Detailed Office Action
Applicant’s arguments dated 5/21/2026 have been entered and fully considered. There are no claim amendments. Claims 1-6 and 17 are cancelled. Claims 7-16 and 18-20 remain pending
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 .
Response to Amendments and Arguments
Applicant’s arguments are not persuasive and are addressed below in the order that they appear in the arguments of 5/21/2026.
Applicant states that NOGUCHI is not analogous art.
The Examiner respectfully disagrees. Both NOGUCHI and instant application are classified under classification B01D53/00 and Examiner’s search under this classification yielded NOGUCHI. Instant application and NOGUCHI are analogous arts.
Applicant states that NOGUCHI is not reasonably pertinent to the inventor's problem.
As stated above, NOGUCHI is an analogous art and teaches the limitation under dispute (release medium comprising water). NOGUCHI provides a rationale and motivation for incorporation of this teaching in the combination method of DOUGHTY and CHENG (see the non-final office action of 2/25/2026, page 5). This is a proper 35 USC 103 rejection. Regarding being pertinent to the inventor’s problem, the Examiner notes that rationale different from Applicant’s is permissible {see MPEP 2144 (IV)}.
Applicant states that the Office's articulated rationale amounts to the following chain: Doughty teaches forming sorbent layers on both sides of an adhesive film; Cheng teaches that liners protect adhesive films; and Noguchi teaches dissolvable sacrificial films using water. But that chain elides the legally required question under KSR and why a skilled artisan would have been motivated to apply Noguchi's membrane-recovery dissolution technique to the distinct process of fabricating a layered particulate sorbent film on pressure-sensitive adhesive films, in the specific sequence required by claim 7, with a reasonable expectation of success in achieving dual-sided particulate adhesion without mechanical damage.
The Examiner indeed showed that why one of ordinary skill in the art would have been motivated to have incorporated the teachings of CHENG in the method DOUGHTY (see the non-final office action of 2/25/2026, page 4), and have incorporated the teachings of NOGUCHI in the combination method of DOUGHTY and CHENG (see the non-final office action of 2/25/2026, page 5). Applicant’s argument needs to be more detailed and specifically point out potential errors in each of those combinations and not a general statement that instant invention is a distinct process. Again, the Examiner notes that rationale different from Applicant’s is permissible {see MPEP 2144 (IV)}.
Regarding claim 9, Applicant states that the "first release liner" of claim 9 must simultaneously satisfy the requirements of a release liner (separated from the first adhesive surface per claim 8) and a sacrificial liner (removed by exposing it to a release medium per claim 7).
That is exactly what the Examiner has done in claims 7-9. As stated above, combination of DOUGHTY and CHEN teaches the release liner on the adhesive film and combination of DOUGHTY, CHENG, and NOGUCHI teaches the release liner to be a sacrificial liner since it disappears upon exposure to water.
Regarding claim 19, Applicant states that the result-effective argument is not proper.
The Examiner respectfully disagrees. The teachings of modified DOUGHTY that the adhesive film is sized (note thickness is a size) to accommodate a particular application {[0023]} is indeed a result-effective situation. The thickness or size of adhesive film depends on the particulars of the application. For example, if an application is performed under high flow condition that creates large forces, it would have been obvious to one of ordinary skill in the art to have performed routine experimentation and eventually determine a thickness that is thicker compared to a milder application. Another obvious example is for conditions where high uptake is needed, a thicker film can hold more sorbents and thus higher uptake; this is a routine experimentation and well within the skill of an artisan.
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 (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 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 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.
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.
Claims 7-16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over DOUGHTY (US-2005/0211100), hereinafter DOUGHTY, in view of CHENG (US-2018/0355218), hereinafter CHENG, and NOGUCHI (US-2021/0362091), hereinafter NOGUCHI. Note that the italicized text below are the instant claims.
Regarding claims 7 and 15-16, DOUGHTY discloses A method for fabricating a layered sorbent film {[abstract]}, comprising:
forming a first sorbent layer by adhering a particulate sorbent material to a first adhesive surface of an adhesive film {[0007], [0019]-[0020], [FIG. 1] 13/15 is the adhesive film and 14 is the particulate sorbent material},
the adhesive film further comprising a second adhesive surface opposite the first adhesive surface {[0007] note the substrate or film having adhesive layers on both sides, thus a second adhesive surface opposite the first adhesive surface}.
Regarding the next limitation of claim 7 reciting “and a sacrificial liner coupled to the second adhesive surface; removing the sacrificial liner from the adhesive film by exposing at least the sacrificial liner to a release medium, uncovering the second adhesive surface”, DOUGHTY, however, is silent on the adhesive surfaces having liners or sacrificial liners and that the liner is removed before particulate sorbent is applied to the adhesive surface.
In the same field of endeavor that is related to adhesive backing with sorbent material, CHENG discloses that it is known that adhesive film is protected by a liner {[0015], [0058]} and obviously this liner has to be removed (the release medium which could be the operator) to expose the adhesive surface.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of CHENG in the method of DOUGHTY and have obtained the adhesive film of DOUGHTY with liner or sacrificial liner that is taught by CHENG in order to protect the adhesive before applying sorbent, since CHENG clearly teaches this protection role {[0015]}.
Combination of DOUGHTY and CHENG, however, is silent on the release medium comprising water (in claim 7), and the limitations of claims 15-16.
In the same field of endeavor that is related to gas separation, NOGUCHI discloses release medium comprising water (in claim 7), wherein exposing at least the sacrificial liner to the release medium comprises submerging the sacrificial liner, the adhesive film, and the first sorbent layer in the release medium, the release medium being a liquid (claim 15), wherein the sacrificial liner comprises polyvinyl alcohol (claim 16) {[0031]-[0034]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of NOGUCHI in the combination method of DOUGHTY and CHENG and have selected the sacrificial liner to be polyvinyl alcohol resin and affecting its release by immersing it in liquid water.
As disclosed by NOGUCHI, the advantage of this removal is that it prevents damage to the rest of the laminate {[0031]}.
Note that for the rest of the claim 7 and other claims, the modified DOUGHTY method and it adhesive film has the liner or sacrificial liner for the purpose of protection and obviously this liner is removed by the method of NOGUCHI to expose the adhesive surface in order to apply the particulate sorbent onto the surface.
Regarding the last limitation of claim 7, modified DOUGHTY disclose forming a second sorbent layer by adhering the particulate sorbent material to the uncovered second adhesive surface of the adhesive film {[0007] note application of sorbent to both sides since it teaches adhesive on both sides and adsorbent immobilized as a layer on the adhesive portion that exists on both sides}.
Regarding claim 8, modified DOUGHTY discloses further comprising: separating a first release liner from the first adhesive surface of the adhesive film, uncovering the first adhesive surface; wherein the sacrificial liner is sufficiently rigid that while the sacrificial liner is coupled to the second adhesive surface, the first release liner may be removed from the first adhesive surface of the adhesive film without causing mechanical damage to the adhesive film {note that as discussed above, both adhesive surfaces of the film of DOUGHTY have the release or sacrificial liner, thus, modified DOUGHTY has the first release liner, and since the purpose of the liner is protection, they are sufficiently rigid to perform such protection}.
Regarding claim 9, modified DOUGHTY discloses wherein the first release liner is also the sacrificial liner {note above and that the Examiner interprets release liner as sacrificial since it is removed to expose the surface for sorbent attachment, thus the liner is sacrificed in favor of the sorbent attachment}.
Regarding claim 10, modified DOUGHTY discloses removing a second release liner releasably coupled to the second adhesive surface of the adhesive film, uncovering the second adhesive surface; and coupling the sacrificial liner to the second adhesive surface of the adhesive film {note above and that modified DOUGHT has a second release liner and that it can be replace with the sacrificial liner}.
Regarding claim 11, modified DOUGHTY discloses uncovering a third adhesive surface of a second adhesive film, the second adhesive film further comprising a fourth adhesive surface opposite the third adhesive surface, and a second sacrificial liner coupled to the fourth adhesive surface; adhering the uncovered third adhesive surface of the second adhesive film to one of the first sorbent layer and the second sorbent layer coupled to the adhesive film; removing the second sacrificial liner from the second adhesive film by exposing at least the second sacrificial liner to a second release medium, uncovering the fourth adhesive surface; forming a third sorbent layer by adhering the particulate sorbent material to the uncovered fourth adhesive surface of the second adhesive film {[FIG. 7] note that the instant claim 11 describes this illustration (note similarity to instant FIG. 3) where multiple layers are produced according to the procedure of claim 7 that is disclosed by modified DOUGHTY}.
Regarding claim 12, modified DOUGHTY discloses wherein the first adhesive surface and the second adhesive surface comprise pressure sensitive adhesive {[claim 5]}.
Regarding claim 13, modified DOUGHTY discloses wherein the adhesive film is composed of a single layer of an adhesive {[0007] note the embodiment that only one surface has the adhesive}.
Regarding claim 14, modified DOUGHTY discloses wherein the adhesive film comprises a thin film substrate having a first side and a second side opposite the first side, the adhesive film further comprising a first adhesive layer bonded to the first side and a second adhesive layer bonded to the second side, the first and second adhesive layers forming the first and second adhesive surfaces of the adhesive film, respectively {[0007] note the embodiment that surfaces have the adhesive, [FIG. 1] note the thin film 13}.
Regarding claim 19 limitation of “wherein the adhesive film is between 10 µm and 250 µm thick”, modified DOUGHTY discloses that the substrate or the adhesive film is sized (size includes thickness) to accommodate a particular application {[0023]}. Therefore, modified DOUGHT recognizes size or thickness of the film as a result-effective variable that is changed based on a particular application.
It is well established that determination of optimum values of result-effective variables (in this case the effect of film thickness on application appropriateness) is within the skill of one practicing in the art {see MPEP 2144.05 (ll)(B)}. At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have optimized the thickness of the adhesive film which is a result-effective variable through routine experimentation to have determined the optimum thickness for each particular application which in some cases may lead to the claimed thicknesses.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over DOUGHTY, CHENG, and NOGUCHI as applied to claims 7-8 above, and further in view of GREENBANK (US-2021/0039037), hereinafter GREENBANK.
Regarding claim 18, combination of DOUGHTY, CHENG, and NOGUCHI discloses all the limitations of claims 7-8 as discussed above. This combination, however, is silent on perforation of the adhesive film to create a plurality of apertures.
In the same field of endeavor that is related to sorbent material sheets, GREENBLANK discloses further comprising perforating the adhesive film before the first release liner has been removed such that the adhesive film comprises a plurality of apertures allowing an air flow to pass through {note that liner and adhesive film is disclosed by the combination of DOUGHTY, CHENG, and NOGUCHI as discussed above, [0058]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of GREENBLANK in the combination method of DOUGHTY, CHENG, and NOGUCHI and have perforated the adhesive film to create apertures and holes in the film.
As disclosed by GREENBLANK, the advantage of this procedure is to increase the surface area for adsorption by allowing the passage fluid or creating fluid channels {[0058]}.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over DOUGHTY, CHENG, and NOGUCHI as applied to claim 7 above, and further in view of OKANO (US-2021/0039036), hereinafter OKANO.
Regarding claim 20, combination of DOUGHTY, CHENG, and NOGUCHI discloses all the limitations of claim 7 as discussed above. This combination, however, is silent on particulate sorbent material diameter.
In the same field of endeavor that is related to solid sorbent particulates on a sheet, OKANO discloses wherein the particulate sorbent material has a diameter less than 200 µm {[0030] note particle diameter of 1 mm or less}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of OKANO in the combination method of DOUGHTY and CHENG and have chosen the disclosed particle size ranges.
Since OKANO discloses that the sizes are appropriative for CO2 capture {[abstract], [0030]}, in case an artisan would have used the method of combination of DOUGHTY, CHENG, and NOGUCHI for CO2 capture, the appropriate particle size is clearly indicated by OKANO which is in the same field of endeavor.
The Examiner notes that OKANO teaches a range of less than 1000 µm which encompasses the claimed range. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range. Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30. Also, see MPEP 2144.05 (I).
Conclusion
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 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 S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
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