DETAILED ACTION
This is a response to the Amendment to Application # 18/553,960 filed on April 9, 2026 in which claims 1, 5, 13, and 14 were amended and claims 15-17 were added.
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 1-17 are pending, which are rejected under 35 U.S.C. §§ 101 and 103.
Claim Interpretation
Claim 1 recites the limitation “performing an analysis of input variables and output variables generated during a test of the tape application process to generate a predictive data model of at least one prediction of success of an adhesive bond between the adhesive and the substrate.” (Emphasis added). This appears to recite the intended use of the analysis and does not require the generation of the predictive data model to occur in this limitation.1 “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
Claim 15 recites the limitation “one or more sensors configured to generate at least one of a plurality of input variables corresponding to at least one of an adhesive and a substrate to be used in the tape application process.” (Emphasis added). This appears to recite the intended use of the adhesive and the substrate but does not appear to require that the adhesive or substrate are used in a tape application process. “An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (‘The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.’). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
Claim Rejections - 35 U.S.C. § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-17 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 1-17, these claims are directed to an abstract idea without significantly more.
101 Analysis – Step 1
The claims recites, when considered individually or as a whole, a method, apparatus, and computer program for predicting adhesion. Therefore, claims 1-17 are within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Independent claim 1 includes limitations that recite an abstract idea (emphasized below) and will be used as a representative claim for the remainder of the § 101 rejection. Representative claim 1 recites:
1. A non-transitory computer-readable medium including instructions that, when implemented on a processor, cause the processor to perform operations including:
receiving a plurality of input variables, an input variable of the plurality of input variables corresponding to at least one of an adhesive and a substrate to be used in a tape application process;
performing an analysis of input variables and output variables generated during a test of the tape application process to generate a predictive data model of at least one prediction of success of an adhesive bond between the adhesive and the substrate;
generating at least one prediction of success based on the predictive data model; and
storing the predictive data model.
The examiner submits that the foregoing bolded limitations constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind and/or by pen and paper. For example, a person can perform each of these steps using a traditional pen and paper to track the input variables and their results in the tests and then use that data to logically predict how successful an adhesive will be. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claims, as a whole, integrate the abstract into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” while the bolded portions continue to represent the “abstract idea”):
1. A non-transitory computer-readable medium including instructions that, when implemented on a processor, cause the processor to perform operations including:
receiving a plurality of input variables, an input variable of the plurality of input variables corresponding to at least one of an adhesive and a substrate to be used in a tape application process;
performing an analysis of input variables and output variables generated during a test of the tape application process to generate a predictive data model of at least one prediction of success of an adhesive bond between the adhesive and the substrate;
generating at least one prediction of success based on the predictive data model; and
storing the predictive data model.
For the following reasons, the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitations of the “non-transitory computer-readable medium” the examiner submits that these limitations are instructions to “apply it.” See MPEP § 2106.05(f).
Additionally, the step of “storing the data model” is merely an insignificant extra-solution activity. See MPEP § 2106.05(g).
In particular, these components are recited at a high level of generality (i.e. as a general means of storage), and amounts to mere insignificant extra-solution activity.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitations as an ordered combination or as a whole, the limitation/s add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05.
Accordingly, the additional limitations do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the Revised Guidance, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of the “non-transitory computer-readably medium” amounts to nothing more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See MPEP § 2106.05(f).
And as discussed above, the additional limitations of “storing the predictive data model” the examiner submits that these limitations are insignificant extra-solution activities. See MPEP § 2106.05(d) and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015).
Hence, the claim is not patent eligible.
Dependent claims 2-17 do not recite any further limitations that cause the claims to be directed towards statutory subject matter. The claims merely recite a mental process. Each of the further limitations expound upon the mental process and do not recite additional elements integrating the mental process into a practical application or additional elements that are not well-understood, routine or conventional; particularly due to their extreme breadth and generality. Therefore, dependent claims 2-17 are similarly rejected as being directed towards non-statutory subject matter.
Therefore, claims 1-17 are ineligible under 35 U.S.C. § 101.
Claim Rejections - 35 U.S.C. § 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.
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. Applicants are advised of the obligation under 37 C.F.R. § 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, and 13-15 are rejected under 35 U.S.C. § 103 as being unpatentable over Hansen, Daniel, et al. “Performance of Polymeric Skin Adhesives during Perspiration.” ACS Applied Polymer Materials 2.4 (2020): 1535-1542. (hereinafter Hansen), as cited on the Notice of References Cited dated December 9, 2025, in view of Kang et al., Prediction of Lap Shear Strength and Impact Peel Strength of Epoxy Adhesive by Machine Learning Approach, Nanomaterials. March 30, 2021; 11(4):872, Pages 1-13 (hereinafter Kang).
Regarding claim 1, Hansen discloses a non-transitory computer-readable medium including instructions that, when implemented on a processor, cause the processor to perform operations (Hansen 1537) by disclosing that the evaluation is performed by an Instron 5943 Universal testing system, which is known to include these features. Additionally, Hansen discloses “including: receiving a plurality of input variables, an input variable of the plurality of input variables corresponding to at least one of an adhesive and a substrate to be used in a tape application process” (Hansen 1536) where the simulator allows for variables such as “sweat rate, the hydrostatic pressure upon artificial sweat pore occlusion, sweat composition, and sweat pore density” to be controlled (i.e., input). Finally, Hansen discloses “performing an analysis of input variables and output variables generated during a test of the tape application process to generate a predictive data model of at least one prediction of success of an adhesive bond between the adhesive and the substrate” (Hansen 1536-1537, § 2.3 Perspiration Simulator, 1540, § 4. Conclusion) where the simulations are performed in accordance with the variables and used to generate a linear model of the variable against the output as shown in Fig. 1(c) and that the model is used for evaluating the adhesives (i.e., to predict a success).
Hansen does not appear to explicitly disclose “generating at least one prediction of success based on the predictive data model.”
However, Kang discloses a non-transitory computer-readable medium including instructions that, when implemented on a processor, cause the processor to perform operations including “receiving a plurality of input variables, an input variable of the plurality of input variables corresponding to at least one of an adhesive and a substrate …” (Kang 4) by giving an example of a large table of input data for the artificial neural network that corresponds to adhesives. Additionally, Kang discloses “performing an analysis of input variables and output variables generated during a test of the … application process to generate a predictive data model of at least one prediction of success of an adhesive bond between the adhesive and the substrate” (Kang 4-5, § 2.3, Machine Learning Procedure) where the artificial neural network generates predictions (i.e., output) from the input data. Further, Kang discloses “generating at least one prediction of success based on the predictive data model” (Kang 9, § 3.3 Prediction of Optimized Formulation) where an optimized formulation is a predicted success because it is believed to be the best option. Finally, Kang discloses “storing the predictive data mode” (Kang 11, § 4 Conclusion) because the prediction model must necessarily be stored at least within the artificial neural network to be used by that network.
Hansen and Kang are analogous art because they are from the “same field of endeavor,” namely that of testing adhesives.
Prior to 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 Hansen and Kang before him or her to modify the adhesive testing of Hansen to include the prediction generation of Kang.
The motivation for doing so would have been that using such a model for the purposes of prediction solves a lingering and challenging problem due to the significant number of possible adhesive options for given circumstance (Kang 2), thereby reducing the complexity of the problem by shifting the large data sets to a machine learning model.
Regarding claim 2, the combination of Hansen and Kang discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Hansen and Kang discloses “wherein the input variables further include information identifying a predictor for success of the tape application process” (Hansen 1540-1541, § 4. CONCLUSION) where an example is giving of identifying the presence of absorbing adhesives as a predictor for success of the tape application process.
Regarding claim 3, the combination of Hansen and Kang discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Hansen and Kang discloses “wherein the input variables include indication of a predictor, and wherein the predictor includes a peel adhesion test.” (Hansen 1537, § 2.3.1. Peel Test).
Regarding claim 4, the combination of Hansen and Kang discloses the limitations contained in parent claim 3 for the reasons discussed above. In addition, the combination of Hansen and Kang discloses “wherein the predictor includes a 90-degree peel test.” (Hansen 1537, § 2.3.1. Peel Test).
Regarding claim 6, the combination of Hansen and Kang discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Hansen and Kang discloses “wherein the input variables indicate a substrate type” (Hansen 1537) where various variables are input for the skin substrate.
Regarding claim 7, the combination of Hansen and Kang discloses the limitations contained in parent claim 6 for the reasons discussed above. In addition, the combination of Hansen and Kang discloses “wherein the input variables include indicators for at least one of polypropylene, polyethylene, polycarbonate, stainless steel, aluminum, paint, nylon, and glass” (Hansen 1536, § 2.3 Perspiration Simulator) where indicators of polycarbonate are included.
Regarding claim 9, the combination of Hansen and Kang discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Hansen and Kang discloses “wherein the input variables include at least one of adhesive physical characteristics, adhesive thermal characteristics, adhesive electrical characteristics, adhesive curing characteristics, adhesive performance characteristics, adhesive durability characteristics, adhesive chemical resistance characteristics, adhesive rheological characteristics, adhesive viscosity, adhesive setting time, adhesive modulus of elasticity, adhesive solvent resistance, adhesive composition, adhesive dispensing characteristics, adhesive use requirements, standardized tests or certifications, environmental parameters, backing characteristics, liner characteristics, and substrate characteristics” (Hansen 1536, § 2.2.1 Rheology) where adhesive rheological characteristics are input.
Regarding claim 13, it merely recites an apparatus for performing the steps of claim 1. The apparatus comprises computer modules for performing the various functions. The combination of Hansen and Kang comprises computer software modules for performing the same functions. Thus, claim 13 is rejected using the same rationale set forth in the above rejection for claim 1.
Regarding claim 14, it merely recites a method for performing the steps of claim 1. The method comprises execution of computer software modules for performing the various functions. The combination of Hansen and Kang comprises computer software modules for performing the same functions. Thus, claim 14 is rejected using the same rationale set forth in the above rejection for claim 1.
Regarding claim 15, it merely recites an apparatus for a tape application process using the components of claim 1 and further claiming limitations also found in the combination of Hansen and Kang. Specifically, the combination of Hansen and Kang discloses “one or more sensors configured to generate at least one of a plurality of input variables corresponding to at least one of an adhesive and a substrate to be used in the tape application process” (Hansen 1537) where the flow sensors measures the flow of artificial sweat, which is an input variable corresponding to a substrate. Additionally, the combination of Hansen and Kang discloses “computational circuitry comprising at least one processor and at least one memory, the computational circuitry configured to: store the predictive data model of the non-transitory computer-readable medium of claim 1” ” (Kang 11, § 4 Conclusion) because the prediction model must necessarily be stored at least within the artificial neural network to be used by that network. Further, the combination of Hansen and Kang discloses “receive at least one of the plurality of input variables from the one or more sensors” (Hansen 1537) where the flow sensors measures the flow of artificial sweat, which is an input variable corresponding to a substrate. Finally, the combination of Hansen and Kang discloses “generate the prediction of success of an adhesive bond between the adhesive and the substrate based on the predictive data model” (Kang 9, § 3.3 Prediction of Optimized Formulation) where an optimized formulation is a predicted success because it is believed to be the best option. If the predicted optimized formulation does not match the adhesive tested, then this is intrinsically predicting no success and if the optimized formulation does match the adhesive tested it is intrinsically predicting success.
Claims 5 and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Hansen in view of Kang, as applied to claims 1 and 15 above, and in further view of Klein et al., US Publication 2017/0018165 (hereinafter Klein).
Regarding claims 5 and 16, the combination of Hansen and Kang discloses the limitations contained in parent claims 1 and 15 for the reasons discussed above. In addition, the combination of Hansen and Kang does not appear to explicitly disclose “wherein the operations further including generating a recommendation for remedial action of the tape application process in response to detecting an adverse surface quality condition related to the adhesive bond and the prediction of success.”
However, Klein discloses an automated sensing system including the step of “generating a recommendation for remedial action of the component in response to detecting an … condition related to the component and the prediction of success” (Klein ¶ 3) where the system monitors components, predicts failures, and the recommends mitigating steps.
A person of ordinary skill in the art prior to the effective filing date of the present invention would have recognized that when Klein was combined with Hansen and Kang, the components of Klein would be the tape of Hansen and Kang. Therefore, the combination of Hansen, Kang, and Klein at least teaches and/or suggests “generating a recommendation for remedial action of the tape application process in response to detecting an adverse surface quality condition related to the adhesive bond and the prediction of success,” rendering it obvious.
Hansen, Kang, and Klein are analogous art because they are from the “same field of endeavor,” namely that of component failure prediction.
Prior to 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 Hansen, Kang, and Klein before him or her to modify the adhesive predictions of Hansen and Kang to include the recommendation system of Klein.
The motivation for doing so would have been that the ability to recommend mitigating steps can save business money and reduce the potential threats to humans. (Klein ¶ 3).
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Hansen in view of Kang, as applied to claim 1 above, in further view of Khoche, US Publication 2019/0340483 (hereinafter Khoche), as cited on the Notice of References Cited dated December 9, 2025.
Regarding claim 8, the combination of Hansen and Kang discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Hansen and Kang does not appear to explicitly disclose “wherein the input variables indicate a tape type.”
However, Khoche discloses a system for simulating tape adhesion “wherein the input variables indicate a tape type” (Khoche ¶ 64) where the input variables includes types of layers, including cover (i.e., tape) layers.
Hansen, Kang, and Khoche are analogous art because they are from the “same field of endeavor,” namely that of tape simulation.
Prior to 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 Hansen, Kang, and Khoche before him or her to modify the tape simulation system of Hansen and Kang to include the tape input variables of Khoche.
The motivation/rationale for doing so would have been that of applying a known technique to a known device. See KSR Int’l Co. v. Teleflex Inc., 550 US 398, 82 USPQ2d 1385, 1396 (U.S. 2007) and MPEP § 2143(I)(D). The combination of Hansen and Kang teaches the “base device” for simulating tape adhesion. Further, Khoche teaches the “known technique” for including input variables representing the tape types that is applicable to the base device of Hansen and Kang. One of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results and resulted in an improved system.
Claims 10-12 are rejected under 35 U.S.C. § 103 as being unpatentable over Hansen in view of Kang, as applied to claim 1 above, and in further view of Lekivetz et al., US Publication 2020/0117580 (hereinafter Lekivetz) as cited on the Notice of References Cited dated December 9, 2025.
Regarding claim 10, the combination of Hansen and Kang discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Hansen and Kang discloses “wherein the operations further including feeding input values generated by the tape application process as feedback data the processor for adjusting the predictive data model.”
However, Lekivetz discloses a simulation system “wherein the operations further including feeding input values generated by the … process as feedback data the processor for adjusting the predictive data model” (Lekivetz ¶ 163) by performing the simulations using a Recurrent Neural Network (RNN), which a person of ordinary skill in the art would understand operates in the claimed manner.
A person of ordinary skill in the art prior to the effective filing date of the present invention would have recognized that when Lekivetz was combined with Hansen and Kang, the RNN of Lekivetz would be used with the data of Hansen and Kang. Therefore, the combination of Hansen, Kang, and Lekivetz at least teaches and/or suggests the claimed limitation “wherein the operations further including feeding input values generated by the tape application process as feedback data the processor for adjusting the predictive data model,” rendering it obvious.
Hansen, Kang, and Lekivetz are analogous art because they are from the “same field of endeavor,” namely that of simulation systems.
Prior to 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 Hansen, Kang, and Lekivetz before him or her to modify the simulation of Hansen and Kang to include the use of an RNN in the simulation of Lekivetz.
The motivation for doing so would have been that RNNs are well-known to provide more accurate results in many situation due to maintaining context in the analysis through the process or feeding the values back into the system.
Regarding claim 11, the combination of Hansen and Kang discloses the limitations contained in parent claim 1 for the reasons discussed above. In addition, the combination of Hansen and Kang does not appear to explicitly disclose “wherein the operations further include outputting at least one of the input variables to a display.”
However, Lekivetz discloses a simulation system “wherein the operations further include outputting at least one of the input variables to a display” (Lekivetz ¶ 249, Fig. 19) where a graphical user interface is shown that displays factors (i.e., input variables).
Hansen, Kang, and Lekivetz are analogous art because they are from the “same field of endeavor,” namely that of simulation systems.
Prior to 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 Hansen, Kang, and Lekivetz before him or her to modify the simulation of Hansen and Kang to include the use of a display in the simulation of Lekivetz.
The motivation for doing so would have been that it is widely recognized in the art that displaying simulated data to a user is advantageous because it allows the user to verify the processes.
Regarding claim 12, the combination of Hansen, Kang, and Lekivetz discloses the limitations contained in parent claim 11 for the reasons discussed above. In addition, the combination of Hansen, Kang, and Lekivetz discloses “wherein the operations further include generating and displaying a simulation of the tape application process based on at least one of the input variables” (Lekivetz ¶ 249, Fig. 19).
Claim 17 is rejected under 35 U.S.C. § 103 as being unpatentable over Hansen in view of Kang and Klein, as applied to claim 16 above, and in further view of M1000 Automatic Tape Dispenser User Manual, Leisto Industrial Co., Limited, February 5, 2012, Pages 1-16 (hereinafter Leisto).
Regarding claim 17, the combination of Hansen, Kang, and Klein discloses the limitations contained in parent claim 16 for the reasons discussed above. In addition, the combination of Hansen, Kang, and Klein does not appear to explicitly disclose “further comprising a tape applicator configured to apply the adhesive to the substrate in response to the recommendation for remedial action.”
However, Leisto discloses an M1000 tape dispenser “comprising a tape applicator configured to apply the adhesive to the substrate in response to the recommendation for remedial action” (Leisto 1-6) by describing an electronic tape dispenser that is configured to apply an adhesive to a substrate in response to any action.
Hansen, Kang, Klein, and Leisto are analogous art because they are from the “same field of endeavor,” namely that of tape systems.
Prior to 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 Hansen, Kang, Klein, and Leisto before him or her to modify the electronic tape dispenser of Leisto to include the tape prediction system of Hansen, Kang, and Klein.
The motivation for doing so would have been that a person of ordinary skill in the art would have understood that a suggested remedial action involving tape could not be performed without a tape dispenser.
Response to Arguments
Applicant’s arguments filed April 9, 2026, with respect to the rejection of claims 13 and 14 under 35 U.S.C. § 112(b) (Remarks 6-7) have been fully considered and are persuasive. The rejection of claims 13 and 14 under 35 U.S.C. § 112(b) have been withdrawn.
Applicant’s arguments filed April 9, 2026, with respect to the rejections of claims 1-14 under 35 U.S.C. §§ 102 and 103, respectively (Remarks 7) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Hansen and Kang.
Applicant's arguments filed April 9, 2026, with respect to the rejection of claims 1-14 under 35 U.S.C. § 101, (Remarks 6) have been fully considered but they are not persuasive for the reasons discussed in the updated rejection of these claims above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Blemel, US Publication 2002/0038199, System and method for predicting failures and suggesting remedial actions.
Jeong et al., US Publication 2015/0276579, System and method for predicting adhesion.
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 C.F.R. § 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 C.F.R. § 1.17(a)) pursuant to 37 C.F.R. § 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 ANDREW R DYER whose telephone number is (571)270-3790. The examiner can normally be reached Monday-Thursday 7:30-4:30.
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/ANDREW R DYER/Primary Examiner, Art Unit 3662
1 The following limitation does affirmatively require the generation of the predictive data model. However, that is a separate limitation and is interpreted as such.
Prosecution Insights