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 08 April 2026. A preliminary amendment was filed on 17 May 2024 amending claims 1 and 3-7. Claims 1-7 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09 July 2024 and 28 October 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election with traverse of Group I, Claims 1-6 in the reply filed on 27 May 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.
Applicant further argues that the Examiner has not explained why each group lacks unity with each other group, specifically describing special technical features in each group as per MPEP § 1893,03(d). However, the Examiner has noted that inventions listed as Groups I-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 in pages 4-5 of the previous Office Action. The requirement is still deemed proper and is therefore made FINAL.
Claim 7 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 27 May 2026.
Drawings
The drawings received on 17 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being obvious over JP 2015-066697 A. A machine translation of JP ‘697 was relied upon.
Regarding claim 1, JP ‘697 describes a base material 10, protective layer 21, design layer 22, and hot melt adhesive layer 23 in this order as shown in FIG. 1 of the original document. See description at paragraph [0013] of the translation. The design layer may be a metal layer such as metal foil or metal vapor-deposited film, see paragraph [0027]. An easy-adhesion layer formed of polyester resin can be formed between the protective layer and the design layer, and/or between the design layer and the hot-melt adhesive layer, see paragraph [0026]. Suitable adhesive layers include those made of rubber, see paragraph [0034]. The adhesive is used by being pressed into an object as taught at paragraph [0041], reading on being pressure-sensitive adhesive. Thus the base layer, metallized design layer, easy-adhesion layer, and hot-melt pressure-sensitive adhesive layer are formed in the same order as the invention.
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.
Claims 1, 3, 4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (U.S. Pub. 2017/0283658).
Regarding claim 1, Tanaka discloses a pressure-sensitive adhesive sheet having the structure of C (release layer) – B1 (first pressure-sensitive adhesive layer) – A1 (first substrate) – B2 (second pressure-sensitive adhesive layer) – A2 (second substrate) in order, see FIG. 1 and abstract and description at p. 2, [0038]. The second substrate A2 is provided with a vapor-deposited aluminum layer on the side of the substrate facing the second pressure-sensitive adhesive layer, reading on the metalized layer, see p. 5, [0073].
Furthermore, the pressure-sensitive adhesive layers B1 and B2 are styrene rubber-based copolymers, see p. 5, [0077] and [0082] for layer B1 and p. 7, [0107] teaching using the same composition for layer B2. The adhesive is a hot-melt adhesive, see p. 5, [0075].
Additionally, the first substate A1 is surface-treated with a primer layer to improve the adhesiveness of layers B1 and B2, see p. 4, [0063]. Suitable primer layers include polyester resin or urethane resin, see p. 4, [0065]. A primer layer may also be provided for the second substrate A2, see p. 5, [0074].
Thus the structure includes B1 (styrene rubber hot melt adhesive layer) – primer layer – A1 (first substrate) – primer layer – B2 (styrene rubber hot melt adhesive layer) – aluminum layer – A2 (second substate). It is unclear from the reference if the primer layer formed on second substrate A2 is located directly on the substrate A2 or located adjacent to the adhesive layer B2, that is whether the structure is (B2 adhesive layer – primer layer – aluminum layer – A2 substate) or (B2 adhesive layer – aluminum layer – primer layer – A2 substrate). However, in either circumstance, the laminate includes these layers in order: (B1 styrene rubber hot melt adhesive layer) – primer layer formed on A1 substrate – aluminum layer – (A2 substrate). This read on the claimed structure.
It would have been obvious to have used a primer layer including a polyester-based resin as this is one of the disclosed suitable treating materials for the substrates as disclosed at p. 4, [0063].
Regarding claim 3, Tanaka teaches that the metal vapor-deposited layer is aluminum, see p. 5, [0073].
Regarding claim 4, the substrate materials of layers A1 and A2 may be polyester such as polyethylene terephthalate (PET), see p. 4, [0062] and [0067]. PET is used as the substrate materials in the examples, see p. 11, [0191] and [0197].
Regarding claim 6, Tanaka further teaches a release layer C formed on the adhesive layer B1, see p. 2, [0038[ and FIG. 1.
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (U.S. Pub. 2017/0283658) in view of Seth (U.S. Pub. 2020/0270485).
Regarding claims 2 and 5, Tanaka is relied upon as described above to teach a pressure-sensitive adhesive laminate meeting the limitations of claim 1 including the use of a polyester-based primer layer. However, Tanaka does not disclose further details of the primer layer composition or its properties.
Seth describes a primer used in a tape material. The tape includes a paper layer with a polymeric reinforcement film layer and a primer layer disposed on the polymeric reinforcement layer, see abstract and p. 3, [0033]. The polymeric reinforcement layer may be polyester such as polyethylene terephthalate, see p. 2, [0023]. Suitable adhesive layers include rubber hot melt adhesives, see p. 2, [0028].
The primer includes one or more of a polyester, polyurethane, chlorinated polyolefin, or other materials, see p. 3, [0036]. Specific commercial materials are disclosed at p. 3, [0038-0043]. Using a blend of polyester and one of either polyurethane or polyolefin meets the limitation of claim 2. The polymers of the primer coating have a glass transition temperature within the range of -30°C to +40°C, see p. 3, [0035]. This overlaps the limitation of claim 5. 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).
Tanaka and Seth are analogous because they are similar in structure and function, as each discloses adhesive sheets with a primer layer disposed between a polyethylene terephthalate layer and a rubber hot-melt adhesive layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to have used primer polymers having the composition and glass transition disclosed in Seth as the primer layer composition of Tanaka to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to do so because Seth discloses suitable commercial materials that are readily obtainable for use in the same service (as a primer layer to improve bonding between a rubber hot melt adhesive layer and a polyethylene terephthalate film layer). Thus there is also a reasonable expectation of success in the combination.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bieber (U.S. Pat. 10,106,708) describes a pressure-sensitive adhesive foam sheet having a backing layer of polyethylene terephthalate, an intermediate layer of polyurethane or polyolefin or a combination of these, and a rubber-based pressure-sensitive adhesive foam. However, Bieber does not teach using a polyester in the intermediate layer and also does not teach including a metallized layer as claimed.
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
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