RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to the specification, abstract, and claims 2-12, filed on 08 September 2026, have been entered in the above-identified application. Claims 1-15 are pending, of which claims 14-15 remain withdrawn from consideration as described on page 3 of the Office Action mailed on 08 June 2026.
WITHDRAWN REJECTIONS
The objections to the specification and abstract, made of record on page 3, paragraphs 7-8 of the office action mailed 08 June 2026 have been withdrawn due to Applicant’s amendments in the response filed 08 September 2026.
The objection to claim 7, made of record on page 13 paragraph 14 of the previous office action have been withdrawn due to Applicant’s amendment.
The provisional double patenting rejections of claims 1-13 over copending application no. 18/884,544*, made of record on page 8, paragraph 12 of the office action mailed 08 June 2026 have been withdrawn due to the application being abandoned. *Note: the previous office action referred to application 18/884,844 rather than 18/884,544. However, the ‘544 application has been abandoned making this rejection moot.
The 35 U.S.C. § 112(b) rejections of claims 2-6 and 8-12 made of record on page 13, paragraph 16 of the previous office action mailed have been withdrawn due to Applicant’s amendments.
REPEATED REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-13 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of copending Application No. 18/899,030 in view of Kerep (U.S. Pub. 2015/0291855). The claims filed on 24 June 2026 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, Claim 13 of the ‘030 application recites a pressure-sensitive adhesive product comprising a layer of adhesive compound and a carrier material. Claim 1 specifies that the adhesive includes a) at least 28% to at most 60% by weight of an elastomer component, b) from 35-50 wt. % of a tackifier resin, and d) optionally from 2.5% to 22 wt. % of a reinforcing component. These amounts overlap the amounts specified in claim 1, and further allow for the amount of elastomer and reinforcing component to be above 52 wt. % as claimed. Claim 5 also specifies that the reinforcing compound includes at least one resin with a weight average molecular weight Mw of 1000 g/mol to 15,000 g/mol. It would have been obvious to have combined these claimed features to formulate a self-adhesive tape within the scope of claim 1 of the present application.
Although the ‘030 application recites a carrier layer, it does not specify a monoaxially oriented polypropylene carrier layer.
However, Kerep describes the combination of an elastomeric adhesive and a monoaxially oriented polypropylene (MOPP) carrier film, see abstract and p. 3, [0064] and [0067]. It would have been obvious to have used a MOPP carrier with the adhesive as this provides the ideal cost/benefit balance for strapping and appliance tapes, see p. 1, [0019] and [0024].
Regarding claim 2, Kerep teaches that the MOPP carrier has a thickness of between 30 and 170 microns, see p. 5, [0107].
Regarding claim 3, claim 1 of the ‘030 application recites that the elastomer is a hydrogenated polyvinylaromatic-polydiene block copolymer.
Regarding claim 4, claim 9 of the ‘030 application recites this limitation.
Regarding clam 5, claim 1 of the ‘030 application recites that the fraction of tackifier resin is from 35 to 50% by weight of the adhesive, which overlaps the claimed range.
Regarding claim 6, claim 5 of the ‘030 application recites this limitation.
Regarding claim 7, claim 1 of the ‘030 application recites that the amount of reinforcing component is from 2.5 to 22 wt. %, which overlaps the claimed range.
Regarding claim 8, claim 1 of the ‘030 application recites that the softening point of the reinforcing component is at least 140 °C.
Regarding claim 9, claim 1 of the ‘030 application teaches using from 28% to 60% by weight of the elastomer component and 2.5% to 22% by weight of the reinforcing component, which is a range of from 30.5% to 82 % by weight in total, which overlaps the claimed range.
Regarding claim 10, claim 2 of the ‘030 application recites using from 2 to 25 wt. % of the plasticizer component which overlaps the claimed range.
Regarding claim 11, the claims of the ‘030 application do not require any mineral oil constituent.
Regarding claim 12, claim 1 of the ‘030 application recites optionally including further adjuvants reading on the claimed further additives. Claim 1 specifies up to 60 wt. % of the elastomer component and up to 22 wt. % of the reinforcing component and claim 1 specifies up to 25 wt. % of the plasticizer component. This allows for an amount of adjuvants of less than 18 wt. % or less than 10 wt. % as claimed.
Regarding claim 13, Claim 13 of the ‘030 application specifies a self-adhesive product reading on the claimed tape.
Claims 1-13 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of copending Application No. 18/812,453 in view of Kerep (U.S. Pub. 2015/0291855). The claims filed on 23 June 2026 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, Claim 13 of the ‘453 application recites a pressure-sensitive adhesive product comprising a layer of adhesive compound and a carrier material. Claim 1 specifies that the adhesive includes a) at least 28% to at most 60% by weight of an elastomer component, b) a tackifier resin, and d) optionally from 2.5% to 22 wt. % of a reinforcing component. Claim 8 further specifies that the amount of tackifier resin is from 28% to 55% by weight. These amounts overlap the amounts specified in claim 1, and further allow for the amount of elastomer and reinforcing component to be above 52 wt. % as claimed. Claim 5 also specifies that the reinforcing compound includes at least one resin with a weight average molecular weight Mw of 1000 g/mol to 15,000 g/mol. It would have been obvious to have combined these claimed features to formulate a self-adhesive tape within the scope of claim 1 of the present application.
Although the ‘453 application recites a carrier layer, it does not specify a monoaxially oriented polypropylene carrier layer.
However, Kerep describes the combination of an elastomeric adhesive and a monoaxially oriented polypropylene (MOPP) carrier film, see abstract and p. 3, [0064] and [0067]. It would have been obvious to have used a MOPP carrier with the adhesive as this provides the ideal cost/benefit balance for strapping and appliance tapes, see p. 1, [0019] and [0024].
Regarding claim 2, Kerep teaches that the MOPP carrier has a thickness of between 30 and 170 microns, see p. 5, [0107].
Regarding claim 3, claim 1 of the ‘453 application recites that the elastomer is a hydrogenated polyvinylaromatic-polydiene block copolymer.
Regarding claim 4, claim 9 of the ‘453 application recites this limitation.
Regarding clam 5, claim 8 of the ‘453 application recites that the fraction of tackifier resin is from 28 to 55% by weight of the adhesive, which overlaps the claimed range.
Regarding claim 6, claim 5 of the ‘453 application recites this limitation.
Regarding claim 7, claim 1 of the ‘453 application recites that the amount of reinforcing component is from 2.5 to 22 wt. %, which overlaps the claimed range.
Regarding claim 8, claim 1 of the ‘453 application recites that the softening point of the reinforcing component is at least 140 °C.
Regarding claim 9, claim 1 of the ‘453 application teaches using from 28% to 60% by weight of the elastomer component and 2.5% to 22% by weight of the reinforcing component, which is a range of from 30.5% to 82 % by weight in total, which overlaps the claimed range.
Regarding claim 10, claim 2 of the ‘453 application recites using from 2 to 25 wt. % of the plasticizer component which overlaps the claimed range.
Regarding claim 11, the claims of the ‘453 application do not require any mineral oil constituent.
Regarding claim 12, claim 1 of the ‘453 application recites optionally including further adjuvants reading on the claimed further additives. Claim 1 specifies up to 60 wt. % of the elastomer component and up to 22 wt. % of the reinforcing component and claim 1 specifies up to 25 wt. % of the plasticizer component. This allows for an amount of adjuvants of less than 18 wt. % or less than 10 wt. % as claimed.
Regarding claim 13, Claim 13 of the ‘453 application specifies a self-adhesive product reading on the claimed tape.
Claim Rejections - 35 USC § 103
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3,653,682 B1 in view of Kerep (U.S. Pub. 2015/0291855).
Regarding claim 1, EP ‘682 describes a hot melt adhesive composition comprising a) from 5-50 wt. % of a thermoplastic polymer, b) from 15-60 wt. % of a tackifying resin, c) from 5-30 wt. % of a plasticizer, d) a salt of hydroxylated fatty acid, and optionally e) an endbloock reinforcing resin present in the amount of from 3-20 wt. % if used, see abstract and p. 3, [0024] and p. 10, [0082-0087]. Component a) is an elastomeric block copolymer with an AB or ABA or (AB)nY structure such as having A blocks of polystyrene and B blocks of an elastomeric diene block polymer polybutadiene or polyisoprene. See p. 4, [0031]. The total amount of components a) and e) may be from 8 to 70 wt. % which overlaps the claimed range.
The reinforcing component e) has a molecular weight of from 5000 to 15,000 g/mol, see p. 10, [0085], which exceeds the claimed 800 g/mol minimum amount.
Although EP ‘682 recites a substrate layer which may be polyolefin (see p. 12, [0112]) and may be a film (see p. 12, [0111]), it does not specify a monoaxially oriented polypropylene carrier layer.
However, Kerep describes the combination of an elastomeric adhesive and a monoaxially oriented polypropylene (MOPP) carrier film, see abstract and p. 3, [0064] and [0067]. It would have been obvious to have used a MOPP carrier with the adhesive as this has better mechanical properties and provides the ideal cost/benefit balance for strapping and appliance tapes, see p. 1, [0019] and [0024].
EP ‘682 and Kerep are analogous as they are similar in structure and function, as each describes elastomeric adhesives used with polyolefin carrier layers.
Regarding claim 2, Kerep teaches that the MOPP carrier has a thickness of between 30 and 170 microns, see p. 5, [0107], or between 40 and 150 microns, see p. 1, [0022].
Regarding claim 3, EP ‘682 describes a block copolymer with styrene and a polydiene, including styrene-butadiene-styrene (SBS) or styrene-ethylene-butadiene-styrene (SEBS) and others, see p. 4, [0034-0035].
Regarding claim 4, EP ‘682 teaches suitable tackifiers at p. 5-6, [0048], a list which includes polyterpene resins formed from pinene, C9 aromatic petroleum hydrocarbon resins and their hydrogenated derivatives, and C5/C9 aliphatic and/or aromatic petroleum resins and their corresponding hydrogenated derivatives.
Regarding claim 5, EP ‘682 teaches that the amount of tackifying resin used in the adhesive may be from 20-60 wt. %, see p. 7, [0062], which overlaps the claimed range. 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 6, the endblock reinforcing resin used in EP ‘682 is an aromatic resin with an aromatic C9 hydrocarbon monomer, styrene, alpha-methylstyrene, or others, see p. 10 [0083]. The molecular weight is from 5000 to 15,000 g/mol, see p. 10 [0086].
Regarding claim 7, the endblock reinforcing resin of EP ‘682 is used in the amount of 3-20% by weight or preferably 5-15% by weight, which overlaps the claimed range.
Regarding claim 8, the endblock reinforcing resin of EP ‘682 has a softening point of from 90 to 160 °C, see p. 10, [0086], which overlaps the claimed range.
Regarding claim 9, EP ‘682 teaches using from 5-50 wt. % of the thermoplastic polymer A (see p. 2, [0023]) and from 3-20 wt. % of the endblock reinforcing resin (see p. 10, [0087]) which is a total of from 8-70 wt. % of the adhesive composition. This overlaps the claimed range.
Regarding claim 10, EP ‘682 teaches using from 5-30 wt. %, or preferably 15-25 wt. %, of a plasticizer component, see p. 7, [0063 and [0070].
Regarding claim 11, EP ‘682 does not require a mineral oil in the adhesive composition. The plasticizer oil may be a naphthenic oil, paraffinic oil, polyisobutylene, benzoate ester, wax, or an acrylic or acid modified wax, see p. 7, [0063].
Regarding claim 12, EP ‘682 teaches additional additives including from 0.1 to 10 wt. % of a salt of a hydroxylated fatty acid (see p. 8, [0071]) and from 0.1 to 2 wt. % of an antioxidant (see p. 10, [0088]).
Regarding claim 13, EP ‘682 teaches that the adhesive does not comprise a solvent, see p. 1, [0002]. A solvent is not used during the manufacturing steps described at p. 11, [0105].
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 08 September 2026 regarding the 35 U.S.C. § 103 rejection of claims 1-13 of record over EP 3,653,682 B1 in view of Kerep (U.S. Pub. 2015/0291855) have been considered but are deemed unpersuasive.
Applicant argues that the claimed invention is a pressure-sensitive adhesive tape for temporary transport securing which much securely adhere to various substrates including metals during transit, see paragraph [0002] of the published specification. Applicant argues that the EP ‘682 application is not suitable for metallic substrates. See pp. 9-10 of the remarks. As such, the EP ‘682 application is non-analogous art.
The Examiner is not persuaded. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., suitability for temporary transport securing including adherence to metal) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. § 103, the reference must be analogous to the claimed invention. A reference is analogous if (1) the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem, or (2) the reference is reasonably pertinent to the problem faced by the inventor even if it is not in the same field of endeavor as the claimed invention. See MPEP 2141.01(a) and In re Bigio, 381 F.3d 1320, 1325 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). (Emphasis added).
In this case, the EP ‘682 reference describes a hot melt adhesive composition used in an adhesive tape which is reasonably pertinent to the claimed invention which is a self-adhesive tape. The claimed invention does not require the self-adhesive tape to be used with metal substrates. Accordingly, EP ‘682 is considered to be analogous art.
Applicant further argues that claim 1 requires that “the sum of the fractions of elastomer component and reinforcing components in the pressure-sensitive adhesive is at least 52% by weight”, and that EP ‘682 does not disclose or suggest this relationship. Applicant further notes that the examples of EP ‘682 contain 0% of this component, much less than the 52 wt. % minimum required by the claim. See p. 11 of the remarks.
The Examiner is not persuaded. In accordance with MPEP §2123 a rejection is proper over a prior art reference’s broad disclosure instead of merely preferred embodiments or examples because patents are relevant as prior art for all information they contain. In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983). 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 (Fed. Cir. 1989).
In this case, the total of amount of components a) and e) in EP ‘682 may be from 8-70 wt. % which overlaps the claimed range. See description in the rejection above. 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).
Accordingly, this 35 U.S.C. § 103 rejection is maintained.
Applicant’s arguments in the response filed 08 September 2026 regarding the provisional double patenting rejections of record have been carefully considered but are deemed unpersuasive. Applicant requests remove these rejections if the provisional obviousness-type double patenting rejection is the only rejection remaining and allow the claims to issue without need of a terminal disclaimer. See p. 8 of the remarks.
The Examiner notes that MPEP § 804(I)(B) notes that a provisional double patenting rejection should continue to be made by the Examiner in each application as long as there are conflicting claims in more than one application unless the provisional double patenting rejection is the only rejection remaining. As prior art rejections are still presented under 35 U.S.C. § 103, the double patenting rejections are not the only rejections remaining. Accordingly, the provisional double patenting rejections are repeated herein.
Applicant has correctly noted that application 18/884,844 was cited in the double patenting rejection, although this application is unrelated to the present invention and is not assigned to applicant, and thus appears to be a typographical error. The Examiner agrees and notes that the intended application was 18/884,544. The ‘544 application is now abandoned, making the rejection moot.
Conclusion
All claims are rejected.
THIS ACTION IS MADE FINAL. 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 extension fee 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 Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
