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 .
DETAILED ACTION
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 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.
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.
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.
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:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 56-69 and 73-75 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US Patent Application 2012/0128966 A1, published 24 May 2012, hereinafter Ma) and evidence provided by Engineer Calculator (“Properties and Overview of PIB (Polyisobutylene)”, accessed 21 Nov. 2025), Gündüz et al. (“Effect of polybutadiene composition on the glass transition temperature of SBS block copolymers,” J.Sci.Tech.A, Vol. 22, pp. 45-54, published 2021, hereinafter Gunduz), Masson et al. (“Glass transitions and mixed phases in block SBS,” J.Poly.Sci.B, Vol. 43, pp. 276-279, published 2004, hereinafter Masson), and Lamart (“Understanding pressure sensitive adhesives and how they’re made,” accessed 25 Nov. 2025, hereinafter Lamart).
Regarding claims 56-62, 64-68, and 73-75, Ma teaches a pressure sensitive adhesive comprising a SBS block copolymer, a styrene-ethylene/butadiene-styrene (SEBS), or styrene-ethylene/propylene-styrene (SEPS) block copolymers and polyisobutylene (PIB) (Abstract and paragraphs 0017 and 0049). Ma teaches his composition is deposited on metal substrates (paragraph 0010). Ma teaches his composition incorporates a hindered phenol antioxidant (paragraph 0037). Ma teaches the use of his pressure-sensitive adhesive as a film that is formed by extrusion (paragraphs 0057 and 0077), and the pressure-sensitive adhesive film is applied to a substrate using a rubber roller several times (that is, by applying pressure) (paragraph 0064). Ma teaches his composition is coated onto a PET film using a twin-screw extruder (paragraph 0077); thereby, forming a two-film composition.
As evidenced by Engineer Calculator, the glass transition temperature of polyisobutylene is -70 to -60°C (page 7).
As evidenced by Gunduz, the glass transition temperature of SBS block copolymers ranges from -91 to -43°C (page 52, Table 5).
As evidenced by Masson, SBS block copolymers have multiple thermal/mechanical transitions due to mixed phases in polybutadiene and polystyrene blocks, with the glass transition temperature of the polybutadiene block at -92°C and that of the polystyrene block being a broad transition occurring between -60 and +125°C (Abstract and Figure 6).
It is the examiner’s position that the glass transition temperatures recited in claim 61 for SBS correspond with the ranges for glass transitions evidenced by Gunduz and Masson for SBS block copolymers, given the variation in the measurement of glass transition temperatures due to differences in sample preparation and testing protocol. The specification of the current invention does not cite the glass transition temperature for any specific SBS copolymer.
As evidenced by Lamart, a pressure-sensitive adhesive (PSA) binds two surfaces together when pressure is applied without requiring a solvent, water, or heat activation, and the strength of the bond is determined by the amount of pressure applied during installation (page 1, “What are pressure-sensitive adhesives?” section, 1st paragraph).
Therefore, the pressure sensitive adhesive taught by Ma would not adhere to a substrate without applying heat or pressure.
Ma teaches the inclusion of talc, hindered phenol antioxidants (phenolic compound), and a hydrocarbon or hydrogenated cycloaliphatic hydrocarbon resin, such as Arkon P resins from Arakawa Chemical Industries in his composition (paragraphs 0032-0033, 0037, and 0076).
In light of the overlap between the claimed method of making a polymer film and that disclosed by Ma, it would have been obvious to one of ordinary skill in the art to use a method of making a polymer film that is both disclosed by Ma and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 63, Ma teaches the elements of claim 1, and Ma teaches peel strengths of 38-101 N/dm (5.4-14.3 oz/in) on polymeric substrates (Tables 6 and 9).
Additionally, it is the examiner’s position that, given the adhesive taught by Ma has the same composition as the current invention, the composition taught by Ma would inherently have the same peel strength with a metal substrate.
Regarding claim 69, Ma teaches the elements of claim 1, and Ma teaches the inclusion of more than one adhesive layer in his adhesive article (paragraph 0059).
Claim 70 is rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US Patent Application 2012/0128966 A1, published 24 May 2012, hereinafter Ma) in view of Griffin (“Chemical Milling of Aluminum,” pp. 280-331, Encyclo.Aluminum and Its Alloys, published 2018, hereinafter Griffin) and evidence provided by Engineer Calculator (“Properties and Overview of PIB (Polyisobutylene)”, accessed 21 Nov. 2025), Gündüz et al. (“Effect of polybutadiene composition on the glass transition temperature of SBS block copolymers,” J.Sci.Tech.A, Vol. 22, pp. 45-54, published 2021, hereinafter Gunduz), Masson et al. (“Glass transitions and mixed phases in block SBS,” J.Poly.Sci.B, Vol. 43, pp. 276-279, published 2004, hereinafter Masson), and Lamart (“Understanding pressure sensitive adhesives and how they’re made,” accessed 25 Nov. 2025, hereinafter Lamart).
Regarding claim 70, Ma teaches the elements of claim 67.
Ma does not disclose the cleaning of the top surface of the metal substrate.
Griffin teaches that aluminum must be cleaned before applying a mask (page 281, 1st column, Chemical milling process steps / Pre-mask cleaning, 1st paragraph).
Given that Ma and Griffin are drawn to applying polymeric films onto metal substrates, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to clean the metal surface before applying a polymeric material to a metal substrate as taught by Griffin in the adhered article taught by Ma. Since Ma and Griffin are drawn to applying polymeric films onto metal substrates, one of ordinary skill in the art would have a reasonable expectation of success in cleaning the metal surface before applying a polymeric material to a metal substrate as taught by Griffin in the adhered article taught by Ma. Further, Griffin teaches that cleaning removes lubricants and soils (page 281, 1st column, Chemical milling process steps / Pre-mask cleaning, 1st paragraph).
Claim 71-72 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (US Patent Application 2012/0128966 A1, published 24 May 2012, hereinafter Ma) in view of Carrillo and Brown (US Patent 3,647,645, published 07 Mar. 1972, hereinafter Carrillo) and evidence provided by Engineer Calculator (“Properties and Overview of PIB (Polyisobutylene)”, accessed 21 Nov. 2025), Gündüz et al. (“Effect of polybutadiene composition on the glass transition temperature of SBS block copolymers,” J.Sci.Tech.A, Vol. 22, pp. 45-54, published 2021, hereinafter Gunduz), Masson et al. (“Glass transitions and mixed phases in block SBS,” J.Poly.Sci.B, Vol. 43, pp. 276-279, published 2004, hereinafter Masson), and Lamart (“Understanding pressure sensitive adhesives and how they’re made,” accessed 25 Nov. 2025, hereinafter Lamart).
Regarding claims 71-72, Ma teaches the elements of claims 56 and 67, and Ma teaches forming his adhesive into a single-coated tape (paragraph 0010).
Ma does not disclose the use of his adhesive in the chemical or electrochemical processing of metal substrate.
Carrillo teaches the application of pressure sensitive tape to a portion of a perforated panel made of steel stock clad with aluminum before the masked panel is anodized (Abstract and col. 1, lines 30-33).
Given that Ma and Carrillo are drawn to applying pressure sensitive adhesives to metal substrates, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply pressure sensitive tapes to portions of a metal panel before the panel is anodized as taught by Carrillo using the pressure sensitive tape taught by Ma. Since Ma and Carrillo are drawn to applying pressure sensitive adhesives to metal substrates, one of ordinary skill in the art would have a reasonable expectation of success in applying pressure sensitive tape to portions of a metal panel before the panel is anodized as taught by Carrillo using the pressure sensitive tape taught by Ma. Further, Carrillo teaches his method, which includes of applying pressure sensitive tape, provides a means for selectively anodizing a perforated panel (col. 1, lines 58-66), which allows for a panel to be anodized except the appearance side (col. 3, lines 11-16).
Response to Arguments
Applicant's arguments filed 17 Aug. 2026 have been fully considered, but they were not persuasive. Applicant’s amendments have necessitated new grounds of rejection, which are presented above.
Applicant amended claims 56, 59-61, 64-67, and 69 and added claim 75.
Applicant argues that Ma does not teach a solvent-free composition, nor loading the solvent-free composition into an extruder.
However, as presented above, Ma teaches coating substrates by extruding his composition via an extruder, as described in paragraph 0077 of Ma.
Applicant argues that Ma does not teach his composition has a first structure that then forms a second structure as heat or pressure are applied to the composition.
However, Ma teaches his composition is a pressure sensitive adhesive (Title and Abstract), and, as presented above, Lamont provides evidence that a significant characteristic of a pressure sensitive adhesive is that its adhesive strength is a function of the pressure applied to the adhesive in contact with a substrate, and, as presented above, Ma teaches his pressure-sensitive adhesive film is applied to a substrate using a rubber roller several times (that is, by applying pressure) (paragraph 0064)..
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 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, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/
Primary Examiner, Art Unit 1787
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