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 .
Examiner’s Note
The Examiner acknowledges the amendment of claim 1 and the cancellation of claim 10.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 4 are rejected under 35 U.S.C. 103 as being unpatentable over Nomoto et al. (US 2022/0228039 A1), in view of Kawasaki et al. (EP 3103848 A1) (2016) and Akhter (U.S. Patent No. 5,599,621 A).
With regard to claim 1, Nomoto et al. teach an adhesive sheet (i.e., “tape”) (13) composed of polyvinyl chloride (PVC) material (paragraphs [0033], [0061], [0076], & [0078]). The adhesive sheet comprises a first surface (12a) and a second surface (12b) (Fig. 2 below). The first surface contains fine structures (i.e., “embossing”), wherein the fine structure includes a plurality of repeating convex structures that includes a bottom portion arrange on the first surface and a side portion (3) recessed in the first surface the side portion has a tapered shape, and an end of the side portion (i.e., apex) away from the first surface is defined as an endpoint (2) (paragraph [0028] & Fig. 2 below).
The area of a single cone structure (31) projected on the plane may be 10 µm2 or greater and 10,000 µm2 or less (paragraphs [0028] & [0070]), which includes the value of one apex (i.e., “endpoint”) per 3,000 µm2. Furthermore, the number of cone structures 31, each with an apex (i.e., “quantity of the end point formed”), is 16 or more, 25 or more, 81 or more, preferably 100 or more per 1 mm2 of the surface of the adhesive layer, which includes Applicant’s claimed range of one or more per 3,000 umµ. The high density of the cone structure 31 also contributes to the improvement of slide-ability (paragraph [0044]). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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Nomoto et al. teach the tape has a static friction coefficient of adhesive sheet is 10 or less, 5 or less, according to JIS K 7125 from the viewpoint of slide-ability (citation). Based on the description of the static friction coefficient test, it is assumed this disclosure is in reference to only the embossed (patterned side) of the tape. Nomoto et al. do not teach a maximum static friction coefficient between the first surface and the second surface is within a range from 0.72 to 0.78.
Kawasaki et al. teach an adhesive film, wherein the static friction coefficient of the side surface of the pressure-sensitive adhesive layer (Applicant’s “first surface”) and the side surface opposite to the pressure-sensitive adhesive layer of the film (functional layer when a functional layer is present) (Applicant’s “second surface”) is usually 1.1 or less, preferably 1.0 or less, more preferably 0.9 or less, and particularly preferably 0.8 or less. When the coefficient of friction is within the above range, the film has good slipperiness and is effective for handling and prevention of scratches” (paragraph [0154]). Slipping properties may be adjusted by controlling the size of particles relative to the thickness of the film (paragraphs [0085] – [0088]).
Therefore, based on the teachings of Kawasaki et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form an adhesive film wherein the static friction coefficient of both sides of the tape is 0.8 or less, which includes Applicant’s claimed range of 0.72 – 0.78 for good slipperiness, effective for handling, preventing of scratches. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Furthermore, based on the teachings of Kawasaki et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the coefficient of static friction on the first surface and the second surface of the adhesive film (i.e., “tape”) taught by Nomoto et al. through routine experimentation in order to achieve the desired slipperiness and handling properties that prevent scratches. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Nomoto et al. fail to teach the embossed PVC tape has a transparency within a range from 90% - 93% and a haze within a range from 1.8% - 2%.
Akhter teaches cover tape for device packaging, wherein the cover tape comprises a PVC carrier and an adhesive layer, wherein the carrier and adhesive layers are sufficiently clear such that the tape has high clarity with a low haze (less than 15%) and high light transmission (greater than 90%) (Col. 6, Lines 15 – 36, Col. 6, Line 54 – Col. 7, Line 3). The cover tape should be sufficiently transparent to permit any writing (Col. 1, Lines 45 – 55).
Therefore, based on the teachings of Akhter, it would have been obvious to one of ordinary skill in the art to form a cover tape comprising a PVC carrier with an adhesive layer of light transmittance (transparency) of 90% or more and less than 15% haze for sufficient clarity for permit writing. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 2, as shown in Fig. 2 below, Nomoto et al. teach of the repeating fine structures (i.e., “patterns”) has a triangular pyramid shape.
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With regard to claim 3, Nomoto et al. teach the width of the bottom surface of a cone structure (31) in the arrangement direction of the cone structures (X-axis direction) is 65 µm or less (paragraph [0042]), which includes Applicant’s claimed range of 58 – 62 µm. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The length of the bottom surface of the cone structure is not explicitly taught by the Nomoto et al.
However, Nomoto et al. teach the longest distance between the centers of two adjacent cone structures (and therefore the length) may be 100 µm or less (paragraph [0041]). Furthermore, Nomoto et al. teach a high density of the cone structures contributes to improvement of slide-ability (paragraph [0044]).
Therefore, based on the teachings of Nomoto et al., it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the length of a cone structure (i.e., base portion) in the range of less than 100 µm through routine experimentation in order to achieve the desired high density of cone structures for improved slide-ability of the tape. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 4, Nomoto et al. teach the height (H) of the cone (i.e., “a depth between the bottom portion and the end portion”) is 10 µm or greater and 25 µm or less (paragraph [0048]), which includes Applicant’s claimed range of 15 µm to 20 µm. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 5 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over Nomoto et al., Kawasaki et al., & Akhter, as applied to claim 1 above, and further in view of Mazurek et al. (U.S. Patent No. 5,650,215 A).
With regard to claim 5, Nomoto et al. teach the plurality of cones can be regularly or irregularly arranged on a plane (paragraph [0028]). However, Nomoto et al. do not explicitly teach the repeating patterns are further divided into a plurality of first repeating patterns and a plurality of second repeating patterns, and the first repeating patterns and the second repeating patterns are in staggered arrangement.
Mazurek et al. teach a tape comprising pressure-sensitive adhesive having microstructures. A molding tool for embossing a continuous layer of microstructured pressure-sensitive adhesive articles with patterns molded therefrom (Col. 7, Lines 44 – 467) have features with varying shapes, such as preferably pyramids, for reasons of pattern density, and adhesive performance (Col. 11, Lines 45 – 59). The selection of a positive or negative projection configuration for a particular projection feature will affect peel adhesion characteristics of the microstructured adhesive surface (Col. 13, Line 41 – 43). Negative pyramid projections would not provide microstructured surfaces that build significantly in peel adhesion over time (Col. 14, Lines 12 – 19). Fig. 7 illustrates a molding tube has cube corners of positive features wherein the adhesive is embossed with the negative features thereof (staggered triangular pyramids, Fig. 8), for Example 4:
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As shown above, Fig. 7 shows a plurality of first repeating patterns and a plurality of second repeating patterns, and the first repeating patterns and the second repeating patterns are in staggered arrangement.
Therefore, based on the teachings of Mazurek et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a pressure sensitive adhesive comprising a staggered configuration of a first repeating pattern of triangular pyramids and a second repeating pattern of triangular pyramids as shown in Fig. 7 above for desired adhesive and peel adhesion properties.
With regard to claim 6, Mazurek et al. do not explicitly teach a first angle between each of the first repeating patterns and any one of the second repeating patterns that is in line-contact therewith is within a range from 80 degrees to 100 degrees.
With regard to claim 7, Mazurek et al. do not explicitly teach the second angle between each of the first repeating patterns and any one of the second repeating patterns that is in point-contact therewith is within a range from 110 degrees to 130 degrees.
As discussed above for claim 4, Nomoto et al. teach the height (H) of the cone (i.e., “a depth between the bottom portion and the end portion”) is 10 µm or greater and 25 µm or less (paragraph [0048]), which includes Applicant’s claimed range of 15 µm to 20 µm.
Applicant’s Fig. 2 is a preferred embodiment of their invention, which is identical configuration to Mazurek’s Fig. 7, as shown below:
Applicant’s Figure 2 (rotated) Mazurek’s Figure 7
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Therefore, considering each of the triangular pyramid structures recited by Applicant have the same height as taught by Nomoto et al. and the same repeating pattern (configuration) as taught by Mazurek et al., the repeating pattern (configuration) of triangular pyramids taught by the combined teachings of the prior art must inherently have the same first angle and second angle ranges as recited in Applicant’s claims 6 – 7.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
Claim(s) 8 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Nomoto et al., Kawasaki et al., & Akhter, as applied to claim 1 above, and further in view of Müssig et al. (US 2011/0200808 A1).
With regard to claims 8 – 9, Nomoto et al. fail to teach the embossed PVC tape includes PVC resin, a plasticizer, and a heat stabilizer, wherein a content of the PVC resin is 100 parts by weight, a content of the plasticizer is 20 – 40 parts by weight, and a content of the heat stabilizer is 2 – 3 parts by weight.
Müssig et al. teach a masking strip/tape comprising a PVC carrier, wherein the carrier is embossable for adjusting the unwinding force (paragraphs [0046] – [0047]). The PVC carrier is formed of a PVC film comprising 15 – 35 parts per hundred PVC resin (phr) of plasticizer, and 0.2 to 8 phr, preferably 1 to 5 phr, of a phosphite-free PVC (thermal) stabilizer (paragraphs [0017], [0029], & [0030]). The PVC carrier film for the adhesive is able to reduce shrink-producing stresses in the course of heating (paragraphs [0003] & [0006]).
Therefore, based on the teachings of Müssig et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a PVC carrier film for an adhesive that is able to reduce shrink-producing stresses in the course of heating by forming the PVC film comprising 15 – 35 parts plasticizer per 100 parts PVC film and 1 – 5 parts thermal stabilizer per 100 PVC film.
Response to Arguments
Applicant argues, “In claim 1, ‘quantity of the end point’ is amended to ‘quantity of the end points,’ and ‘maximum static friction coefficient’ is amended to ‘static friction coefficient’ to address the claim objections and the 35 U.S.C. § 112 issues” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: In light of the amendments of claim 1, the previous objection of claim 1 and the previous rejection of claim 1 under 35 U.S.C. § 112 have been withdrawn.
Applicant argues, “…it is respectfully submitted that the optical characteristics of the secondary reference Akhter may not be inherently stackable onto the primary reference Nomoto, in part because Akhter in fact does not disclose a cone structure such as the cone structures 31 in Nomoto. For one thing, for a noticeable fundamental difference in structure between the references, the result optical behavior of Akhter may not necessarily be carried over to the structure of Nomoto. For another, for modifying the adhesive sheet in Nomoto, one of ordinary skill in the art would not refer to Akhter with reasonable expectation of success because it does not teach a comparable cone structure” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Nomoto teaches the PVC tape is transparent, which is defined as a haze of 40% or less (paragraph [0040]), which includes Applicant’s claimed range of a haze of 1.8 – 2%. Therefore, the primary reference clearly suggests a reasonable expectation of success to achieve Applicant’s claimed transparency and haze ranges for an embossed PVC tape.
Second, based on the teachings of Akhter, it would have been obvious to one of ordinary skill in the art to achieve a PVC tape with the claimed transparency and haze value based adjusting the additives in the composition of the PVC tape.
Applicant argues, “Col. 4, Lines 52 – 57 of Akhter mentions that ‘Since the microspheres often are the dominant source of haze in the adhesive, the antiblock agent is typically present in an amount of not greater than 50, preferably not in excess of 25 and more preferably not in excess of 15, weight percent based upon total weight of the adhesive.’ That is to say, the haze in the adhesive is affected by the microspheres and the amount of the antiblock agent, and what affects the haze of the adhesive in Akhter is not related to the cone structures.
“In other words, although Akhter mentions the haze and the light transmission, it does not mean the haze and the light transmission of Nomoto fall in the ranges of the haze and the transparency in the amended claim 1” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Applicant appears to have misunderstood the rejection. The office action did not suggest the claimed transmission and haze values were inherent to the teachings of Nomoto.
One of ordinary skill in the art is well aware that the transparency and haze properties of a material, such as a PVC tape, are dependent on the composition, such as the type and content of additives in the composition. As demonstrated by Applicant’s citation of Akhter, Col. 4, lines 42 – 57, the transparency and haze values taught by Akhter are properly enabled by the reference. Therefore, it would have been within the skill of one of ordinary skill in the art to adjust the composition of the PVC tape taught by Nomoto in order to achieve the transparency and haze values taught by Akhter.
Applicant argues, “In addition, paragraph [0040] of Nomoto mentions that ‘For example, when the first part 4 is formed from a transparency acrylic resin and the second part 5 is formed from a transparency acrylic adhesive, the above-described requirement is not satisfied, and the completely-transparency adhesive layer can be provided. Note that transparent can be defined by, for example, haze of 40% or less as measured in accordance with JIS K 7136.
“It is worth mentioning that, since Nomoto does not disclose the lower limit of the haze, one of ordinary skill in this art would only regard the haze of the adhesive sheet in Nomoto as about 40% or a bit lower than 40%, which is much greater than haze in the amended claim 1” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant has misrepresented the discussion of haze given by Nomoto. The reference teaches, “Note that the transparency can be defined by, for example haze of 40% or less as measured in accordance with JIS K 7136” (paragraph [0040]).
Second, Applicant’s assertion that one of ordinary skill in the art would interpret the phrase “haze of 40% or less” to be “about 40% or a bit lower than 40%” is incorrect. One of ordinary skill in the art would interpret the phrase “40% or less” in the context of a definition of transparency to mean that a material is transparent in instances of when the haze is anywhere within the entire range of 0 – 40%.
Third, 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).
Fourth, one of ordinary skill in the art is well aware that the transparency and haze properties of a material, such as a PVC tape, are dependent on the composition, such as the type and content of additives in the composition. As demonstrated by Applicant’s citation of Akhter, Col. 4, lines 42 – 57, the transparency and haze values taught by Akhter are properly enabled by the reference. Therefore, it would have been within the skill of one of ordinary skill in the art to adjust the composition of the PVC tape taught by Nomoto in order to achieve the transparency and haze values taught by Akhter.
Applicant argues, “Further, Kawasaki, Müssig, and Akhter are cited in the Office Action for disclosing certain technical features, respectively. However, Kawasaki, Mazurek, Müssig, and Akhter are silent on the haze and the transparency of the embossed tape, and therefore fail to redeem the deficiencies of Nomoto” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (Noon to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781