acrylate polymer had a melt temperature of 100 to 180 ℃ and a viscosity of 20 to 150 Pa-s or 20,000 to 150,000 mPas (Page 5 Paragraph 0082). Both ranges overlapped with the required ranges of 20,000 to 35,000 mPas at 140 ℃. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
As for claim 10, it is rejected for the same reasons discussed previously in the rejection of claim 1 in that Yutou teaches a soft PVC substrate as disclosed within the specification of the present application.
As for claim 20, as was discussed previously, Yutou in view of Beyers used a UV-C radiation source in the range of 250 to 300 nm for curing the hot melt PSA. Furthermore, Hosokawa teaches that the UV curing was conducted at a wavelength of 180 to 460 nm using a low-pressure mercury lamp (Column 6 Lines 54-66).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have used a low-pressure mercury lamp as the radiation source of Yutou in view of Beyers and Hosokawa because this was a known radiation source in the art for providing UV radiation with a wavelength of 250 to 300 nm.
As for clam 24, as was discussed previously, Yutou in view of Beyers and Hosokawa taught using a UV-C radiation source emitting radiation with a wavelength of 250 to 300 nm, which overlapped with the claimed range of 200 to 280 nm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
In the case of claim 6, it is rejected for the same reasons as discussed previously in the rejection of claims 1, 3-5 and 8. Furthermore, Yutou teaches that the instead of an acrylic adhesive the adhesive was formed from a synthetic rubber copolymer such as styrene-butadiene rubber (Page 3 Paragraph 0065).
Furthermore, Beyers teaches that the acrylate polymer/adhesive was prepared from a mixture of methyl(meth)acrylate and n-butyl acrylate, 2-ethylhexyl acrylate and mixture thereof and a photoinitiator in ranges which overlapped or were within the required ranges (Page 3 Paragraphs 0033-0037). Though Beyer teaches that the mixture included a monomer C Beyer teaches that this monomer was present in 0% and therefore was optional (Page 3 Paragraph 0037).
As for claims 15 and 23, they are rejected for the same reasons as claim 7.
As for claim 17, it is rejected for the same reasons as claim 10.
As for claim 21, it is rejected for the same reasons as claim 20.
As for claim 25, it is rejected for the same reasons as claim 24.
Claims 11, 18, 19, 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Yutou et al in view of Beyers et al and Hosokawa as applied to claims 1 and 6 above, and further in view of Neubert et al (U.S. Patent Publication No. 2003/0077439).
The teaching of Yutou in view of Beyers and Hosokawa as they apply to claims 1 and 6 have been discussed previously and are incorporated herein.
In the case of claims 11, 18 and 19, though Yutou taught that the polymer substrate/base material layer comprised soft PVC neither reference teaches that the base material layer/polymer substrate exhibited a strain of 10% to 50% upon application of a tensile strength of 10 N/cm. However, Yutou does teach that the taught invention was directed to forming a PCV adhesive tape (Abstract).
Neubert teaches an PVC based adhesive tape (Abstract and Page 3 Paragraph 0028). Neubert teaches that the strain of the tape upon application of tensile strength was a relevant process parameter because it affected the elongation properties of the tape (Page 2 Paragraphs 0022-0025 and Figure 1). As was discussed previously, it would have been obvious to have determined optimal values for relevant process parameters through routine experimentation.
Based on the teachings of Neubert, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined the optimal strain for the soft PVC substrate of Yutou in view of Beyers and Hosokawa when tensile strength is applied through routine experimentation because the strain properties of the tape/substrate affected the elongation properties of the tape/substrate.
As for claims 22 and 26, they are rejected for the same reasons discussed in the rejection of claims 20 and 24, respectively.
Claim Objections
Applicant is advised that should claim 15 be found allowable, claim 23 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Conclusion
Claims 1 and 3 through 8, 10, 11, 15 and 17 through 26 have been rejected. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712