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 16 May 2024 amending claims 3 and 5-8. Claims 1-8 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 16 May 2024 and 18 December 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings received on 16 May 2024 are acceptable.
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 1-3 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 2017-0028589 A. Applicant’s provided translation was relied upon for analysis.
Regarding claims 1 and 3, KR ‘589 discloses a polyvinyl chloride (PVC) tape comprising a sheet formed of 100 weight parts of PVC, 30-70 weight parts of plasticizer, and 10-20 parts of thermoplastic elastomer polyurethane along with additional components including flame retardant and pigment. See p. 3, [0018] and p. 4, [0024] and p. 5, [0025]. An adhesive is applied to the sheet, see claim 7 on p. 2 and p. 1, [0003] of the translation. The adhesive is a pressure-sensitive adhesive as it can be used for surface protection, marking sheets, or paint masking as well as for wiring, see p. 1, [0003] and p. 14, [0081].
Regarding claim 2, the amount of thermoplastic polyurethane is from 10 to 20 parts by weight based on 100 parts of the PVC, see p. 5, [0025]. The other components are 30-70 parts of plasticizer, 5-50 parts of carbon, 0.5 to 5 parts of stabilizer, 2-10 parts of flame retardant, and 2-10 parts of pigment, see p. 4, [0024]. Thus the amount of elastomer is from 10-20 parts out of a total of 149.5 to 265 parts by weight of overall adhesive composition, or from 3.8 wt. % to 13.3 wt. %, which is fully within the claimed range.
Regarding claim 6, The amount of plasticizer is from 30-70 parts by weight based on 100 parts by weight of PVC, see p. 4, [0024]. The other components in the composition are as specified at p. 4, [0024] and p. 5, [0025] and sum to 149.5 to 265 parts by weight in total. Thus the amount of plasticizer is from 11.3 to 46.8 wt. % which overlaps the claimed range.
In Example 5, 60 parts of plasticizer are used as part of a composition having 223.5 weight parts of all components, which is 26.8 wt. % and is within the claimed range. See p. 8-9, [0050].
Regarding claim 7, the amount of elastomer is from 10-20 parts by weight in the substrate sheet, and the amount of plasticizer is from 30-70 parts by weight, see p. 4, [0024] and p. 5, [0025]. Thus the weight ratio of elastomer to plasticizer is in the range of 10:70 to 20:30, or 0.14 to 0.67, which is within the claimed range of 0.1 to 1.5.
Regarding claim 8, KR ‘589 teaches that the tape is used to wrap around wires devices used for electrical wires in automobiles or in home appliances, see p. 2, [0005]. See also p. 14, [0081].
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 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over KR 2017-0028589 A in view of Bourget (U.S. Pub. 2002/0034366). Applicant’s provided translation of KR ‘589 was considered for analysis.
Regarding claims 4 and 5, KR ‘589 discloses a polyvinyl chloride (PVC) tape comprising a sheet formed of 100 weight parts of PVC, 30-70 weight parts of plasticizer, and 10-20 parts of thermoplastic elastomer polyurethane along with additional components including flame retardant and pigment. See p. 3, [0018] and p. 4, [0024] and p. 5, [0025]. An adhesive is applied to the sheet, see claim 7 on p. 2 and p. 1, [0003] of the translation. The adhesive is a pressure-sensitive adhesive as it can be used for surface protection, marking sheets, or paint masking as well as for wiring, see p. 1, [0003] and p. 14, [0081]. KR ‘589 teaches that the tape is used to wrap around wires devices used for electrical wires in automobiles or in home appliances, see p. 2, [0005]. See also p. 14, [0081].
KR ‘589 does not specify the particular properties of the thermoplastic polyurethane as claimed.
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 claims 4 and 5.
KR ‘589 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 KR ‘589 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 KR ‘589 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.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Harada (U.S. Pub. 2016/0289505) similarly teaches a pressure-sensitive adhesive tape with a PVC substrate film that includes a plasticizer component and also includes an elastomer component. Suitable elastomers include thermoplastic polyurethane or polyester-based thermoplastic elastomer. The reference is cumulative.
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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/Scott R. Walshon/ Primary Examiner, Art Unit 1759