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 § 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.
Claim 69 is 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.
Claim 69 recites that the polymer film of claim 1 is “two polymer films”. It is not clear if both of these films require the composition limitations of claim 1, or just one of the two polymer films comprise the components stated in claim 1.
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 73-74 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 73-74, 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 (paragraph 0057), and the pressure-sensitive adhesive film is applied to a substrate using a rubber roller several times (that is, by applying pressure) (paragraph 0064).
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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Oda et al. (US Patent Application 2011/0257337 A1, published 20 Oct. 2011) teaches a hot-melt adhesive comprising a SBS block copolymer, a tackifying resin, and polyisobutylene. Oeltjen et al. (US Patent 6,433,069 B1, published 13 Aug. 2002) teaches a hot melt pressure sensitive adhesive comprising SEPS or SEBS, a tackifying resin, a plasticizing oil, and polyisobutylene. Otaka and Yoshitomo (US Patent Application 2015/0191636 A1, published 09 Jul. 2015) teaches a pressure-sensitive adhesive sheet comprising a blend of polyisobutylene and a styrene-butadiene-styrene copolymer. Sawazaki and Matsumoto (WO 2018/042879 A1, published 08 Mar. 2018) teaches a rubber-based pressure sensitive adhesive comprising polyisobutylene and a styrene-butadiene-styrene block copolymer, a styrene-ethylene-butylene-styrene block copolymer (SEBS), or a styrene-ethylene-propylene-styrene block copolymer (SEPS). Sugie and Okkatsu (EP 0428017 B1, published 23 Feb. 1994) teaches a hot melt adhesive comprising 5-30 wt.% SEPS block copolymer, 5-30 wt.% SEPS block copolymer, 40-70 wt.% hydrogenated tackifying resin, 10-50 wt.% plasticizing oil, and less than 20 wt.% polyisobutylene.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 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