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 .
Allowable Subject Matter
Claims 20 and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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, 5, 16, and 19; and claims 7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2003/0017292 A1 (“Sieber”).
Considering claims 1, 5, 16, and 19; and claims 7 and 9, Sieber discloses a multilayered tape intended to provide air-tight sealing of a building, the multilayered tape comprising a backing 1 made of a plastic material and an acrylate pressure sensitive adhesive material 2 located on the backing, wherein the pressure sensitive adhesive material 2 is only partially coextensive with the entire width of the backing 1 and extends (transversely) from one longitudinal edge of the backing 1. (Sieber ¶¶ 0001, 0002, 0012, and 0034; and Figs. 3 and 4, reproduced infra). As connoted by its name, plastic material has inherent elasticity. Sieber is analogous art, for it is directed to the same field of endeavor as that of the instant application (air-tight sealing tape).
Sieber discloses (on the basis of the multilayered tape of Fig. 4) that a plurality of perforations 7 may be provided through the backing, wherein the perforations are arranged in longitudinally extending columns. These opening are considered to read on the limitation of slits. The limitation re: anchor bolt penetration is one of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02.
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Furthermore, as expressly shown in Fig. 4 of Sieber it is evident that the pressure sensitive adhesive material 2 is located above the backing 1 and extends from one edge of the backing 1 and partially toward a center of the backing 1 in a width direction. Though parts of the reference states that the perforations extend into the adhesive layer, in view of the positioning of the perforations in Fig. 3 (specifically, on a section of the backing lacking adhesive material 2), Sieber is considered to have disclosed disposing of perforations on only portions of the backing lacking adhesive material. Applicant is hereby reminded that a) a prior art is relevant for all it contains and b) drawings are available as prior art. (See MPEP §§ 2123 and 2125). Here, the express and specific disclosures from Figs. 3 and 4 of Sieber meet the claimed limitation, even if the reference contains disclosures to other embodiments.
As for the shape of holes as slit, it is noted that Applicant requires only such morphology to have “a length greater than a width”. (See pg. 7 ¶ 3 of response of 7 April 2026, “Response”). In the same Response, Applicant acknowledges that Sieber discloses holes in the shape of “round, polygonal, oval, or undefined”. (Response pg. 8 ¶ 8, citing ¶ 0033 of Sieber, emphasis added). Oval by definition is a shape having one axis longer than the other (orthogonal) axis and reads on a shape having “a length greater than a width”. With oval being one of four shapes expressly listed, its selection is deemed to be disclosed with sufficient specificity, in particular as oval shaped perforations are shown in Fig. 3 of Sieber. Were this to be contested (not conceded), then its selection is obvious.
Sieber, especially as shown in Figs. 3 and 4 thereof, anticipates or alternatively renders obvious claims 1, 5, 16, 19; and claims 7 and 9.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2, 3 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sieber, as applied to claim 1 above.
Considering claims 2, 3, and 17, Sieber discloses that the width of the backing 1 is 3 to 4 cm (30 to 40 mm) but can be upwards of 50 cm. (Siber ¶¶ 0031 and 0032). It is abundantly clear that the adhesive spans a portion thereof. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Claims 6 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sieber, as applied to claim 1 above, and further in view of U.S. 2018/0002574 A1 (“Hille”).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sieber, as applied to claim 7 above, and further in view of Hille.
Considering claims 6 and 10, Sieber differs from the claimed invention, as although it discloses usage of plastic backing material, it is silent re: usage of elastic resin foam. However, in the art of adhesive tape materials used to seal houses, it is known to use closed-cell foam plastic to form a carrier (viz. backing) of the adhesive tape. (Hille ¶ 0007). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used a closed-cell foam, as such material is impermeable to gas and water and is suited as a vapor barrier. (Id.).
Considering claims 11-15, Hille discloses that the closed-cell foamed plastic can be made of, inter alia, polyethylene, and having thickness of less than 5 mm. (Id. clm. 19). The thickness range overlaps that as recited in claim 13. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness.
With Hille expressly teaching that the closed-cell foam is impermeable to gas, with the polymeric composition of the foam also being polyethylene, the other recited properties are considered to naturally flow from the teaching of closed-cell polyethylene foam.
Response to Arguments
In view of amendments to the claims, the previously instated 35 U.S.C. 112(b) rejections and claim objection have been withdrawn.
In view of amendments to the claims, prior art rejections over at least O’Leary have been withdrawn.
Applicant’s arguments against the reference Sieber have been considered, but they are not persuasive for the reasons discussed in ¶¶ 7 and 8 above, which respectively addresses the four contentions raised.
Concluding Remarks
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 Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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