DETAILED ACTION
Applicant’s amendment submitted on July 2, 2026 (“amendment”) in response to the Office action mailed on January 2, 2026 (“previous OA”) have been fully considered.
Support for the amendments to claims 6-9 can be found in the specification e.g. paragraphs 0015, 0049, 0051, and 0052 of US Patent Application Publication 20250121601 A1 of the present application (“published application”).
In view of the amendment to the specification submitting in the amendment, the objection to the specification as set forth in the previous OA is withdrawn.
The objections to claims 7 and 9 as set forth in the previous OA are withdrawn in view of the amendment.
The rejection of claims 6-9 under 35 USC 112(b) is withdrawn in view of the amendment and reconsideration.
In view of the amendment to claim 1, the rejection of claims 1, 2, 6, and 8 are rejected under 35 USC 102(a)(1) as being anticipated by Nakamura et al. (US 20180134921 A1) is withdrawn.
In view of the amendment, a new rejection under 35 USC 112(a) is introduced.
In view of the amendment, a new ground of rejection over a prior art of Sheridan et al. (US 20080280037 A1) is introduced.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 1, this claim recites “the second platinum-cured adhesive layer has a uniform thickness”. The specification fails to provide support for the uniform thickness of the second adhesive layer. The examiner respectfully submits that paragraph 0056 in the specification discloses that the first adhesive layer having thickness of about 7 microns will be acceptable. Because, “it is difficult to create an acceptable uniform coating less than 7 microns thick due to the high viscosities of the higher adhesion platinum-cured silicone base materials…” As such, the examiner submits that while there is support to claim that the first adhesive layer has a minimum uniform thickness of about 7 microns, there is no support to claim that the second platinum-cured adhesive layer has a uniform thickness.
Claim Rejections - 35 USC § 102/103
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 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, 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.
Claim(s) 1 2, 4, and 5 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sheridan et al. (US 20080280037 A1).
As to claim 1, Sheridan discloses a releasing (removable) silicone-based pressure-sensitive adhesive (PSA) composition from contact with a release liner after aging (0001). Further, Sheridan discloses a multi-layer assembly 30 (removable tape) including a polymeric backing film 24 (0128, 0130, Figure 3), a second layer 14 including a silicone elastomer based adhesive composition including silicone polymers and silicone-based PSA compositions cured by pt (first platinum (pt) cured silicone adhesive layer) disposed on the polymeric backing film 24 (0048, 0100, 0105, 0106, 0128, Figure 3), and a first layer 12 of silicone based PSA composition cured by pt (second pt cured silicone adhesive layer) (0048, 0100, 0128, Figure 3) disposed on the second layer 14.
Further, as to claim 1 limitation of the first adhesive strength and the second adhesive strength, Sheridan does not explicitly mention “first adhesive strength” and “second adhesive strength”. However, a person having ordinary skill in the art would recognize that an adhesive layer inherently has adhesive strength. Furthermore, given that Sheridan teaches identical pt-cured silicone adhesives layers as claimed, it is clear that first layer 12 and the second layer 14
Further, as to claim 1 limitation of the second pt cured adhesive layer has a uniform thickness, Sheridan does not explicitly mention whether the second adhesive layer has a uniform thickness. However, 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 is established. See MPEP 2112.01 (I). The examiner respectfully submits that at present no difference is seen between the claimed second pt cured adhesive layer and the second pt cured adhesive layer of Sheridan as set forth previously. As such, absent any factual evidence on the record, it is reasonable to presume that the second pt cured silicone adhesive layer of Sheriadan would inherently have the uniform thickness. Alternatively, the uniform thickness would obviously be present, once the second adhesive layer of Sheridan is provided.
Further, as to claim 1 limitation “A removable tape configured for sealing the nozzle plate of an ejection head attached to a fluid ejection cartridge” and “the second platinum-curded adhesive layer is configured to adhere to the nozzle plate on the ejection head of the fluid ejection cartridge”, these limitations are deemed to be an intended use in so far as the structure of the product is concerned. In article claims, a claimed intended use must result in structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP 2111.02. Given that the multi-layer assembly of Sheridan as set forth above is identical to that of the presently claimed in terms of structure and composition, it meets the intended use of the claimed removable tape.
As to claim 2, Sheridan discloses the polymeric backing film is selected from e.g. polypropylene (0131).
As to claim 4, Sheridan discloses the backing is pretreated by corona discharge (0133).
As to claim 5, Sheridan does not explicitly teach property of the first adhesive strength is greater than the second adhesive strength. However, as set forth previously, no difference is seen between the first and the second pt-cured silicone adhesives of Sheridan and applicant. As such, absent any factual evidence on the record, it is reasonable to presume that the aforementioned property would inherently be present in the removable tape of Sheridan. Alternatively, the claimed property would obviously be present, once the removable tape of Sheridan is provided.
Claim(s) 3 and 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sheridan et al. (US 20080280037 A1).
As to claim 3, Sheridan discloses that the polymer film can have any suitable thickness including about 0.4 mils (10.16 μm) to about 10 mils (254 μm) (0132). Given that the claimed polymeric backing film thickness of about 20-30 microns overlaps or lies within the thickness of polymeric backing film disclosed by Sheridan, a prima facie case of obviousness exists. See MPEP 2144.05 (I).
Further, as to claim 3, Sheridan discloses that the first and second adhesive layers have thickness in the range of from about 0.1 mils (2.54 μm) to about 40 mils (1,016 μm) (0102, 0126). Given that the claimed thicknesses of the first and second adhesive layers of about 7-20 μm overlap or lie within the thicknesses of first and second adhesive layers disclosed by Sheridan, a prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claims 6 and 8, Sheridan discloses that the first and second adhesive layers include polydimethylsiloxane (PDMS) (0096 and 0106) including PDMS diamine (0082). Further, as to claim 6, Sheridan discloses that the composition of the second layer comprises silicone polymer different from the silicone polymer of the PSA composition of the first layer (claim 6 of Sheridan).
Further, as to claim 8, Sheridan does not explicitly suggest that the first adhesive base material and the second adhesive base material are same. However, Sheridan further discloses PDMS silicone polymers for first layer including silicone based PSA composition (0048, 0063, 0082, 0096). With respect to the composition of the second layer, Sheridan further discloses “Useful silicone elastomers and silicone-based pressure-sensitive adhesive compositions for the second layer include the silicone polymer and the silicone-based pressure sensitive adhesive compositions as set forth above.” (0106). Therefore, a person having ordinary skill in the art would have found it obvious to use the same silicone polymer in the first and the second adhesive layer of Sheridan, motivated by the desire to e.g. provide cost savings associated with using same polymers in the both adhesive layers.
As to claims 7 and 9, Sheridan is silent as to disclosing properties of the first adhesive strength (peel strength) and the second adhesive strength (peel strength). However, 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 is established. See MPEP 2112.01 (I). The examiner respectfully submits that given that the removable tape of Sheridan as set forth previously renders obvious claimed removable tape, absent any factual evidence on the record, it is reasonable to presume that the claimed peel strengths of the first and the second adhesive layers would inherently be present in the removable tape of Sheridan.
Response to Arguments
Applicant’s arguments submitted in the amendment have been considered but are moot in view of the new ground of rejection as set forth in the current Office action.
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 ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANISH P DESAI/ Primary Examiner, Art Unit 1788
August 25, 2026
Prosecution Insights