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 .
Rejection
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 Rejections - 35 USC § 102
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2018/0117885 A1).
Regarding claim(s) 1, Kim teaches a double-sided adhesive tape (100) comprising, in order, second acrylic adhesive layer (142), thermoplastic film layer (110) (film substrate), black layer (120), acrylic foaming layer (130) and first acrylic adhesive layer (141) (para 0022; Fig. 1); which said foaming layer(130)/adhesive layer (141) in combination teach a first adhesive foam layer. Thus, the laminate of layer (130)/ layer (140), with said layer (140) disclosed as an adhesive, positions said laminate to adhere to a first adherend.
The black layer (120) of Kim is formed from a composition comprising carbon black (separation layer comprising carbon black pigment) and a binder resin which is applied via a coating composition such as, inter alia, spray coating (para 0032-0034, 0036).
Claim Rejections - 35 USC § 103
Claim(s) 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2018/0117885 A1) in view of Kataoka et al. (WO 2020/059791 A1). Citations from ‘791 were taken from a machine translation, which is included with the previous action.
Regarding claim(s) 3 and 5-6, Kim teaches the double-sided adhesive tape (100) comprising the black layer (120), acrylic foaming layer (130) and the first acrylic adhesive layer (141) as in the rejection of claim 1 forth above, to include said black layer (120) comprising a composition comprising carbon black and a binder resin (para 0036).
Kim is silent to the black layer (120) (i.e., the presently claimed separation layer) additionally comprising a curing agent (current claim 6), and demonstrating a tensile stress at break of less than 4 MPa (current claim 3) and a tensile elongation at break of 360% or less (current claim 5).
In addition, Kataoka teaches a double-sided pressure-sensitive adhesive (PSA) tape (1) comprising foam substrate (2) first and second resin layers (41, 42) and first and second PSA layers (31, 32) (para 0009; Fig. 1), which said resins layers provide tape (1) with stress relaxation and impact resistance properties, and via adjustments of the tensile modulus, provide tape (1) reworkability, the suppression of wrinkles and winding properties (para 0029).
Kataoka also teaches that the resin layers comprise thermoplastic elastomers towards improving the stress relaxation, impact resistance and reworkability (para 0035) such as, inter alia, acrylic (co)polymer further towards strength, elongation, flexibility, self-adhesiveness and improved adhesion between the resin layer and the foam substrate (para 0036, 0044).
Kataoka continues to teach a styrene-acrylic block copolymer comprises a styrene hard block towards adjusting the tensile stress at break (para 0046) and a monomer having a carboxyl group towards crosslinking with a crosslinking agent (curing agent) to improve manufacturability (para 0047). Kataoka further teaches that the styrene-acrylic block copolymer comprises a soft segment monomer towards adjusting the tensile stress at break and breaking elongation (para 0049-0051).
While the tensile stress at break of the disclosed resin layers of Kataoka is 4 MPa or more (para 0030), versus less than 4 MPa presently claimed for the recited separation layer, and while the tensile elongation at break of the disclosed resin layers of Kataoka is 400% or more (para 0032), versus 360% or less presently claimed for the recited separation layer, the Applicant is respectfully reminded that the:
MPEP 2123(I) instructs that “The use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they contain.” In re
Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one
having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v.
Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.
975 (1989).
Examiner’s emphasis.
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the black layer (120) of Kim with the styrene-acrylic block copolymer and the crosslinking agents, and to further adjust the proportions of the hard and soft segments and the crosslinking density for the intended application since 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)) towards the black layer (120) of the cited prior art demonstrating the presently claimed tensile stress at elongation at break based on the stress relaxation, impact resistance, reworkability, wrinkle suppression, winding properties, strength, elongation, flexibility, self-adhesiveness, and/or improved adhesion between the resin layer and the acrylic foam layer (130) as in the present invention.
Regarding claim(s) 4, as noted above in the rejection of current claim 1, Kim that said black layer (120) is formed from a composition comprising carbon black (pigment) and a binder resin which is applied via a coating composition such as, inter alia, spray coating (coating liquid) (para 0032-0034, 0036).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2018/0117885 A1) in view of Shizukuda et al. (US 5658630).
Regarding claim 7, Kim is silent to an auxiliary layer directly laminated to acrylic foam layer (130) and black layer (120).
However, Shizukuda teaches a multilayer foamed PSA tape comprising flexible film (3) with primer layers (11, 12) (auxiliary layer) on opposing sides towards improving adhesivity to the foamed PSA (5) (column 3, lines 40-58; Fig. 6).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide a primer layer interim to the black layer (120) and acrylic foam layer (13) of Kim towards improving the adhesion between said layers (120) and (130) as in the present invention.
Response to Arguments
Applicant's arguments, see the claim amendments and the remarks filed 12/19/2025, with respect to the rejection of claim 1 over Kim et al. under 35 U.S.C. 102(a)(1) as set forth in paragraph 5 of the action mailed 9/22/2025, have been fully considered but they are not persuasive.
The Examiner respectfully acknowledges the lone amendment to the claimed invention,
and the remarks asserting that said amendment distinguishes over the prior art given that the first acrylic adhesive layer (141) is outer most of the double-sided adhesive tape (100) Kim, and thus available for adherence to a first adherend; while the acrylic foam layer (130) is interior to the tape (100), and thus NOT available for adherence to a first adherend.
However, as cited previously, and maintained above, Kim teaches that tape (100) comprises a laminate given by the combination of the acrylic foaming layer (130) and the first acrylic, which said foaming layer(130)/adhesive layer (141) laminate teaches the presently claimed first adhesive foam layer. Thus, the laminate of layer (130)/ layer (140), with said layer (140) disclosed as an adhesive, positions said laminate to adhere to a first adherend.
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/28/2026