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 .
Election/Restrictions
Applicant's election with traverse of Group I claims 1-17 and species A (claim 10) in the reply filed on January 28, 2026 is acknowledged. The traversal is on the ground(s) that claim 20 depends from claim 1 and is directed to a method of using the article of claim 1. Therefore, they are related and not distinct. Applicant further states that 37 CFR 1.475(b) provides that claims will be considered to have unity of invention if the claims are drawn to…a product and process of use of said product.
This is not found persuasive because as set forth in the Office action mailed on December 3, 2025, the inventions of Group I and II lack the unity of invention, because under PCT Rule 13.2, they lack the same or corresponding technical features.
The requirement is still deemed proper and is therefore made FINAL.
Claims 20-22 and Species B (claims 16-17) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 28, 2026.
Information Disclosure Statement
The information disclosure statement filed June 10, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
The examiner respectfully submits that applicant has not provided a copy of a documented cited under Cite No. 4 (“KISTLER, LIQUID FILM COATING…”) under the NPL section.
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 8-15 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 8, this claim recites “the second antistatic side”. There is a lack of antecedent basis for this limitation in the claim.
As to claim 9, this claim recites “(inclusive)”. It is unclear what is meant by this recitation in the parenthesis. The examiner respectfully submits that applicant should delete this recitation. Further, it is clear from claim that 16% and 30% are encompassed with the claim range “16% and 30%”.
As to claim 10, this claim recites “wherein the polymeric antistatic layer comprises an acrylate copolymer”. This claim depends from claim 1, wherein claim 1 recites antistatic polymer in the polymeric antistatic layer. Therefore, it is unclear whether the acrylate copolymer in claim 10 is additional polymer or further refers to the antistatic polymer of claim 1.
As to claim 13, this claim recites “such as ammonium chloride”. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
As to claim 14, this claim recites “antistatic properties”. It is unclear what specific properties are encompassed by the aforementioned recitation.
As to claim 15, this claim recites “adhesive layer is not treated with antistatic materials”. This claim depends from claims 1 and 14. However, claims 1 and 14 do not require adhesive layer. Further, claim 15 does not first positively require adhesive layer. Therefore, the aforementioned claim recitation is indefinite.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klun et al. (US 20030099802 A1).
As to claims 1 and 2, Klun teaches an article such as an insulating material in the form of e.g. woven and nonwoven fabric (fabric layer having a first fabric side and a second fabric side) (0096) that is coated with antistatic composition (polymeric antistatic layer disposed in a direction towards the second fabric side) comprising (a) at least one polymeric salt and fluorinated anion (abstract, 0001).
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shibata et al. (US 20200404986 A1).
As to claim 1, Shibata teaches a dustproof fabric (article) comprising a fiber layer 2 (fabric layer having a first fabric side and a second fabric side) (abstract, 0034) and a fiber layer 1 including e.g. polyolefins (polymeric antistatic layer disposed in a direction towards the second fabric side) comprising polymeric nonionic antistatic agent disposed on the fiber layer 2 (abstract, 0025, 0028, 0030).
As to claim 2, Shibata teaches that the fiber layer 2 is a melt blown nonwoven fabric (0036).
Claim(s) 1, 2, 7, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shiga et al. (US 20140162434 A1).
As to claims 1 and 2, Shiga teaches a dicing tape integrated film 20 (article) for a rear surface of a semiconductor wafer having a substrate 31 formed of cloth, unwoven cloth etc. (fabric layer having a first fabric side and a second fabric side) (0206, Figure 4, 0139), an antistatic agent layer 36 (polymeric antistatic layer disposed in a direction towards the second fabric side) provided on the substrate, and a pressure sensitive adhesive layer (PSA) 32 provided on the antistatic agent layer (Figure 4, 0139). Further, the antistatic layer of Shiga contains binder and polymeric antistatic agent (0140, 0123, 0124).
As to claims 7 and 8, Shiga as set forth previously teaches a PSA layer 32 (adhesive layer having a first adhesive side and a second adhesive side; the first adhesive side is disposed on the polymeric antistatic layer) provided on the antistatic agent layer 36 (first adhesive disposed on the second antistatic side) (Figure 4, 0139).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed 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.
Claim(s) 3, 9, and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shiga et al. (US 20140162434 A1).
As to claim 3, the claim does not set forth specific antistatic polymer or whether the adhesive is positively required. Shiga discloses polymeric antistatic agents (0123). 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). Given that the claimed antistatic polymer is identical to the antistatic polymer disclosed by Shiga, it is clear that the polymer of Shiga is inherently primer for an adhesive.
As to claim 9, Shiga does not explicitly teach property of the charge decay as claimed. However, 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). Given that the claimed article and the article of Shiga as set forth previously are identical or substantially identical, it is clear that the article of Shiga inherently has the aforementioned claimed property. Alternatively, the property is obviously present once the article of Shiga is provided.
As to claim 13, Shiga is silent as to disclosing presence of e.g. a metal in the article disclosed in Figure 4 at 0139.
As to claim 14, Shiga discloses an antistatic agent layer 36 between the substrate 31 and the PSA layer 32 (0139). Therefore, it is reasonable to presume that only the polymeric antistatic layer of Shiga has antistatic properties.
As to claim 15, the article of Shiga disclosed at 0139 does not require that the fabric layer and the adhesive layer be treated with antistatic materials.
Claim Rejections - 35 USC § 103
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.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiga et al. (US 20140162434 A1) as applied to claim 1 above, and further in view of Gutman et al. (US 5631079).
As to claim 4, this claim recites a generic film without any specific structure and/or composition. Shiga discloses that the surface of the substrate is treated with a known surface treatment such as undercoating agent of a tacky substance in order to improve adhesiveness, holding properties, etc. with adjacent layer (0208).
As to claim 4, Shiga does not explicitly disclose the undercoating agent as a polymer film.
Gutman discloses a heat-resistant antistatic PSA tape comprising a substrate having a primer layer and an acrylic microparticle adhesive on the primer (abstract). Further, Gutman discloses that the primer includes at least one phenolic resin and a rubber compound (abstract). Gutman further discloses coating of a primer layer on a substrate and the primer layer is dried (column 12, lines 1-10). The examiner submits that this disclosure of Gutman suggests a primer layer as a polymer film layer, because no difference is seen between the claimed film and the primer coating of Gutman.
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 primer coating of Gutman and use it in the article of Shiga such that the primer coating is applied between the substrate layer (fabric) and the polymeric antistatic layer, motivated by the desire to improve e.g. adhesiveness of the substrate with the polymeric antistatic layer and Shiga desires such undercoating.
As to claims 5-6, in the combined article of Shiga as modified by Gutman, claimed article would inherently result (i.e. fabric layer/primer layer (polymeric film layer)/polymeric antistatic layer/PSA layer).
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiga et al. (US 20140162434 A1) as applied to claim 1 above, and further in view of Kato et al. (US 4604414).
Shiga is silent as to disclosing claims 10 and 11.
Kato discloses an acrylic resin composition having excellent permanent antistatic properties which comprises a copolymer of an acrylic monomers (abstract). Kato further discloses that the starting monomer of the acrylic copolymer includes 70 wt% or more of methyl methacrylate and a copolymerizable vinyl monomer such as diacetone acrylamide (crosslinking agent) (column 4, lines 10-15 and lines 30-35). Further, Kato discloses that the suitable amount and kind of the copolymerizable monomers are elected in accordance with the desired properties of the objective antistatic resin products (column 4, lines 40-43).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a polymeric antistatic layer as claimed in claims 10 and 11, and rendered obvious by Kato in the invention of Shiga, motivated by the desire to form a polymeric antistatic layer having excellent permanent antistatic properties.
Claim(s) 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shiga et al. (US 20140162434 A1) as applied to claim 1 above, and further in view of Kim et al. (US 20190196077 A1).
Shiga is silent as to disclosing claims 10 and 12.
Kim discloses an optical film including a transparent base resin, an antistatic primer layer on at least one surface of the transparent base resin, and including a sulfonic acid polyester acryl based resin and an antistatic material (abstract). The claim does not set forth specific acrylate copolymer. The disclosure of Kim with respect to polyester acryl-based resin (0025 and 0031) meets claimed acrylate copolymer. Kim further discloses that the primer includes a crosslinking agent such as adipic acid dihydrazide (0064) in the amount of 0.5-30 parts by weight per 100 parts by weight of the binder resin (0065), which encompasses claimed crosslinking agent content of at least 2 wt%.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a polymeric antistatic layer as claimed in claims 10 and 12, and rendered obvious by Kim in the invention of Shiga, motivated by the desire to form a polymeric antistatic layer having excellent antistatic properties.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Product data sheet “3M Self-Stick Liquid Protection Fabric 36876 • 36877 • 36878 • 36879 • 36880 • 36881 • 36882 • 51005”.
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 May 13, 2026
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