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 .
Claim Objections
Claim 1 is objected to because of the following informalities: At lines 3-4, the "and" in the phrase "the pressure-sensitive adhesive and comprising" appears to be a typographical error and should be removed. Appropriate correction is required.
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 9-14 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.
Regarding claim 9, at line 3, the recitation of "an elastomer" renders antecedent basis unclear in view of the recitation of "an at least partially crosslinked elastomer" in claim 1. It is not clear whether the "an elastomer" is the "at least partially crosslinked elastomer" recited in claim 1 or a claim limitation in addition to the "at least partially crosslinked elastomer" recited in claim 1. In order to advance prosecution, for consideration on the merits below, the claim will be considered as if amended to recite "applying an aqueous dispersion of [[an elastomer]] the at least partially crosslinked elastomer, the tackifying resin, and the sulfur to the backing."
Regarding claim 10, the recitations of "an elastomer aqueous dispersion, a tackifying resin aqueous dispersion, and a sulfur aqueous dispersion" render antecedent basis unclear in view of the recitation of "an elastomer, the tackifying resin and the sulfur" in claim 9 and the recitation of "an at least partially crosslinked elastomer; a tackifying resin; and sulfur" in claim 1. In order to advance prosecution on the merits, the claim will be considered as if amended in a manner to clearly recite antecedent basis from the components already recited in claims 1 and 9.
Claims 11-14 are also rejected in view of their dependency from claim 9, rendering antecedent basis unclear for the components recited in "the aqueous dispersion" of claim 11, the "at least the elastomer" of claim 12, "the elastomer" of claim 13 and "the sulfur," "the elastomer" and "the aqueous dispersion" of claim 14.
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.
Claims 1-11, 13 and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukamura, JP2021130731 (hereafter Fukamura), discussed with reference to the attached machine translation thereof.
Regarding claim 1, Fukamura discloses a pressure-sensitive adhesive tape (para [0001] comprising a substrate and an adhesive layer (para [0021]) that includes
a backing (described as a substrate at paras [0021]-[0022]); and
a pressure-sensitive adhesive on the backing (para [0021] describing the tape comprises a substrate and a pressure-sensitive adhesive layer obtained by applying the pressure-sensitive adhesive composition to one surface of the substrate and drying the applied composition, thus disclosing the adhesive is "on" the substrate (i.e., backing)),
the pressure-sensitive adhesive comprising:
an at least partially crosslinked elastomer (a rubber component of the adhesive may be a crosslinked natural rubber (para [0011]);
a tackifying resin (tackifying resins described at para [0013]); and
sulfur (crosslinking agents are included in the adhesive composition with a preference for sulfur-based compounds, including sulfur, sulfur chloride, sulfur dichloride and polymeric polysulfides (para [0016]).
The recitation that the adhesive is "applied from an aqueous dispersion" is a product-by process-limitation. Product-by-process limitations are not limited to the manipulations of the recited steps, but only to the structure implied by the steps. MPEP 2113. The manner of application, by aqueous dispersion, does not distinguish the end product recited in claim 1 from prior art products made by a different process. In order to advance prosecution, it is noted that Fukamura teaches preparation of its pressure-sensitive adhesive composition using a dispersion medium, preferably water (paras [0019]- [0020]), i.e., an aqueous dispersion, followed by coating on a substrate (i.e., backing) (para [0032]) and drying (para [0036]).
Regarding claim 2, Fukamura discloses that its adhesive may include a crosslinked natural rubber (para [0011]) and synthetic rubbers, including isoprene rubber, styrene-butadiene rubber and acrylonitrile butadiene rubber (para [0012]).
Regarding claim 3, Fukamura discloses its tackifying resin may be a hydrogenated rosin resin, i.e., a type of rosin ester, or an aliphatic, alicyclic or aromatic hydrocarbon resin (para [0013]). Fukamura further teaches an example using a tackifying resin manufactured by Zeon Corporation under the trade name "Quinton G115" (para 0047]), described as an aliphatic and aromatic copolymer, and further understood to be a C5/C9 mixed aliphatic-aromatic hydrocarbon resin.
Regarding claim 4, Fukamura discloses the inclusion of silane coupling agents (para [0017]), understood to be vulcanization activators. Fukamura also discloses the inclusion of metal powders (para [0017]), also understood to be vulcanization activators.
Regarding claim 5, Fukamura discloses the inclusion of antioxidants at para [0017]).
Regarding claim 6, Fukamura discloses the inclusion of surfactants at para [0015]).
Regarding claim 7, Fukamura teaches its substrate, i.e., backing, may be made from a variety of materials including paper, polyester, vinyl chloride, including polyvinylchloride, polypropylene, polyethylene, and glass cloth, used alone or in a combination of two or more (para [0022]).
Regarding claim 8, this claim is understood to recite a result of a process performed on the tape of claim 1. As such, it is understood to recite a particular removability property of the tape. Fukamura is silent as to such a process being performed on its tape. However, Fukamura discloses a tape comprising the same components recited in claim 1, thus inherently disclosing the same properties, including the property ascribed to the tape recited in claim 8. 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 has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01. "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." Id. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 9, please see the Section 112 rejection above. On the merits, Fukamura discloses a process of making its tape that includes:
applying an aqueous dispersion of an elastomer, the tackifying resin, and the sulfur to the backing (paras [0009] and [0019]-[0020] disclosing the aqueous dispersion and para [0032] disclosing application to a substrate, i.e., backing); and
drying the aqueous dispersion to provide the pressure-sensitive adhesive on the backing (para [0036]).
Regarding claim 10, please see the Section 112 rejection above. On the merits, Fukamura discloses that its invention is an aqueous emulsion type pressure-sensitive adhesive composition (para [0006]) with a gel fraction of 30 to 50% (para [0006]). Fukamura further discloses its pressure-sensitive adhesive composition does not contain volatile organic compounds (VOCs) (para [0010]), thus teaching the composition is free of organic solvents. An example according to Fukamura set forth at para [0047] includes a natural rubber emulsion, i.e., a type of dispersion, a tackifying resin emulsion, i.e., a type of dispersion, and a sulfur-based crosslinking agent, described as a dispersion. In view of the teaching that the composition of Fukamura is an aqueous emulsion type that does not contain VOCS, these emulsions and dispersion are understood to be aqueous.
Regarding claim 11, see the Fukamura disclosure at paras [0010] and [0037] that no VOCs are used, thus disclosing the recited "substantially free of volatile organic solvent."
Regarding claim 13, Fukamura discloses a step of aging the pressure-sensitive adhesive tape after it is wound into a roll that includes a heat treatment at a predetermined temperature, such temperature being for example, 100°C or higher and 130°C or lower (para [0036]), understood to necessarily partially crosslink the elastomer with polysulfide bonds.
Regarding claim 16, Fukamura discloses the substrate, i.e., backing, may be paper at para [0022]).
Regarding claim 17, Fukamura discloses a combination of two or more surfactants at para [0015].
Regarding claim 18, see the rejection of claim 1 above and Fukamura teaching the inclusion of hydrogenated rosin resins at para [0013], such resins understood to be a type of rosin ester.
Regarding claim 19, see the rejection of claim 1 above, the crosslinked natural rubber disclosed in Fukamura (para [0011]) is a hydrocarbon elastomer.
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.
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 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Fukamura as applied to respective claims 9 and 1 and further in view of the teachings of Fukamura.
Regarding claim 14, Fukamura teaches its crosslinking agent, that is preferably a sulfur-based compound, an example of which is sulfur (para [0016]), is present in its adhesive composition in an amount of 5 to 30 parts by mass per 100 parts by mass of the rubber component (para [0016]), such range understood to overlap the recited range of "from one percent to ten percent by weight, based on the weight of the elastomer and the sulfur in the aqueous dispersion." In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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); MPEP 2144.05.
Regarding claim 15, Fukamura teaches a test for heat resistance performance wherein a tape according to Fukamura was wrapped around a mandrel, i.e., applied to a surface, and then heated in an oven at about 120°C for 168 hours followed by performing a peel test (para [0044]), thus teaching exposing the surface to a high temperature, but outside of the recited range of "at least 150°C."
However, Fukamura further teaches a use for its adhesive tape as a binding tape for electrical wires that are placed in environments prone to high temperatures, such as around engines (para 0037]). In view of the high temperatures that may be experienced by an adhesive tape located near a running engine, understood to include temperatures exceeding 150°C, it would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to predictably and suitably use the tape of Fukamura on a surface exposed to a temperature of at least 150°C. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fukamura as applied to claim 9 and further in view of Spies et al. US 2004/0247864 (hereafter Spies).
Regarding claim 12, Fukamura is silent as to a process step of exposing the tape to radiation to crosslink an elastomer in the composition.
Spies is directed to a pressure-sensitive adhesive tape having a backing and an adhesive layer made from a composition that includes a styrene/butadiene dispersion and natural rubber latex, the composition coated on the backing and then dried (Abstract and para [0002]). Spies teaches that the styrene/butadiene dispersion is stabilized by incorporating small amounts of carboxyl groups which improves adhesion to many substrates (para [0014]). Spies further teaches that to set a desired adhesion/cohesion balance of the adhesive layer, crosslinking agents such as aluminum or titanium chelate may be added to the composition and radiation crosslinking may be performed via the carboxyl groups present in the composition (para [0019]).
As discussed in the rejection of claims 1 and 2 above, Fukamura teaches its adhesive composition includes natural rubber (para [0011]) and a synthetic rubber that may be a styrene/butadiene rubber (para [0012]). It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Fukamura to provide the synthetic rubber component as a styrene/butadiene dispersion stabilized by incorporating small amounts of carboxyl groups for the advantage of improving adhesion to many substrates, as taught by Spies and to further include crosslinking agents taught by Spies so that the method of Fukamura may include a radiation cross-linking step via the carboxyl groups present in the composition, also as taught by Spies, for the advantage taught in Spies of setting an adhesion/cohesion balance of the adhesive layer.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fukamura as applied to claim 1 and further in view of Tseng et al., US 5,225,480 (hereafter Tseng).
Regarding claim 20, Fukamura is silent as to a low-adhesion backsize on the face of the backing opposite the face carrying the adhesive layer.
Tseng teaches a water-borne low adhesion backsize and release coating latex composition (Abstract) prepared by the emulsion polymerization of certain long-chain monomers (col. 4, line 29 to col. 5, line 5). The polymerization process is an entirely solvent-free process and Tseng teaches the resulting release coating possesses excellent release and aging properties for a variety of conventional pressure sensitive adhesives, including aggressive pressure sensitive adhesives (col. 4, lines 29-43). Tseng teaches suitable substrates include paper, nonwoven fabrics and films, including polyesters polyolefins and polyvinyl chloride (col. 12, lines 40-49). The invention of Tseng provides a roll of tape which includes the backing, a pressure-sensitive adhesive coating on one major surface of the backing and the release coating of Tseng on the opposite major surface of the backing (col. 13, lines 7-17).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the tape of Fukamura to further include the low-adhesion backsize according to Tseng for the predictable purpose of providing a release surface when the tape is in roll form and for the advantage of a backsize and release coating that is a latex made using a solvent-free process and thus free of undesirable organic solvents.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Pike, US 5,728,759 (teaches a water based pressure sensitive adhesive (Abstract) that includes an adhesive entity that may be a natural or synthetic rubber (col. 3, line 48 to col. 4, line 33); a tackifier resin that may be a C5 hydrocarbon resin or rosin ester (col. 4, lines 34-56); and a curing agent that may be hexamethylene polysulfide (col. 5, lines 36-40), understood to be a sulfur-donor curing agent).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746