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 .
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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 30 December 2025. Claims 1-15 are pending.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-8) in the reply filed on 07 February 2026 is acknowledged. Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings received on 09 November 2023 are acceptable.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/261120 A1.
Regarding claim 1, WO ‘120 discloses an adhesive film with a fine structure on a base layer surface, see p. 6, lines 8-12. The base layer of the adhesive film is described at p. 13, line 30 through p. 14, line 14 and may be an elastic material such as an acrylic foam. The fine structures have a convex first part at the top and a second part at the bottom surface, below the first part. See p. 9, lines 1-2. The convex part has a storage modulus of 3 x 105 Pa or more or even 1 x 106 Pa or more, see p. 9, lines 24-31. This reads on being a stiffer material than the adhesive film. Note that the second part is an adhesive material having a storage modulus of less than 3 x 105 Pa, see p. 10, lines 7-17. The fine structures have micron-sized dimensions with heights of 50 microns or less and a bottom surface of 50 microns or less in the x- and y-axis dimensions (that is, in-plane with the base film), see p. 12, lines 9-25. This reads on microscale asperities as claimed. The structures are provided in a pattern as shown in FIGS. 3A and 4A.
Regarding claim 2, WO ‘120 states that when the adhesive film is peeled from a liner and brought into contact with an adherend with only low pressure, the adhesive film is slidable. When pressure is applied above a certain level to deform the structures, the adhesive film exhibits adhesive force. See p. 19, lines 24-32. FIG. 14 depicts this phenomenon. Accordingly, the adhesive film is tunable as claimed.
Regarding claim 8, FIG. 1D of WO ‘120 depicts an example in which the structures have spherical upper surfaces and flat surfaces at the bottom which are in contact with the base layer. See description at p. 7, lines 10-21.
Claims 1, 5, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tani (U.S. Pub. 2019/0016923).
Regarding claim 1, Tani describes an adhesive member to be adhesively fixed through pressure, see title and abstract. The adhesive member includes a support, a pressure-sensitive adhesive layer provided on one side of the support, and a plurality of protrusion elements arranged, in spaced-apart relation to each other, on a principal surface of the pressure-sensitive adhesive layer. See abstract. See FIG. 1a and description at p. 4-5, [0059] for a depiction of the protrusion elements spaced apart from one another.
The protrusion elements are made from a plurality of cohesive particles such that the height of the protrusion elements is preferably 1 micron or more and 100 microns or less, see p. 6, [0067], thus reading on microscale asperities as claimed.
The protrusion elements have an elastic modulus of 5 MPa or more, see p. 2, [0017] and include cohesive particles each having a hard outer shell, see p. 19-20, [0141]. The support film is a thin PET film, see p. 20, [0143], which has a pressure sensitive adhesive formed on one side, see p. 20-21, [0152]. This reads on an elastic adhesive substrate.
Regarding claims 5 and 6, each protrusion element is made from a plurality of cohesive particles, see p. 2, [0014]. This reads on clusters of the asperities as claimed.
Additionally, the protrusion elements are spaced apart from each other with an interior region free of protrusion elements, also reading on clusters of asperities as claimed. See FIG. 1a and description at p. 4-5, [0059]. As shown in FIGS. 1(a) and 9 (each reproduced below), the protrusion arrangement can be viewed as triangles (three-sided polygons) or quadrilaterals (four-sided polygons) each with an interior free of protrusions. See discussion at p. 14, [0113].
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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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/261120 A1.
Regarding claim 3, WO ‘120 discloses an adhesive film with a fine structure on a base layer surface, see p. 6, lines 8-12. The base layer of the adhesive film is described at p. 13, line 30 through p. 14, line 14 and may be an elastic material such as an acrylic foam. The fine structures have a convex first part at the top and a second part at the bottom surface, below the first part. See p. 9, lines 1-2. The convex part has a storage modulus of 3 x 105 Pa or more or even 1 x 106 Pa or more, see p. 9, lines 24-31. This reads on being a stiffer material than the adhesive film. Note that the second part is an adhesive material having a storage modulus of less than 3 x 105 Pa, see p. 10, lines 7-17. The fine structures have micron-sized dimensions with heights of 50 microns or less and a bottom surface of 50 microns or less in the x- and y-axis dimensions (that is, in-plane with the base film), see p. 12, lines 9-25. This reads on microscale asperities as claimed. The structures are provided in a pattern as shown in FIGS. 3A and 4A.
WO ‘120 teaches that the structures have heights of from 5 to 50 microns, see p. 12, lines 21-25. This overlaps the claimed range of less than 10 microns. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Claims 3, 4, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tani (U.S. Pub. 2019/0016923).
Regarding claims 3 and 4, Tani describes an adhesive member to be adhesively fixed through pressure, see title and abstract. The adhesive member includes a support, a pressure-sensitive adhesive layer provided on one side of the support, and a plurality of protrusion elements arranged, in spaced-apart relation to each other, on a principal surface of the pressure-sensitive adhesive layer. See abstract. See FIG. 1a and description at p. 4-5, [0059] for a depiction of the protrusion elements spaced apart from one another.
The protrusion elements have an elastic modulus of 5 MPa or more, see p. 2, [0017] and include cohesive particles each having a hard outer shell, see p. 19-20, [0141]. The support film is a thin PET film, see p. 20, [0143], which has a pressure sensitive adhesive formed on one side, see p. 20-21, [0152]. This reads on an elastic adhesive substrate.
The protrusion elements are made from a plurality of cohesive particles such that the height of the protrusion elements is preferably 1 micron or more and 100 microns or less, see p. 6, [0067], thus reading on microscale asperities as claimed. This overlaps the claimed ranges of less than 10 microns (as in claim 3) and of about 0.31 to about 1.34 microns (as in claim 4). As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claim 7: Tani does not expressly teach the claimed dimensionless parameter
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as claimed. Tani does however teach that the protrusion elements have a height of from 1 to 100 microns (see p. 4, [0039] and p. 6, [0067]), the spacing between protrusion elements shown in FIG. 9 is 2 mm (2000 microns) or 3.42 mm (3420 microns), and various adhesive forces are shown in Table 4 on p. 19. These adhesive forces (shear adhesive strength of the adhesive material, shear adhesive strength of the protrusion element, shear adhesive strength of the adhesive sheet, and frictional force of the adhesive sheet) do not correspond directly to W, the work of adhesion, in the pressure tunable adhesive system as claimed.
However, the Examiner notes that the prior art generally teaches the claimed invention and as such it would be expected to have similar properties. The Examiner notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). The Examiner notes that Tani discloses an adhesive sheet having the same components and some of the same dimensional properties for the pressure tunable adhesive system as claimed in claim 1 as described above. Therefore, one of ordinary skill in the art would expect the same or similar properties to arise. Since the prior art discloses the adhesive system of claim 1, the examiner believes the claimed properties are either anticipated or highly obvious.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Mikami (U.S. Pub. 2022/0251427) is the U.S. equivalent of WO 2020/261120 A1.
Karp (U.S. Pub. 2011/0021965) describes an adhesive sheet with a plurality of protrusions which are stiffer than the base adhesive sheet. The protrusions are formed in a pattern. The reference is cumulative.
Natarajan (U.S. Pub. 2012/0143228) also describes an adhesive sheet with stiff non-adhesive protrusions on the adhesive surface forming an adhesive similar to that of a gecko’s foot.
Maercklein (U.S. Pat. 6,565,697) describes a repositionable adhesive sheet having non-adhesive portions formed in either continuous lines or discrete portions on the adhesive sheet.
Fukui (U.S. Pub. 2009/0130372) describes an adhesive structure with a plurality of protrusions extending from a base layer, each protrusion having a spherical end tip.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
Prosecution Insights