DETAILED ACTION
Applicant’s amendment submitted on March 18, 2026 (“amendment”) in response to the Office action mailed on December 19, 2025 (“previous OA”) have been fully considered.
Support for the amendment to claim 1 can be found in paragraphs 0036, 0053, 0062 of the published application and original claim 6.
The objection to the IDS is maintained. Applicant has stated that a copy of the document listed under “Cite No.2” under NPL in the IDS filed on December 27, 2023 appears in the PAIR file wrapper (pages 6-7 of the amendment). However, the examiner respectfully submits that the EP3091059A1 reference pointed out by applicant is not at issue. As set forth in the OA, the document listed under Cite No.2 (“ROEMPP, THIEME…”) is following:
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The examiner submits that the above mentioned document cited in the IDS is not in English and applicant has not provided a concise explanation of the relevance.
The objection to the specification is withdrawn. Further, applicant’s amendment to the specification submitted on March 18, 2026 is acknowledged.
The rejection of claims 1-12 under 35 USC 112(b) as set forth in the previously OA that are not maintained are withdrawn. Further, in view of the amendment, a new rejection under 35 USC 112(b) is introduced.
In view of the amendment, the art rejection of record as set forth in the previous OA is modified.
Information Disclosure Statement
The information disclosure statement filed on December 27, 2023 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
The IDS lists a document (see Cite No 2) under NPL, which is not in English. Applicant has not provided a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of this document. not in the English language.
Claim Objections
Claim 1 is objected to because of the following informalities: claim recitation “a total more than 60.0% by weight” should be replaced with “a total of more than 60.0% by weight” to better characterize applicant’s invention.
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.
Claims 1-5 and 7-12 are 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.
As to claim 1, this claim recites “a stabilizing foil which imparts improved dicuttability to the reactive adhesive tape”. The examiner submits that the recitation “improved dicuttability” is a relative term and as such subject to different interpretations. The meets and bounds of the recitation “improved dicuttability” are unclear.
Further, as to claim 1, this claim recites “a total more than 60.0% by weight of at least one polymer, based on the total weight of the reactive adhesive”. There is a lack of antecedent basis with respect to the recitation “the reactive adhesive”. The examiner submits that claim recites “first outer reactive adhesive layer” and “second outer reactive adhesive layer”. It is unclear whether “the reactive adhesive” refers to the first outer reactive adhesive layer” and the second outer reactive adhesive layer. For claim interpretation, the first outer reactive adhesive layer or the second outer reactive adhesive layer includes total of 60.0 % by weight of at least one polymer.
Further, as to claim 1, this claim recites “wherein at least one of the reactive adhesives is foamed”. Moreover, in the amendment, the claim 1 further recites “the reactive adhesive is foamed”. There is a lack of antecedent basis with respect to the recitation “the reactive adhesive”.
Further, as to claim 1, this claim recites “the content of the epoxy resin is 18 to 50% by weight, based on the total weight of the reactive adhesive”. There is a lack of antecedent basis with respect to the recitations “the epoxy resin” and “the reactive adhesive”.
As to claim 5, this claim recites “the foil”. There is a lack of antecedent basis for this limitation in the claim. This recitation is interpreted as “the stabilizing foil”.
As to claim 7, this claim recites “each of the reactive adhesives”. There is a lack of antecedent basis with respect to this limitation in the claim.
Further, as to claim 7, this claim recites “one epoxy resin”. It is unclear whether this epoxy resin is additional epoxy resin or refers to “at least one epoxy resin” recited in claim 1.
Further, as to claim 7, this claim recites “UV initiator”. It is unclear whether this UV initiator is same as the photoinitiator of parent claim 1 or additional initiator.
As to claim 8, this claim recites “the reactive adhesives”. There is a lack of antecedent basis with respect to this limitation in the claim.
Further, as to claim 8, this claim recites “at least one of the reactive adhesive comprise at least one cycloaliphatic epoxy resin”. It is unclear whether the cycloaliphatic epoxy resin is additional epoxy resin or refers to “at least one epoxy resin” recited in claim 1.
As to claim 9, this claim recites “independently of one another, one or both reactive adhesives each comprise…” It is unclear what is meant by the recitation “independently of one another” if both reactive adhesives comprise the solid and liquid epoxy resins recited in the claim. Further, as to the claim recitation “one or both reactive adhesives”. It is unclear whether this recitation refers to “a first outer reactive adhesive” and “second outer reactive adhesive”.
Further, as to claim 9, this claim recites “one or both reactive adhesives each comprise at least one liquid and at least one solid epoxy resin…”. It is unclear whether the liquid epoxy resin and solid epoxy resin recited in the claim refer to additional epoxy resins or refers to “at least one epoxy resin” recited in claim 1.
As to claim 10, this claim recites “independently of one another, both reactive adhesives each comprise…”. It is unclear what is meant by the recitation “independently of one another” if both reactive adhesives comprise poly(meth)acrylate of claim10.
Further, as to the claim 10 recitation “both reactive adhesives each comprise”, it is unclear whether this recitation refers to “a first outer reactive adhesive” and “second outer reactive adhesive”.
As to claim 11, this claim recites “independently of one another, one or both reactive adhesives are syntactically foamed.” It is unclear what is meant by the recitation “independently of one another” if both reactive adhesives are syntactically foamed. Further, it is unclear whether the recitation “one or both reactive adhesives” refers to “a first outer reactive adhesive” and “second outer reactive adhesive”.
As to claim 12, this claim recites “independently of one another, one or both reactive adhesives comprise a multiplicity of expanded microballoons.” It is unclear what is meant by the recitation “independently of one another” if both reactive adhesives comprise expanded microballoons. Further, it is unclear whether the recitation “one or both reactive adhesives” refers to “a first outer reactive adhesive” and “second outer reactive adhesive”.
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.
Claims 1-5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Burmeister et al. (WO 2017207119 A1; US 20200325362 A1 is relied upon as equivalent document in the Office action) in view of Dollase et al. (US 20150037559 A1) and Yang et al. (WO 2020240343 A1: US 20220251432 A1 is relied upon as equivalent document in the Office action), and as evidenced by Koyama et al. (US 5234792).
As to claim 1, Burmeister discloses a pressure-sensitive adhesive (PSA) strip (reactive adhesive tape) comprising an inner layer F of a film carrier (stabilizing foil), a first layer SK1 (first outer reactive adhesive) formed of self-adhesive composition based on a foamed acrylate composition, and a second layer SK2 (second outer reactive adhesive) formed of self-adhesive composition based on a foamed acrylate composition (abstract, 00048-0051).
Further as to claim 1 limitation “stabilizing foil which imparts improved diecuttability to the reactive adhesive tape”, the examiner submits that Burmeister does not explicitly disclose this limitation. However, the claimed foil is PET foil (see claim 5). Burmeister discloses that the film carrier is PET (0238). 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). Further, Burmeister discloses “The general expression “adhesive strip” (pressure-sensitive adhesive strip), or else synonymously “adhesive tape” (pressure-sensitive adhesive tape), in the context of this invention, encompasses all sheetlike structures such as films or film sections extending in two dimensions, tapes having extended length and limited width, tape sections and the like, and lastly also die-cut parts or labels.” (0260). Given that Burmeister and applicant disclose identical foils, absent any factual evidence on the record, it is clear that the foil of Burmeister inherently imparts improved diecuttability to the reactive adhesive tape as claimed.
Further, as to claim 1, Burmeister discloses that the self-adhesives further include epoxy crosslinkers (0088, 0129, 0166-0167), photoinitiator (at least one photoinitiator) (0130), hollow beads (foaming agent) to form syntactically foamed adhesive (0008, and 0215), and polyacrylate polymer (at least one polymer) (0072).
Further as to claim 1, both adhesives SK1 and SK2 of Burmeister are crosslinked (0064, 0073, 0087). As such, a person having ordinary skill in the art would recognize that the adhesives SK1 and SK2 of Burmeister are reactive adhesive. Given that the adhesives of Burmeister are reactive, the PSA strip of Burmeister is a reactive adhesive tape as claimed.
As to claim 1, the difference between the claimed invention and the prior art of Burmeister is that Burmeister is silent as to disclosing the amount of polymer as claimed (60.0 wt% or more) and the content of the epoxy resin is 18-50% by weight, based on the total weight of the reactive adhesive.
Dollase discloses a PSA having a high bond strength (0012). The PSA of Dollase comprises 30-65 wt% based on the total weight of the adhesive, of at least one poly(meth)acrylate (0013). The claimed range of at least one polymer of more than 60.0 wt% overlaps or lies within the range disclosed by Dollase such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
Burmeister discloses PSA comprising polyacrylate polymer (0072) but does not explicitly disclose its amount as claimed. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the polyacrylate of Burmeister in the amount disclosed by Dollase, which renders obvious the claimed amount of polymer, motivated by the desire to form the PSA of Burmeister.
Further, as to claim 1, Burmeister as modified by Dollase is silent as to disclosing the content of the epoxy resin is 18-50% by weight, based on the total weight of the reactive adhesive.
Yang discloses a curable PSA and adhesive tape (abstract). The curable PSA of Yang includes 30-65 parts by weight of reactive polyacrylate, 30-50 parts by weight of a liquid epoxy resin, 5-20 parts by weight of solid epoxy resin, 0.3-5 parts by weight of a hydroxyl containing compound, and 0.02-3 parts of a photoinitiator (0007).
Yang further discloses adhesive comprising 50 parts by weight of CSA 9005L, 40 parts by weight of liquid epoxy resin (YD-128), 10 parts by weight of solid epoxy resin (NEPS901), 1 part by weight of V2070, and 1 part by weight of 1176 (Example E1, Table 1 and Table 2). As such, wt% of at least one epoxy resin disclosed by Yang is 43.5 wt% (calculated as (40/(50+40+10+1+1)) * 100 = 43.5 wt%), which is within the claimed range of 18 wt%-50 wt%.
Yang further discloses that when the epoxy resin component is a mixture of the liquid epoxy resin and the solid epoxy resin, and the amount of the liquid epoxy resin in the composition is 30-50 parts by weight, preferably 30-40 parts by weight, and the amount of the solid epoxy resin is 5-20 parts by weight, preferably 10-20 parts by weight, warping can be effectively prevented by virtue of a synergistic effect of the two epoxy resins without obviously reducing the bonding strength (0066). Further, Yang discloses that, when the epoxy resin component consists of only the solid epoxy resin, the bonding strength of the cured pressure-sensitive adhesive is lower; when the epoxy resin component consists of only the liquid epoxy resin, although the bonding strength of the cured pressure-sensitive adhesive may be higher, the problem of warping will occur (0067). Moreover, Yang discloses that when the total amount of the epoxy resin component is overly small, the bonding strength of the cured pressure-sensitive adhesive is poor. When the total amount of the epoxy resin component is overly great, the toughness of the cured pressure-sensitive adhesive is not good. That is to say, the cured pressure-sensitive adhesive is brittle (0068).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a solid and a liquid epoxy resins of Yang and use it in the adhesives of Burmeister wherein the content of the epoxy resin disclosed by Yang is within the claimed range of 18-50% by weight, motivated by the desire to form the adhesive tape having suitable bond strength and resistance to warping.
As to claims 2 and 3, Burmeister as set forth previously discloses polyacrylate polymer (0072), which suggests claimed “poly(meth)acrylates”. The examiner submits that a person having ordinary skill in the art would recognize that “poly(meth)acrylate” encompasses polyacrylate and polymethacrylate.
As to claim 4 and 5, Burmeister discloses that the film carrier is PET (0238).
As to claim 7, Burmeister discloses epoxy crosslinkers (at least one epoxy resin) (0088, 0129, 0166-0167). Further, Burmeister discloses photoinitiator (0130). Therefore, a person having ordinary skill in the art would recognize that each reactive adhesive of Burmeister would include epoxy resin and UV initiator, which is same.
As to claim 8, Burmeister discloses epoxycyclohexyl carboxylate as polyfunctional epoxide crosslinker (0167). A person having ordinary skill in the art would recognize that the aforementioned crosslinker meets claimed cycloaliphatic epoxy resin.
As to claim 9, Yang discloses that when the epoxy resin component is a mixture of the liquid epoxy resin and the solid epoxy resin, and the amount of the liquid epoxy resin in the composition is 30-50 parts by weight, preferably 30-40 parts by weight, and the amount of the solid epoxy resin is 5-20 parts by weight, preferably 10-20 parts by weight, warping can be effectively prevented by virtue of a synergistic effect of the two epoxy resins without obviously reducing the bonding strength (0066). Further, Yang discloses that, when the epoxy resin component consists of only the solid epoxy resin, the bonding strength of the cured pressure-sensitive adhesive is lower; when the epoxy resin component consists of only the liquid epoxy resin, although the bonding strength of the cured pressure-sensitive adhesive may be higher, the problem of warping will occur (0067). Moreover, Yang discloses that when the total amount of the epoxy resin component is overly small, the bonding strength of the cured pressure-sensitive adhesive is poor. When the total amount of the epoxy resin component is overly great, the toughness of the cured pressure-sensitive adhesive is not good. That is to say, the cured pressure-sensitive adhesive is brittle (0068).
Further, as to the claimed ratio of the liquid to solid epoxy resin, a person having ordinary skill in the art would recognize that for 10 parts by weight of a solid epoxy resin and 30 parts by weight of a liquid epoxy resin disclosed by Yang above (0066), the ratio of liquid epoxy resin to solid epoxy resin of 3:1 in Yang meets claimed ratio.
As to claim 10, Burmeister discloses that the polyacrylate includes acrylate and/or methacrylate and/or olefinically unsaturated monomers (iii) (0079). Further, Burmeister discloses tetrahydrofurfuryl acrylate monomer as an example of monomer (iii) (0086 and 0087). A person having ordinary skill in the art would recognize that tetrahydrofurfuryl acrylate contains a cyclic ether group (see column 30, lines 30-35 of Koyama “Note that any cyclic ether compounds such as tetrahydrofurfuryl acrylate…”).
As to claim 11, Burmeister discloses that the adhesives are syntactically foamed (0007-0008 and 0235).
As to claim 12, Burmeister discloses that the adhesive comprises expanded microballoons (0219).
Response to Arguments
Applicant's arguments filed in the amendment have been fully considered but they are not persuasive.
Applicant argues that the claim 1 includes nature limitation “a stabilizing foil which imparts improved diecuttability to the reactive adhesive tape”. According to applicant, this limitation is the “gist” of the present invention. Applicant argues that in Burmeister, the issue of “diecuttability” is not relevant. Further, applicant argues that the prior art of Burmeister is removed from any consideration, because the adhesive disclosed in Burmeister are to “bi-phaic” adhesive layers with two separate domains having an adhesive phase and a “rubber phase”, which is both a “block copolymer” of two or more elastomeric units (applicant points to paragraphs 0012-0014 of Burmeister). Applicant argues that such adhesive layers are not disclosed in the instant application. Pages 9-10 of the amendment.
The examiner respectfully disagree.
First, as to claim 1 limitation “a stabilizing foil which imparts improved diecuttability to the reactive adhesive tape”, the examiner submits that Burmeister does not explicitly disclose this limitation. However, the claimed foil is PET foil (see claim 5). Burmeister discloses that the film carrier is PET (0238). 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). Further, Burmeister discloses “The general expression “adhesive strip” (pressure-sensitive adhesive strip), or else synonymously “adhesive tape” (pressure-sensitive adhesive tape), in the context of this invention, encompasses all sheetlike structures such as films or film sections extending in two dimensions, tapes having extended length and limited width, tape sections and the like, and lastly also die-cut parts or labels.” (0260). Given that Burmeister and applicant disclose identical foils, absent any factual evidence on the record, it is clear that the foil of Burmeister inherently imparts improved diecuttability to the reactive adhesive tape as claimed. Accordingly, applicant’s argument is not found persuasive.
Second, the examiner submits paragraphs 0012-0014 of Burmeister (US 20200325362 A1) pointed out by applicant do not mention bi-phasic adhesive layers with two separate domains having an adhesive phase and a rubber phase. Moreover, the claimed invention does not exclude “bi-phasic” adhesive. The preamble of claim 1 recites “A reactive adhesive tape comprising…”. The transitional term "comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03 (I). Accordingly, applicant’s argument is not commensurate in scope with the claimed invention.
Applicant argues that while the PSA strip of Burmeister being useful for “very high shock resistance”, such is not a curable adhesive tape. Applicant points to page 3 of the specification “It was an object of the invention…”. Pages 9-10 of the amendment.
The examiner respectfully submits that applicant’s argument is not commensurate in scope with the claimed invention.
Applicant argues that Dollase is unconcerned with “diecuttabilty” which is central to the currently claimed invention. Pages 10-11 of the amendment.
The examiner respectfully disagrees. The examiner submits that as set forth in the current Office action, claim limitation relating to the diecuttability is met by the disclosure of the primary reference of Burmeister. Therefore, applicant’s argument is not commensurate in scope with the basis of the rejection as set forth in the current Office action.
With respect to applicant’s comments “But if considered jointly, all consideration of Burmeister and Dollase with any further….that would lead away from the claimed invention…” (page 11 of the amendment), the examiner respectfully submits that it is unclear what is applicant is trying to convey. The examiner notes that as set forth previously, the bi-phasic adhesive is not excluded from the claimed invention.
Applicant argues that Yang is directed to a different technical problem than the issue of “diecuttability”. According to applicant, Yang might be considered as teaching away, because a significant degree of flexibility is essential to the invention of Yang, and thus “stiffness” is to be eschewed. According to applicant, while Yang discloses single-sided and double-sided tapes, Yang does not specify that “stiffness” is in any way desirable, which is in contravention of the concern of “diecuttability” germinal to applicant’s invention. Page 12 of the amendment.
The examiner respectfully disagrees. Yang is not relied upon in the Office action to meet claimed diecuttability (“a stabilizing foil which imparts improved diecuttability to the reactive adhesive tape”). As set forth in the current Office action, the prior art of Burmeister is relied upon to meet this limitation. Accordingly, applicant’s argument is not found persuasive.
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.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 April 21, 2026
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