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 following applicant’s response to a restriction/election requirement mailed on 17 March 2026. Claims 1-16 and 18-19 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10 May 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election with traverse of Group I, Claims 1-16 in the reply filed on 24 March 2026 is acknowledged. The traversal is on the ground(s) that the previous Office Action did not establish an undue search burden of the claims as specified by MPEP 803. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I and II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth on p. 4 of the previous Office Action.
Claims 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 requirement in the reply filed on 24 March 2026.
Specification
The abstract of the disclosure is objected to because it includes the implied phrase “The present invention relates to…”. Correction is recommended. See MPEP § 608.01(b), guideline (C).
The disclosure does not include the recommended section headings as described in 37 C.F.R. § 1.77(b). See also MPEP § 608.01(a). The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
TITLE OF THE INVENTION.
CROSS-REFERENCE TO RELATED APPLICATIONS.
STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A COMPACT DISC.
BACKGROUND OF THE INVENTION.
Field of the Invention.
Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
BRIEF SUMMARY OF THE INVENTION.
BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
DETAILED DESCRIPTION OF THE INVENTION.
CLAIM OR CLAIMS (commencing on a separate sheet).
ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
Drawings
The drawings received on 10 Mary 2024 are acceptable.
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 1-3 and 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2,404,972 A2.
Regarding claim 1, EP ‘972 discloses a double coated pressure-sensitive adhesive tape which comprises a foam carrier layer and excels in removability without leaving residue transfer of adhesive on to the adherend or fracture of the adhesive tape, see abstract and paragraph [0017]. The tape includes the foam carrier and two surface pressure-sensitive adhesive layers reading on the claimed first and second adhesives. See paragraph [0011].
EP ‘972 further teaches that the adhesive layer compositions may include a colorant, see paragraph [0094]. The reference teaches suitable colorants for the foam layer include polymer particles such as acrylic resin, styrenic resin, urethane resin, amide resin, carbonate resin, silicone resin, urea-formaldehyde resin, and melamine resin particles, see paragraph [0048]. One having ordinary skill in the art would expect such disclosed colorants for the foam layer to also be suitable colorants for the adhesive layers. These read on the claimed bead polymers. It would have been obvious to have included such polymeric particles in the adhesive layers to achieve a desired color such as white.
Regarding claims 2 and 3, EP ‘972 describes that the foam carrier has a thickness so that the overall adhesive tape has a thickness of less than 500 microns, see paragraph [0054]. Typically this is a carrier thickness of from 50 to 480 microns, more preferably 100 to 200 microns. See id. This is within the claimed range of 175 microns to 10 mm (10,000 microns) as in claim 2 and less than 10 mm (10,000 microns) as in claim 3.
Regarding claim 10, EP ‘972 teaches that the foam layer of the adhesive may be treated with a primer, reading on having a primer, or with corona discharge or plasma treatment, which are functionalization techniques. See paragraph [0036].
Regarding claim 11, EP ‘972 discloses a reinforcing layer between the foam carrier layer and one of the adhesive layers, see FIG. 1 reproduced below and description at paragraph [0026]. In the Figure, layer 14 represents the reinforcing layer on foam layer 13 which is adhered by adhesive layer 12. Layers 11a and 11b are the outermost pressure-sensitive adhesive layers.
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Regarding claim 12, EP ‘972 further describes the reinforcing layer beginning at paragraph [0055]. The reinforcing layer may be subjected to surface treatment including oxidation treatments, chromate treatment, exposure to flame, high-voltage electric shock, or ionizing radiation. See paragraph [0058]. These read on functionalization treatments to the reinforcing layer.
Regarding claim 13, the reinforcing layer may be a cloth, nonwoven fabric, paper sheet, metallic sheet, plastic sheet such as a film, or others. See paragraph [0056].
Regarding claims 14, 15, and 16, EP ‘972 describes that release liners may be attached to each of the outermost adhesive layers, see paragraph [0106]. The release liners may be a common release paper with a release agent, see paragraph [0107]. The Examiner has interpreted the description of a base layer treated with a release agent as described in EP ‘972 to read on a covering layer having no functionalization as recited in claim 15. Claim 16 notes that the first covering layer is optionally functionalized, and thus such functionalization is not required by the claim.
Claims 4, 5, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2,404,972 A2 in view of Fujita (U.S. Pub. 2021/0032503).
Regarding claim 4, EP ‘972 discloses a double coated pressure-sensitive adhesive tape which comprises a foam carrier layer and excels in removability without leaving residue transfer of adhesive on to the adherend or fracture of the adhesive tape, see abstract and paragraph [0017]. The tape includes the foam carrier and two surface pressure-sensitive adhesive layers reading on the claimed first and second adhesives. See paragraph [0011].
While EP ‘972 teaches that polymeric particle colorants may be included in the adhesive layers, EP “972 does not describe a combination of bead polymers and binders in which the weight fraction of bead polymers is 25 wt. % or more as claimed.
Fujita describes a double-sided pressure-sensitive adhesive tape used for fixing a member in a mobile device. See abstract. The adhesive layers include a hollow organic filler, see abstract and p. 3, [0044]. The organic filler is a hollow polymeric filler, preferably using an acrylic or acrylonitrile-based polymer. See p. 4, [0060-0061]. The adhesive also includes a monomer component (m) and polymer component (P) (matrix polymer or binder polymer), see p. 5, [0070-0071] and p. 6, [0092]. Note that polymer (P) is formed by polymerization of monomer (m), see p. 6, [0092]. The total amount of organic filler in the adhesive polymer is from 0.05 to 50 wt. % based on 100 parts by weight of the components (m) and (P), see p. 5, [0066-0068]. This reads on a bead polymer and binder in which the bead polymer is 25 wt. % or more. 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).
EP ‘972 and Fujita are analogous because they each disclose double sided adhesive sheets, thus they are similar in structure and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include the polymeric particles of Fujita in the adhesive composition of EP ‘972 in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include the hollow organic particles of Fujita to provide impact resistance to the adhesive sheet, see Fujita at p. 1, [0005].
Regarding claim 5, Fujita discloses that a suitable adhesive polymer (P) is an acrylic polymer, see p. 6, [0092]. Other suitable polymers include urethane-based polymers, polyester-based polymers, rubber-based polymers, silicone-based polymers, or others, see p. 2, [0036].
Regarding claims 7-9, Fujita discloses that the average particle diameters of the organic hollow filler are from 5 to 70 microns, preferably from 15 to 35 microns, see p. 6, [0064]. The Examiner has considered the average particle diameter to be the D50 particle diameter of the particles. This is within the range recited in claim 7. As for the D10 and D90 particle diameters recited in claims 8 and 9, the Examiner has considered the low and high ends of the disclosed average particle diameters of Fujita to be within the claimed ranges of D10 and D90. It thus would have been obvious to have used particle diameters within the claimed dimensions such that the D10, D50, and D90 particle diameters are within the claimed ranges.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over EP 2,404,972 A2 as applied above, and further in view of Mallya (U.S. Pat. 5,656,705).
Regarding claim 6, EP ‘972 discloses a double coated pressure-sensitive adhesive tape which comprises a foam carrier layer and excels in removability without leaving residue transfer of adhesive on to the adherend or fracture of the adhesive tape, see abstract and paragraph [0017]. The tape includes the foam carrier and two surface pressure-sensitive adhesive layers reading on the claimed first and second adhesives. See paragraph [0011].
Although EP ‘972 teaches that polymer pigment particles may be included in the adhesive layers, the reference does not teach using inherently tacky elastic spherical polymer particles in the adhesive layers.
Mallya describes inherently tacky elastomeric pressure-sensitive adhesive microspheres which may be applied directly to a backing to form a removable adhesive sheet. See col. 1, lines 4-8 and col. 3, lines 1-7 and col. 5, lines 19-28. The adhesive microspheres are formed primarily from acrylic monomers, see col. 3, lines 43-67. Styrene, vinyl acetate, vinyl pyrrolidone, and other monomers may be included in the polymer, see id. The polymers provide an adhesive which is also removable and repositionable, see col. 3, lines 1-7.
EP ‘972 and Mallya are analogous because they each disclose coated adhesive sheet products which are easily removable from an adherend. Thus they are similar in structure and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to include the inherently tacky polymer particles of Mallya in the adhesive composition of EP ‘972 in order to arrive at the claimed invention as the adhesive polymer particles of Mallya provide for easily removable and repositionable adhesive products. EP ‘972 also provides for easily removable adhesive sheet products (see paragraph [0017].
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Guo (U.S. Pat. 6,864,335) describes a process of providing solid acrylate polymer microspheres.
Han (U.S. Pat. 11,194,426 and U.S. Pub. 2019/0255805) describes a polymer form adhesive tape having a substrate film, a polymer foam layer provided on the substrate film, a first adhesive layer provided on the polymer foam layer, and a second adhesive layer provided on the other surface of the substrate film.
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
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