RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claim 1, filed on 08 May 2026, have been entered in the above-identified application. Claims 2, 5, and 6 have been cancelled by applicant. Claims 1, 3, 4, 7, and 8 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 23 March 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
WITHDRAWN REJECTIONS
The 35 U.S.C. § 102 rejection of claims 1-3 and 6-8 over KR 2017-0028589 in the office action mailed 11 February 2026 has been withdrawn due to Applicant’s amendment in the response filed 08 May 2026. In particular, KR ‘589 teaches a substrate thickness of 0.07 mm (70 microns) which is outside of the presently claimed substrate thickness range of 105 to 300 microns.
The 35 U.S.C. § 103 rejection of claims 4-5 as over KR ‘589 in view of Bourget (U.S. Pub. 2002/0034366) in the office action mailed 11 February 2026 has been withdrawn due to Applicant’s amendment in the response filed 08 May 2026. Bourget does not remedy the above-described deficiency of KR ‘366.
NEW AND REPEATED REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1, 3, 4, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Honda (U.S. Pub. 2020/0299549) in view of Bourget (U.S. Pub. 2002/0034366) .
Regarding claims 1 and 4, Honda discloses an adhesive sheet with a polyvinyl chloride (PVC) substrate, see abstract and p. 2, [0015]. The substrate has a thickness of from 30 to 2000 microns, more preferably 200 to 500 microns, see p. 3, [0026]. An adhesive layer and primer layer are applied to the substrate, see p. 2, [0014]. The adhesive is a pressure-sensitive adhesive, see p. 3, [0027]. The adhesive sheet is used as a wire harness, see title and abstract and p. 1, [0010]. The substrate thickness overlaps the claimed range of 105 to 300 microns. 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).
The substrate includes a polyester-based plasticizer, see p. 2, [0017], present in the amount of 20-100 parts by mass based on 100 parts by mass of the PVC resin, see p. 2, [0020]. Example 1 uses 40 parts by mass of the plasticizer, see p. 5, [0050].
The substrate also may include an inorganic filler, see p. 2-3, [0022].
The substrate includes a reforming agent which may be a thermoplastic polyurethane or polyester-based thermoplastic elastomer, see p. 3, [0023]. The total amount of the inorganic filler, reforming agent, and other additives is from 0 to 50 parts by weight based on 100 parts by mass of the PVC resin, see p. 33, [0024].
A substrate that includes 100 parts by mass of PVC resin, 40 parts by mass of the polyester plasticizer as in Example 1, 12.5 parts by mass of inorganic filler, and 12.5 parts by mass of thermoplastic polyurethane or thermoplastic polyester elastomer reforming agent (taking the midpoint of the 0 to 50 parts by mass amount disclosed for these additives, and dividing evenly between filler and reforming agent) has a composition of 100/175 or about 57 wt. % of PVC, 40/175 or about 23 wt. % of the plasticizer, and 12.5/175 or about 7 wt. % each of filler and reforming agent. These amounts are each within the claimed ranges. The Examiner has used the actual amount of plasticizer disclosed in Example 1 and the midpoint of the disclosed amount for additional additives including the inorganic filler and reforming agent to arrive at this sample composition.
Honda does not specify the durometer hardness of the reforming agent based on JIS K7311.
Bourget describes an optical fiber cable bundle covered with a sheath, see p. 2, [0021-0024]. The sheath is made of polyvinyl chloride (PVC) or from a thermoplastic elastomer, see p. 2, [0035]. Suitable thermoplastic elastomers include thermoplastic polyurethanes, see p. 2, [0039-0041], and specific commercially available products include ELASTOLLAN 1185, ELASTOLLAN 1190, ELASTOLLAN C85, or ELASTOLLAN C90, see p. 2-3, [0046].
Applicant’s disclosure teaches that the ELASTOLLAN C-series thermoplastic polyurethanes are suitable for the invention, see p. 13, [0052] and Example 1 at p. 35, [0131] of the originally filed specification. ELASTOLLAN C90A10 is used in Example 1 and this has a durometer hardness of A90 and 16 mol% urethane bonds. This meets the limitations of claim 1 and 4.
Honda and Bourget are analogous because they each describe using thermoplastic polyurethanes to enclose elongated wires, and thus they are similar in structure and function. The tape of Honda and the sheath of Bourget both need to be sufficiently flexible yet also durable to protect the wiring enclosed within. It would have been obvious to one of ordinary skill in the art at the time of the invention to have used ELASTOLLAN C90 as disclosed in Bourget as the thermoplastic urethane of Honda to arrive at the claimed invention, as Bourget teaches that this commercial material has flexible segments, see p. 2, [0035-0036]. There is a reasonable expectation of success as Bourget uses the elastomer to sheath optical cables which are similar to a bundle of electrical wires.
Regarding claim 3, Honda teaches that thermoplastic polyurethane may be used as the reforming agent, see p. 2, [0023]. Bourget teaches suitable thermoplastic polyurethanes as described above.
Regarding claim 7, Honda discloses using from 0 to 50 parts by mass of the total of additives including the reforming agent and from 20-100 parts by mass of the plasticizer based on 100 parts by mass of the PVC, see above discussion in regards to claim 1. Example 1 at p. 5, [0050] uses 40 parts by mass of the plasticizer.
Using from 0 to 50 parts of reforming agent and 40 parts of plasticizer is a ratio of from 0:40 to 50:40, or from 0 to 1.25 on a weight basis which largely overlaps the claimed range of 0.1 to 1.5. Using, for example, 12.5 parts by weight of the thermoplastic polyurethane reforming agent and 40 parts by weight of the plasticizer is a ratio of 12.5:40 or about 0.31 which is within the claimed range.
Regarding claim 8, Honda teaches using the adhesive sheet to protect wire harnesses, see p. 1, [0010] and p. 5, [0048]. Bourget similarly describes an optical fiber cable bundle covered with a sheath, see p. 2, [0021-0024].
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 08 May 2026 regarding the 35 U.S.C. § 102(a)(1) rejection of claims 1-3 and 6-8 of record over KR 2017-0028589 A have been considered but are moot due to the new grounds of rejection.
Applicant’s arguments in the response filed 08 May 2026 regarding the 35 U.S.C. § 103 rejection of claims 4 and 5 of record over KR ‘589 in view of Bourget (U.S. Pub. 2002/0034366) have been considered but are moot due to the new grounds of rejection.
Conclusion
All claims are rejected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 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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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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