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 .
Status of Claims
Claims 1-20 are pending in the current application.
Claims 17-20 are withdrawn from consideration in the current application.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-16) in the reply filed on August 18, 2026 is acknowledged.
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference signs mentioned in the description:
[0043] of the specification as originally filed recites “the surface protection film 100s,” however, none of the Figures depict 100s.
[0050], [0057], [0058], and [0059] of the specification as originally filed recite “carrier layer 108,” however, none of the Figures depict 108. Figures 1C depicts a component 108a.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
[0093] of the specification as originally filed recites “polyethylene terephalate.” This recitation contains a misspelling, and should be amended to recite “polyethylene terephthalate
Appropriate correction is required.
Claim Interpretation
Claims 3-9, 11, 12, and 14-16 recite the term “about.” In determining the range encompassed by the term "about," one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). See MPEP 2173.05(b) III A. The specification as originally filed at [0038] states any quantitative values are approximate whether the word “about” or “approximately” or the like are stated or not. For the purpose of examination, limitations preceded by the term “about” are interpreted as including reasonable deviation/error associated with measurement as would be determined by one of ordinary skill in the art.
Claim Objections
Claims 8 and 10 are objected to because of the following informalities:
Claim 8 recites “a … copolymer” and then “the co-polymer.” For the purposes of uniformity and consistency, claim 8 should be amended to recite the same format for the term “copolymer,” for example both instances should recite “a … copolymer” and then “the copolymer.”
Claim 10 recites “polyethylene terephalate.” Claim 10 recites a misspelling, and should be amended to recite “polyethylene terephthalate
Appropriate correction is required.
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.
Claim 8 is 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.
Claim 8 recites the term “a vinyl acetate proportion in the co-polymer of between about 28% to about 33%” that renders the claim indefinite. The basis of the range is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear if the range is based upon a mass%, a molar%, or some other basis. For the purposes of examination, claim 8 is interpreted as instead reciting “a vinyl acetate proportion in the copolymer of between about 28% to about 33% by mass of the total copolymer.”
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Morell et al. (US 4670913 A).
Regarding Claim 1, Morell teaches an elastomeric strip (a film) comprising a laminate of a polyurethane layer of Q-Thane PE 90-100 (i.e., a thermoplastic polyurethane resin), an ethylene-vinyl acetate layer, and another polyurethane layer of Q-Thane PE 90-100 (thermoplastic polyurethane resin) (Morell, Col 3 Lines 20-19-67).
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 1-4, 6, 7, 9, and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Runge et al. (US 2019/0359861 A1).
Regarding Claim 1, Runge teaches an adhesive article comprising a film backing formed of a core layer 110 and two skin layers 120 and 130 (Runge, [0028]-[0031], [0039], [0044], Figs 1-2). Runge teaches the core layer 110 is formed of ethylene-vinyl acetate (Runge, [0029]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried ethylene-vinyl acetate to form the core layer 110 from the finite number of viable materials disclosed by Runge with a predictable and reasonable expectation of success (MPEP 2143). Runge teaches the skin layers 120 and 130 are formed of polyurethane (thermoplastic polyurethane) (Runge, [0030]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried polyurethane to form the skin layers 120 and 130 from the finite number of viable materials disclosed by Runge with a predictable and reasonable expectation of success (MPEP 2143).
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Runge – Figure 2
Regarding Claim 2, Runge teaches the film backing has a total thickness of about 2-40 mils (Runge, [0010], [0041]). Runge teaches the core layer 110 and one of the skin layers 120/130 has a thickness ratio of 2:1 to 300:1 (Runge, [0036]-[0038]). Runge also discloses examples having a core layer 110 with thickness of 66-136 μm and skin layers with thickness of 2-18 μm (Runge, [0091]-[0094], Table 2).
Regarding Claim 3, Runge teaches the core layer 110 and one of the skin layers 120/130 has a thickness ratio of 2:1 to 300:1 (Runge, [0036]-[0038]). This yields a ratio of the core layer 110 to both skin layers 120 and 130 of 2:2 to 300:2, and therefore, a core layer thickness% of 2core/[1skin+2core+1skin]*100= 50% to 300core/[1skin+300core+1skin]*100= 99.3%. Runge’s thickness range overlaps the claimed range of about 20-70%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 4, Runge teaches the core layer 110 and one of the skin layers 120/130 has a thickness ratio of 2:1 to 300:1 (Runge, [0036]-[0038]). This yields a ratio of the core layer 110 to both skin layers 120 and 130 of 2:2 to 300:2, and therefore, a core layer thickness% of 2core/[1skin+2core+1skin]*100= 50% to 300core/[1skin+300core+1skin]*100= 99.3%. Runge’s thickness range overlaps the claimed range of about 20-55%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 6, Runge teaches the film backing has a total thickness of about 2-40 mils (Runge, [0010], [0041]). Runge teaches the core layer 110 and one of the skin layers 120/130 has a thickness ratio of 2:1 to 300:1 (Runge, [0036]-[0038]). Runge discloses examples having a core layer 110 with thickness of 66-136 μm (2.60-5.35 mils) (Runge, [0091]-[0094], Table 2). Runge’s core layer thickness example values overlap the claimed range of about 2-4 mils, and therefore, render obvious the claimed range (MPEP 2144.05).
Regarding Claim 7, Runge teaches the film backing has a total thickness of about 2-40 mils (Runge, [0010], [0041]). Runge teaches the core layer 110 and one of the skin layers 120/130 has a thickness ratio of 2:1 to 300:1 (Runge, [0036]-[0038]). Runge discloses examples having skin layers 120 and 130 with thickness of 2-39 μm (0.08-1.54 mils) (Runge, [0091]-[0099], Tables 2, 7). Runge’s skin layer thickness example values overlap the claimed range of about 1-3 mils, and therefore, render obvious the claimed range (MPEP 2144.05).
Regarding Claim 9, Runge teaches the film backing has a secant modulus of about 100 psi to about 15,000 psi (Runge, [0008], [0032]). Runge’s secant modulus range overlaps the claimed range of below about 5000 psi, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 11, Runge teaches a protective coating adhesive article comprising a film backing formed of a core layer 110 and two skin layers 120 and 130 (Runge, [0028]-[0031], [0039]-[0040], [0044], [0057]-[0058], [0067]-[0070], Figs 1-2). Runge teaches the core layer 110 is formed of ethylene-vinyl acetate (Runge, [0029]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried ethylene-vinyl acetate to form the core layer 110 from the finite number of viable materials disclosed by Runge with a predictable and reasonable expectation of success (MPEP 2143). Runge teaches the skin layers 120 and 130 are formed of polyurethane (i.e., thermoplastic polyurethane) (Runge, [0030]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried polyurethane to form the skin layers 120 and 130 from the finite number of viable materials disclosed by Runge with a predictable and reasonable expectation of success (MPEP 2143). Runge teaches the film backing has a secant modulus of about 100 psi to about 15,000 psi (Runge, [0008], [0032]). Runge’s secant modulus range overlaps the claimed range of below about 5000 psi, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 12, Runge teaches the film backing has a secant modulus of about 100 psi to about 15,000 psi (Runge, [0008], [0032]). Runge’s secant modulus range overlaps the claimed range of below about 3600 psi, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 13, Runge teaches the adhesive article can be removed from a substrate without causing damage and without leaving behind a residue (Runge, [0002], [0026]-[0027], [0054]). Although Runge does not measure chipping rate according to ASTM D3170, Runge discloses an adhesive article according to the rejections of claims 1-4, 6, 7, 9, 11, and 12 above and claims 14-16 below that appears to be substantially identical to the claimed invention, and that can be removed from a substrate without causing damage and without leaving behind a residue. 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). In view of the foregoing, Runge’s adhesive article is considered to establish a prima facie case of either anticipation or obviousness over the claimed chipping rating of 8.5A (MPEP 2112.01, I).
Regarding Claim 14, Runge teaches the film backing has an elongation at break (ultimate elongation) of between about 400% to 1500% in at least one direction (Runge, [0063]). Runge’s elongation at break range encompasses the claimed range of about 450% to about 550%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 15, Runge teaches the film backing has a light transmission of at least about 75% (Runge, [0021], [0056]). Runge’s light transmission range encompasses the claimed range of at least about 93%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Regarding Claim 16, Runge teaches the core layer 110 and one of the skin layers 120/130 has a thickness ratio of 2:1 to 300:1 (Runge, [0036]-[0038]). This yields a ratio of the core layer 110 to both skin layers 120 and 130 of 2:2 to 300:2, and therefore, a core layer thickness% of 2core/[1skin+2core+1skin]*100= 50% to 300core/[1skin+300core+1skin]*100= 99.3%. Runge’s thickness range overlaps the claimed range of about 20-70%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Runge et al. (US 2019/0359861 A1) as applied to claims 1 and 3 above, and further in view of Murakami et al. (JPH 08230119 A, herein English machine translation utilized for all citations).
Regarding Claim 5, Runge teaches the film backing as discussed above for claims 1 and 3.
Runge remains silent regarding the core layer 110 made of ethylene-vinyl acetate having a thickness of about 30% to 35% of the total thickness.
Murakami, however, teaches a film comprising (A) a thermoplastic polyurethane layer having a thickness of 3-100 μm, (B) an ethylene-vinyl acetate layer with 7-35% by mass of vinyl acetate content having a thickness of 1-100 μm, and (C) another layer having a thickness of 5-100 μm laminated in this order (Murakami, Abstract, Pgs 3-4). Murakami’s (B) ethylene-vinyl acetate layer has a thickness% of 1/[100+1+100]*100= 0.5% to 100/[3+100+5]*100= 95%. Murakami’s (B) ethylene-vinyl acetate layer thickness% range encompasses the claimed range of 30-35%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Runge and Murakami both disclose films having 3 layers including a core layer of ethylene-vinyl acetate, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed Runge’s core layer of ethylene-vinyl acetate according to Murakami’s composition and thickness guidance to yield a film that exhibits no releasing between layers during processing, exhibits sufficient interlayer adhesive strength, and maintains a stable film as taught by Murakami (Murakami, Abstract, Pg 3).
Regarding Claim 8, Runge teaches the film backing as discussed above for claim 1.
Runge remains silent regarding the core layer 110 made of ethylene-vinyl acetate having a vinyl acetate proportion of between about 28% to 33% by mass of the total ethylene-vinyl acetate copolymer.
Murakami, however, teaches a film comprising (A) a thermoplastic polyurethane layer having a thickness of 3-100 μm, (B) an ethylene-vinyl acetate layer with 7-35% by mass of vinyl acetate content having a thickness of 1-100 μm, and (C) another layer having a thickness of 5-100 μm laminated in this order (Murakami, Abstract, Pgs 3-4). Murakami’s (B) ethylene-vinyl acetate layer vinyl acetate content range encompasses the claimed range of 28-33%, and therefore, renders obvious the claimed range (MPEP 2144.05).
Since Runge and Murakami both disclose films having 3 layers including a core layer of ethylene-vinyl acetate, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed Runge’s core layer of ethylene-vinyl acetate according to Murakami’s composition and thickness guidance to yield a film that exhibits no releasing between layers during processing, exhibits sufficient interlayer adhesive strength, and maintains a stable film as taught by Murakami (Murakami, Abstract, Pg 3).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Runge et al. (US 2019/0359861 A1) as applied to claim 1 above, and further in view of Krull et al. (US 2020/0224060 A1).
Regarding Claim 10, Runge teaches the film backing as discussed above for claim 1. Runge teaches the film can include a release liner made of a polyester (Runge, [0058]).
Runge remains silent regarding a carrier layer comprising polyethylene terephthalate.
Krull, however, teaches a film backing for an adhesive article comprising a core layer, two skin layers, and a polymeric film formed of a polyethylene terephthalate (Krull, [0002], [0056], [0101]-[0107]).
Since Runge and Krull both disclose film backings for adhesive articles having a polyester layer, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed Runge’s film backing with a polyethylene terephthalate layer to yield a film backing that can be removed without damage and can contain one or more additional functional fillers as taught by Krull (Krull, Abstract, [0002], [0102]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
