DETAILED ACTION
This is an Office action based on application number 18/390,386 filed 20 December 2023, which claims priority to EP22216244.8 filed 22 December 2022. Claims 1-17 are pending.
Amendments to the claims, in the response filed 18 February 2026, 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 .
Withdrawn Rejections
The 35 U.S.C. §112 rejections, made of record in the previous Office action, are withdrawn due to Applicant’s amendments.
The prior art rejections, made of record in the previous Office action, are withdrawn due to Applicant’s amendments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1, 5-6, 10-11, and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US Patent No. 5,851,662) (Suzuki) in view of JP2016223036A with citations taken from the provided machine translation) (JP036) and Verhoeven et al. (US Patent Application Publication No. US 2008/0241483 A1) (Verhoeven).
Regarding instant claims 1 and 5-6:
Suzuki discloses an adhesive sheet comprising a surface stock (Claim 1).
Suzuki further discloses that the surface stock is a paper having a pigment coating layer predominantly containing a pigment and binder on a front surface, or is a paper having a sealing layer predominantly containing a pigment and a binder on the rear side of the base paper (col. 11, lines 13-20).
Suzuki is construed to obviate an embodiment of a surface stock comprising a paper having both the disclosed pigment coating layer and sealing layer each composed of a pigment and binder.
Said paper of Suzuki reads the claimed “first layer, which is a paper layer”.
Said pigment coating layer and sealing layer each read on the claimed “second layer, which is a barrier layer, applied on one or both sides of the first layer”.
Suzuki discloses that the proportions of the pigment and binder can be selected from a wide range (col. 11, lines 58-60)
Suzuki further discloses that the pigments are inclusive of inorganic pigments (col. 11, lines 13-22).
Suzuki further discloses that examples of the binder are inclusive of a styrene-butadiene copolymer (col. 11, lines 49-57).
Suzuki does not explicitly disclose the glass transition temperature of the binder
However, JP036 discloses a base paper comprising a base paper and a filling layer provided on at least one surface thereof, the filling layer containing at least one pigment component and a synthetic resin latex as an adhesive component (paragraph [0013]).
JP036 further discloses that the synthetic resin has a glass transition temperature of -20 to 30°C, and is preferably a styrene-butadiene copolymer latex (paragraph [0009]). It is noted that the glass transition temperature range disclosed by JP 306 overlaps the range recited by the claim; 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.
JP036 teaches that if the glass transition temperature is too low, the coating layer becomes too soft, which causes problems such as being easily scratched; further, JP036 discloses that if the glass transition temperature is too high, the layer tends to become non-uniform, and pinhole defects tend to occur (paragraph [0019]).
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 ensure that the binder of Suzuki has the glass transition temperature prescribed by JP036. The motivation for doing so would have been to prevent scratches and pinhole defects in the produced layers.
Suzuki discloses that the proportions of the pigment and binder can be selected from a wide range, as cited above; however, its recommended range does not obviate the ranges recited by the claims.
However, Verhoeven discloses a pigment coated paper based provided with a resin coating (paragraph [0002]). Said pigment coating comprises at least one or more pigments and one or more binders (paragraph [0046]). Said pigments are inclusive of kaolin, clay, talc, titanium dioxide, and silica (paragraph [0047]), and said binder is inclusive of styrene-butadiene latex (paragraph [0048]).
Verhoeven further discloses a combination of a styrene-butadiene latex binder and pigment in a ratio in the range of 40/100 to 150/100 exhibits color stability to various light intensity exposure times, balances optical properties such as opacity, and is economical (paragraph [0049]). Said ratios calculate to 29% to 60% binder and 40% to 71% pigment (i.e., 40 parts binder/140 parts total binder and pigment is 29% binder with the remainder (71%) pigment, and 150 parts binder/250 parts total binder and pigment is 60% binder with the remainder (40%) pigment).
The ratio range overlaps or includes the ranges recited by the instant 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 adopt the binder/pigment ratio of Verhoeven to produce the surface stock of Suzuki. The motivation for doing so would have been that Verhoeven provides a broader operational range known in the art of producing a pigment coated paper that also balances color stability, optical properties, and economical concerns.
Regarding instant claim 10:
Suzuki further discloses that the pigments are inorganic pigments inclusive of kaolin, clay, talc, calcined kaolin, titanium dioxide, and silica (col. 11, lines 22-24).
Regarding instant claim 11:
Suzuki further discloses that the amount of pigment coating layer is at least 2 g/m2 and the amount of coating composition applied for forming the sealing layer is at least 0.1 g/m2 (col. 12, lines 10-15). Each range includes the range recited by the instant claim; 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.
Regarding instant claims 12-15:
Suzuki in view of JP036 discloses the surface stock as cited in the rejection of at least claim 1, above, but does not explicitly disclose the properties recited by the claims (i.e., the claimed repulpability and sticky formation).
However, one of ordinary skill in the art would readily conclude that since the scope prior art combination encompasses an embodiment that is substantially identical to Applicant’s invention (i.e., the same first paper layer, the same second barrier coating layer comprising an amount of inorganic filler and an amount of polymer having a specific glass transition temperature) as Applicant’s claim, as well as an invention similar to those embodiments in Applicant’s original disclosure (i.e., Suzuki discloses the use of a kraft paper at col. 10, lines 50-55 and Applicant’s Example 1 also uses kraft paper at Specification, paragraph [0095]); further, Suzuki discloses the use of a styrene-butadiene copolymer as the binder at col. 11, lines 51-55 and Applicant’s Example 1 also uses a styrene-butadiene copolymer as the binder at Specification, paragraph [0095]), those substantially identical embodiments must have the same properties (i.e., the claimed repulpability and sticky formation).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claims 16-17:
The adhesive sheet disclosed by Suzuki meets the broadly claimed adhesive tapes.
Claims 2-4 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki in view of JP036 and Verhoeven as applied to claim 1 above, and further in view of Schurb (US Patent No. 5,496,601) (Schurb).
Regarding instant claims 2-3:
Suzuki in view of JP036 and Verhoeven discloses the adhesive sheet comprising the surface stock, as cited in the rejection of claim 1 above.
Suzuki in view of JP036 and Verhoeven does not explicitly disclose the claimed prime coating layer.
However, Schurb teaches that a primer layer is applied to paper backings for pressure sensitive adhesive tapes to help adhere the adhesive (col. 1, lines 13-23).
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 apply the primer layer of Schurb to one or both layers of the surface stock of Suzuki in view of JP036 and Verhoeven. The motivation for doing so would have been to help adhere an adhesive layer to the surface stock to produce either a single- or double-sided adhesive.
Therefore, it would have been obvious to combine Schurb with Suzuki in view of JP036 and Verhoeven to obtain the invention as specified by the instant claim.
Regarding instant claim 4:
Suzuki in view of JP036 and Verhoeven discloses the adhesive sheet comprising the surface stock, as cited in the rejection of claim 1 above.
Suzuki in view of JP036 and Verhoeven does not explicitly disclose the claimed release coating.
However, Schurb discloses paper backings for pressure sensitive adhesive tapes wherein a release coating is applied to the opposite side of the backing to the adhesive layer, wherein such a structure allows the coated sheet to be wound into rolls (col. 1, lines 13-24).
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 apply the release coating of Schurb to the surface stock of Suzuki in view of JP036 and Verhoeven. The motivation for doing so would have been to allow the produce adhesive tape to be wound into a roll.
Therefore, it would have been obvious to combine Schurb with Suzuki in view of JP036 and Verhoeven to obtain the invention as specified by the instant claim.
Regarding instant claims 7-8:
Suzuki in view of JP036 and Verhoeven discloses the adhesive sheet comprising the surface stock, as cited in the rejection of claim 1 above.
Suzuki in view of JP036 and Verhoeven does not explicitly disclose the extensibility in the machine direction (MD) and cross direction (CD) of the paper layer.
Schurb discloses adhesive sheets that are extensible and conformable (col. 1, lines 6-7).
Schurb further discloses that the backing of the adhesive sheet has an elongation at break greater than 8% in the length or machine direction (col. 4, lines 11-12), which is construed to read on the claimed directions recited by the claims.
Schurb teaches that extensibility is measured by elongation at break (col. 3, lines 55-57).
It is noted that the elongation/extensibility range disclosed by Schurb overlaps the claimed range; 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.
Schurb teaches that tapes having such an extensibility can be applied to curved and irregularly shaped surfaces without tearing (col. 1, lines 25-29).
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 ensure that the base paper of Suzuki in view of JP036 and Verhoeven has the extensibility of Schurb in either the machine or cross direction. The motivation for doing so would have been to produce an adhesive sheet that can be applied to curved and irregularly shaped surfaces without tearing.
Therefore, it would have been obvious to combine Schurb with Suzuki in view of JP036 and Verhoeven to obtain the invention as specified by the instant claim.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki in view of JP036 and Verhoeven as applied to claim 1 above, and further in view of Imai et al. (US Patent No. 5,275,846) (Imai).
Regarding instant claim 9:
Suzuki in view of JP036 and Verhoeven discloses the adhesive sheet comprising the surface stock, as cited in the rejection of claim 1 above.
Suzuki in view of JP036 and Verhoeven does not explicitly disclose the basis weight of the paper layer.
However, Imai discloses a coated paper comprising a pigment coating layer composed of a pigment and adhesive disposed on a base paper (Claim 1).
Imai further discloses that said base paper has a basis weight of about 35 to 400 g/m2 (col. 8, lines 4-8), which includes the ranges recited by the claim; 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 ensure that the base paper of Suzuki in view of Imai has the basis weight prescribed by Imai. The motivation for doing so would have been that Imai provides a precise/specific basis weight for base papers bearing a pigment coating layer.
Therefore, it would have been obvious to combine Imai with Suzuki in view of JP036 and Verhoeven to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
In response to Applicant’s amendments, the grounds of rejection are amended.
Applicant’s arguments regarding the prior art rejection of record are fully considered, but are moot due to the new grounds of rejection.
Specifically, the new grounds of rejection combine Verhoeven with Suzuki in view of JP036. Applicant has not persuasively traversed the rejections relying on the teachings of Verhoeven though they were made of record in the previous Office action in the rejection of dependent claims 5-6.
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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
/TAM/EXAMINER, ART UNIT 1788 03/10/2026