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 .
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.
Application Status
This is a first action on the merits. A preliminary amendment was filed on 05 April 2024 canceling claims 1-8 and adding claims 9-27. Claims 9-27 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09 April 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings received on 05 April 2024 are acceptable.
Claim Objections
Claims 9-27 are objected to because of the following informalities. Appropriate correction is required.
Regarding claims 9 and 18, The claimed inventions are described as “A coating material…” but are described to be a layered structure having a least a base material, a non-adhesive layer, and an adhesive layer. The Examiner suggests that such a structure is instead better described as “A layered material…” or “A coated material…”
Claims 10-17 and 19-27 each also refer to “The coating material according to claim [number]…”.
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.
Claims 9-17 and 24 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 9, line 2, the phrases "sheet-like" and “plate-like” render the claim indefinite because the claim includes elements not actually disclosed (those encompassed by "-like"), thereby rendering the scope of the claim unascertainable. It is unclear what material is not a sheet or plate yet sufficiently “sheet-like” or “plate-like” to be considered within the metes and bounds of the claim. See MPEP § 2173.05(d).
Regarding claims 16 and 24, the claims refer to the second surface of the base material having a color with lightness of 5 or more. The term “lightness of 5 or more” is a relative term which renders the claim indefinite. The term “lightness” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 10-17 depend on or refer to one or more of the above claims and thus incorporate the above-described indefinite subject matter.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 9-14, 17-22, and 25-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2010-100038 A. Applicant’s provided machine translation was relied upon for analysis.
Regarding claim 9, JP ‘038 discloses a surface laminated film having a base material layer with an adhesive layer 22 provided in bands parallel to the longitudinal direction of the edges of the film, and a non-adhesive part 21. See FIG. 1 and Abstract and paragraph [0028].
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The base layer is a polymer material described at paragraph [0034] such as low-density polyethylene. The base substrate itself is also a non-adhesive layer, see paragraph [0024]. The base may include an additive such as an ultraviolet ray absorber, see paragraph [0036]. Thus, the base is made of a material that prevents intrusion of an ultraviolet ray as claimed.
The non-adhesive layer 21 is also formed of a resin, most preferably linear low density polyethylene (LLDPE), see paragraph [0034]. This polymer does not contain any of the functional groups (hydroxyl group, amino group, carboxyl group, carbonyl group, ester bond, urethane bond, urea bond, imide bond, imino group, aldehyde group, vinyl group, phenyl group, nitro group, or sulfonyl group) which are specified to be excluded from the non-adhesive layer.
The adhesive layer 22 is preferably an ethylene-alpha olefin copolymer, see paragraph [0038], and has a self-adhesive (pressure-sensitive adhesive property) which is capable of adhering to another polymer material.
Although JP ‘038 does not specify that the surfaces of the non-adhesive layer and adhesive layer are configured to contact a surface to be tested, the reference does teach that the adhesive sheets are configured to be a surface protection sheet for an object to be packaged such as a bumper, see paragraphs [0014] and [0021]. Such a surface is capable of being tested. Thus the adhesive meets this the functional limitation.
Accordingly, JP ‘038 anticipates the claimed invention.
Regarding claim 10, as shown in FIG. 1 above, the adhesive layer stripes 22 surround the non-adhesive layer 21 and thus surround the first region of the first surface as claimed.
Regarding clam 11, As shown in FIG. 3, a non-adhesive tab portion 211 may be provided at the edge of the tape structure as shown in the edge view. See description at paragraph [0022].
Alternately, when the tape is cut or torn into a strip or patch for wrapping and packaging a structure as described at paragraphs [0017] and [0021], the non-adhesive layer will have a coterminous edge with the base material.
Regarding claim 12, JP ‘038 teaches that the surface protecting laminating film has a uniform thickness, see paragraph [0023], and further specifies that layer 2 which includes both the adhesive portion 22 and non-adhesive portion 21 has a uniform thickness, see paragraph [0024]. Thus the difference in surface height of the layers is considered to be zero. Even accounting for surface roughness and minor irregularities, the difference in surface height of the adhesive layer and non-adhesive layer will be less than 1.2 mm as claimed because the total thickness of layer 2 is preferably only 10 to 20 microns, see paragraph [0024].
Regarding claims 13 and 14, As shown in FIG. 1, the edges of the film laminate have the adhesive portions 22 present. Thus, when the film laminate is cut into a desired length corresponding to the length of the packaged body to be surface-protected, only the cut portions of the base film will have a perimeter that is coterminal with the the non-adhesive portion 21. See description at paragrpah [0017]. The length “L” is determined as required and may be as long as 10,000 m, see id. In contast, the width “W” of the film is in the range of only 10 to 200 cm, see paragraph [0018]. Thus, the total length of the non-adhesive layer portions that are coterminous with a cut end of the film laminate is less than ½ of the peripheral length of the base material in plan view.
Regarding claim 17, JP ‘038 teaches adding a coloring agent to the adhesive portion 22 so that identification of this portion becomes easy, see paragraph [0028]. The base material layer may also be provided with desired properties such as color, see id. This reads on a mark disposed on the second surface of the base material as claimed.
Regarding claim 18, JP ‘038 discloses a surface laminated film having a base material layer with an adhesive layer 11 and 22 provided in bands parallel to the longitudinal direction of the edges of the film, and a non-adhesive part 21. See FIG. 3b and Abstract and paragraph [0028].
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The base layer is a polymer material described at paragraph [0034] such as low-density polyethylene. The base substrate itself is also a non-adhesive layer, see paragraph [0024]. The base may include an additive such as an ultraviolet ray absorber, see paragraph [0036]. Thus, the base is made of a material that prevents intrusion of an ultraviolet ray as claimed.
The non-adhesive layer 21 is also formed of a resin, most preferably linear low density polyethylene (LLDPE), see paragraph [0034]. This polymer does not contain any of the functional groups (hydroxyl group, amino group, carboxyl group, carbonyl group, ester bond, urethane bond, urea bond, imide bond, imino group, aldehyde group, vinyl group, phenyl group, nitro group, or sulfonyl group) which are specified to be excluded from the non-adhesive layer.
The adhesive layer 22 is preferably an ethylene-alpha olefin copolymer, see paragraph [0038], and has a self-adhesive (pressure-sensitive adhesive property) which is capable of adhering to another polymer material.
Although JP ‘038 does not specify that the surfaces of the non-adhesive layer and adhesive layer are configured to contact a surface to be tested, the reference does teach that the adhesive sheets are configured to be a surface protection sheet for an object to be packaged such as a bumper, see paragraphs [0014] and [0021]. When the sheet of FIG. 3b is used, the adhesive and non-adhesive portions are on opposite sides of the base material as claimed. Thus the adhesive meets this the functional limitation.
Regarding claim 19, as shown in FIG. 1 above, the adhesive layer stripes 22 surround the non-adhesive layer 21 and thus surround the first region of the first surface as claimed. An overhead plan view of FIG. 3b would look similar to that of FIG. 1.
Regarding clam 20, As shown in FIG. 3b, a non-adhesive portion may be provided at the edge of the tape structure. See description at paragraph [0042].
Regarding claim 21, JP ‘038 teaches that the surface protecting laminating film has a uniform thickness, see paragraph [0023], and further specifies that layer 2 which includes both the adhesive portion 22 and non-adhesive portion 21 has a uniform thickness, see paragraph [0024]. Thus the difference in surface height of the layers is considered to be zero. Even accounting for surface roughness and minor irregularities, the difference in surface height of the adhesive layer and non-adhesive layer will be less than 1.2 mm as claimed because the total thickness of layer 2 is preferably only 10 to 20 microns, see paragraph [0024].
Regarding claim 22, As shown in FIG. 1, the edges of the film laminate have the adhesive portions 22 present. Thus, when the film laminate is cut into a desired length corresponding to the length of the packaged body to be surface-protected, only the cut portions of the base film will have a perimeter that is coterminal with the the non-adhesive portion 21. See description at paragrpah [0017]. The length “L” is determined as required and may be as long as 10,000 m, see id. In contast, the width “W” of the film is in the range of only 10 to 200 cm, see paragraph [0018]. Thus, the total length of the non-adhesive layer portions that are coterminous with a cut end of the film laminate is less than ½ of the peripheral length of the base material in plan view.
Regarding claim 25, JP ‘038 teaches adding a coloring agent to the adhesive portion 22 so that identification of this portion becomes easy, see paragraph [0028]. The base material layer may also be provided with desired properties such as color, see id. This reads on a mark disposed on the second surface of the base material as claimed.
Regarding claim 26, as shown in FIG. 3a and 3b, the adhesive portion 22 and nonadhesive portoin 21 each contact the first surface of base material 1.
Regarding claim 27, as shown in FIG. 4, when the adheisve portions of the lamiante film are brought together to protect an article such as a vehicle bumper, the adhesion material is disposed bewteen the first surface of the base material and the non-adhesive material as claimed. See description at paragraphs [0026-0027].
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 of this title, 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 15, 16, 23, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2010-100038 A. Applicant’s provided machine translation was relied upon for analysis.
Regarding claims 15 and 23, JP ‘038 is relied upon as described above. JP ‘038 teaches at paragraph [0019] that the film lamiante has a width W2 of from 10-200 cm, and that the adhesvie portions have a width W22 of 0.1 to 20 cm, preferably 2 to 5 cm. Thus the non-adhesive portions have a width W21 of W2 – W22. Note that the non-adhesive portion may constitute from 10-98 area% of the surface area of the film lamiante, see paragraph [0020]. Thus the adhesive portion may be larger in width than the non-adhesive portion. This allows for non-adhesive porton widths to be within the claimed range. For example, for a narrow tape of 10 cm having adhesive portions of 8 cm total width, the non-adhesive portion will have a width of 2 cm. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Regarding claims 16 and 24, JP ‘038 does not specify the color lightness of the second surface of the base material. However, JP ‘038 does teach that a colorant may be included in the laminated film, see paragraphs [0028] and [0036]. It would have been obvious to have selected sufficient colorant to arrive at a material with a lightness value of 5 or more as claimed. In particular, as the film is used to protect an automobile bumper, see claim 12 and paragraph [0005], it would have been obvious to formulate the laminated film to have a color matching that of the bumper.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Wold (U.S. Pub. 2020/0130980) describes a drywall tape with a central non-adhesive portion.
Johnson (U.S. Pub. 2016/0215173) describes an adhesive tape with alternating sections of adhesive and non-adhesive portions with markings for the different sections.
Nash (U.S. Pub. 2018/0118407) describes a tape with a central pull tab for opening a container sealed by the tape.
Sugita (U.S. Pub. 2016/0194529) describes resins suitable for forming a non-adhesive layer.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759