DETAILED ACTION
This is an Office action based on application number 18/768,517 filed 10 July 2024, which is a continuation of US Application No. 17/182,649 (now US Patent No. US 12,065,596 B2) filed 23 February 2021, which is a continuation of PCT/JP2019/032549 filed 21 August 2019, which claims priority to JP2018-166163 and JP2018-0166164 both filed 5 September 2018. Claims 1-7 are pending.
Amendments to the claims, filed 21 July 2026, have been entered into the above-identified application.
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 .
Withdrawn Rejections
The 35 U.S.C. §112(b) rejection made of record in the previous Office action is withdrawn due to Applicant’s amendments.
The 35 U.S.C. §112(d) rejection made of record in the previous Office action is withdrawn due to Applicant’s amendments.
The prior art rejections made of record in the previous Office action are withdrawn due to Applicant’s amendments.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (WIPO International Publication No. WO 2016/084947 A1 with citations taken from US Patent Application Publication No. US 2017/0260425 A1) (Yamamoto) in view of Toomi et al. (JP H10-095908A with citations taken from the provided machine translation) and Yamabayashi et al. (JP2017115149A with citations taken from the provided machine translation).
Regarding instant claims 1 and 4-6:
Yamamoto discloses a pressure-sensitive adhesive sheet comprising a substrate film and a pressure-sensitive adhesive layer provided to at least one face of the substrate film (Claim 1).
Yamamoto further discloses that the substrate film is a substrate comprising a foam film (paragraph [0063]).
Yamamoto further discloses specific examples of the foam inclusive of acrylic resin foam and polyurethane resin foam (paragraph [0072]).
Yamamoto further discloses that the adhesive layer comprises, as its base polymer, polyester-based polymers (paragraph [0100]).
Yamamoto does not explicitly disclose the specific polyester adhesive agent of the claim.
However, Toomi discloses a polyester-based resin composition having excellent adhesiveness to polyolefins, wherein said polyester-based resin is an adhesive composition (paragraphs [0001; 0027]).
Toomi further discloses exemplary polyester-based resins having a molecular weight of 5000 (paragraph [0029], 5600 (paragraph [0032]), 5800 (paragraph [0034]).
Toomi further discloses that the polyester-based resin comprises a glycol component containing a branched diol and a hydrogenated polybutadiene polyol (paragraph [0007]) (i.e., structural components derived from a polyol).
Toomi further discloses that the amount of hydrogenated polybutadiene is 10 to 90% by weight (paragraph [0016]), which is construed to include or overlap the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Toomi further discloses that the polyester-based resin comprises a polyvalent carboxylic acid (paragraph [0007]), wherein the amount of a polyvalent carboxylic acid inclusive of an aromatic dicarboxylic acid is 0 to 90% by weight (paragraph [0010]), which is construed to include or overlap the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Toomi further teaches that it is readily known in the prior art to form pressure-sensitive adhesives from those polyester-based resins (paragraph [0002]).
Toomi further discloses that any type of catalyst, stabilizer, modifier, additive, or the like may be added to the polyester-based resin (paragraph [0018]).
Further, Yamabayashi discloses a polyester adhesive composition containing a hydrolysis inhibitor to prevent a reduction in cohesive and adhesive strength when the adhesive is exposed to high temperatures and high humidity (paragraphs [0001-0003].
Yamabayashi further discloses that the hydrolysis inhibitor is inclusive of carbodiimide group-containing compounds because they are highly effective in eliminating the catalytic activity of protons derived from carboxyl group-terminants (paragraph [0039]).
Yamabayashi further discloses that a compound containing two or more carbodiimide groups improves durability under high temperature and high humidity conditions (paragraph [0040]).
Before the effective filing date, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use a pressure-sensitive adhesive based on a polyester-based resin of Toomi as the polyester-based pressure-sensitive adhesive desired in the adhesive sheet of Yamamoto. The motivation for doing so would have been that the polyester-based resin of Toomi exhibits excellent adhesiveness to polyolefins. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B). In the instant case, there is a reasonable expectation of success for the substitution as Yamamoto desires a polyester-based adhesive.
Further, it would have been obvious to include the carbodiimide-containing hydrolysis inhibitors of Yamabayashi into the polyester-based adhesive. The motivation for doing so would have been to prevent a reduction in cohesive and adhesive strength when the adhesive is exposed to high temperatures and high humidity using a carbodiimide-based hydrolysis inhibitor that is particularly effective in eliminating the catalytic activity of protons derived from carboxyl group-terminants.
Therefore, it would have been obvious to combine Toomi and Yamabayashi with Yamamoto to obtain the invention as specified by the instant claims.
Regarding instant claim 2:
The polyolefin resin foam substrate recited by the claim is optional as set forth by parent claim 1. Therefore, since the prior art combination meets at least the urethane resin foam and the acrylic resin foam substrate of parent claim 1, the prior art combination meets the optional limitations of the instant claim.
Regarding instant claim 3:
Yamamoto further disclose that the foam film has an apparent density of 0.01 g/cm3 to 0.7 g/cm3 (paragraph [0066]) (10 kg/m3 to 700 kg/m3). It is noted that the range recited by the claim overlaps the range of the prior art; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 7:
Yamamoto further discloses that the thickness of the substrate film is 1 μm or larger (paragraph [0097]), which includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (US Patent Application Publication No. US 2013/0244013 A1) in view of Toomi and Yamabayashi.
Regarding instant claims 1 and 4-6:
Nakayama discloses a PSA sheet comprising a foam substrate and a polyester-based adhesive (paragraph [0111]).
Nakayama further discloses that specific examples of the foam are inclusive of polyolefin-based resin foams and polyurethane resin foams (paragraph [0092]).
Nakayama further discloses that the foam substrate has a tensile strength in the MD of 0.5 MPa to 20 MPa, and a tensile strength in the TD of 0.2 MPa to 20 MPa (paragraph [0099]). It is noted that the range recited by the claims overlaps the ranges of Nakayama; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Nakayama does not explicitly disclose the specific polyester adhesive agent of the claim.
However, Toomi discloses a polyester-based resin composition having excellent adhesiveness to polyolefins, wherein said polyester-based resin is an adhesive composition (paragraphs [0001; 0027]).
Toomi further discloses exemplary polyester-based resins having a molecular weight of 5000 (paragraph [0029], 5600 (paragraph [0032]), 5800 (paragraph [0034]).
Toomi further discloses that the polyester-based resin comprises a glycol component containing a branched diol and a hydrogenated polybutadiene polyol (paragraph [0007]) (i.e., structural components derived from a polyol).
Toomi further discloses that the amount of hydrogenated polybutadiene is 10 to 90% by weight (paragraph [0016]), which is construed to include or overlap the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Toomi further discloses that the polyester-based resin comprises a polyvalent carboxylic acid (paragraph [0007]), wherein the amount of a polyvalent carboxylic acid inclusive of an aromatic dicarboxylic acid is 0 to 90% by weight (paragraph [0010]), which is construed to include or overlap the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Toomi further teaches that it is readily known in the prior art to form pressure-sensitive adhesives from those polyester-based resins (paragraph [0002]).
Toomi further discloses that any type of catalyst, stabilizer, modifier, additive, or the like may be added to the polyester-based resin (paragraph [0018]).
Further, Yamabayashi discloses a polyester adhesive composition containing a hydrolysis inhibitor to prevent a reduction in cohesive and adhesive strength when the adhesive is exposed to high temperatures and high humidity (paragraphs [0001-0003].
Yamabayashi further discloses that the hydrolysis inhibitor is inclusive of carbodiimide group-containing compounds because they are highly effective in eliminating the catalytic activity of protons derived from carboxyl group-terminants (paragraph [0039]).
Yamabayashi further discloses that a compound containing two or more carbodiimide groups improves durability under high temperature and high humidity conditions (paragraph [0040]).
Before the effective filing date, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use a pressure-sensitive adhesive based on a polyester-based resin of Toomi as the polyester-based pressure-sensitive adhesive desired in the adhesive sheet of Nakayama. The motivation for doing so would have been that the polyester-based resin of Toomi exhibits excellent adhesiveness to polyolefins. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B). In the instant case, there is a reasonable expectation of success for the substitution as Nakayama desires a polyester-based adhesive.
Further, it would have been obvious to include the carbodiimide-containing hydrolysis inhibitors of Yamabayashi into the polyester-based adhesive. The motivation for doing so would have been to prevent a reduction in cohesive and adhesive strength when the adhesive is exposed to high temperatures and high humidity using a carbodiimide-based hydrolysis inhibitor that is particularly effective in eliminating the catalytic activity of protons derived from carboxyl group-terminants.
Therefore, it would have been obvious to combine Toomi and Yamabayashi with Nakayama to obtain the invention as specified by the instant claims.
Regarding instant claims 2-3:
Nakayama further discloses that the foam substrate has an apparent density of 0.1 g/cm3 to 0.5 g/cm3 (paragraph [0096]) (100 to 500 kg/m3). Said apparent density values apply to both the polyolefin-based resin foam and the polyurethane resin foam. It is noted that the range disclosed by Nakayama overlaps or includes the ranges recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 7:
Nakayama further discloses that the thickness of the foam substrate is 350 μm or smaller (paragraph [0090]). It is noted that the thickness range disclosed by Nakayama overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 3-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. US 12,065,596 B2 (US596) in view of Yamabayashi.
Regarding instant claims 1 and 6:
Claim 1 of US596 recites an adhesive tape comprising a substrate [I] and an adhesive layer of a polyester adhesive agent provided on at least one opposite surfaces of the substrate [I]; wherein the substrate is one selected from the group inclusive of a urethane foam resin and an acrylic foam resin; wherein the polyester adhesive agent is made from a polyester adhesive agent composition [II] which comprises a polyester resin (A) having a weight average molecular weight of 20,000 to 300,000 and having a structural unit derived from a polyol and a structural unit derived from a polyvalent carboxylic acid compound containing an aromatic structure-containing compound in a proportion of not greater than 40 mol% of the polyvalent carboxylic acid component.
Claim 4 of US596 further recites that the polyester adhesive agent comprises a hydrolysis inhibitor.
US596 does not claim a carbodiimide-containing hydrolysis inhibitor compound.
However, Yamabayashi discloses a polyester adhesive composition containing a hydrolysis inhibitor to prevent a reduction in cohesive and adhesive strength when the adhesive is exposed to high temperatures and high humidity (paragraphs [0001-0003].
Yamabayashi further discloses that the hydrolysis inhibitor is inclusive of carbodiimide group-containing compounds because they are highly effective in eliminating the catalytic activity of protons derived from carboxyl group-terminants (paragraph [0039]).
Yamabayashi further discloses that a compound containing two or more carbodiimide groups improves durability under high temperature and high humidity conditions (paragraph [0040]).
It would have been obvious to one of ordinary skill in the art to use the carbodiimide group-containing hydrolysis inhibitor compound of Yamabayashi in the adhesive of US596 to arrive at the instant claimed invention. The motivation for doing so would have been that said compounds are highly effective in eliminating the catalytic activity of protons derived from carboxyl group-terminants.
Regarding instant claim 3:
Claim 1 of US596 recites that the urethane resin foam and the acrylic resin foam each has an apparent density of 200 to 1000 kg/m3.
Regarding instant claim 4:
Claim 1 of US596 recites that the polyester resin (A) has a structural unit derived from a hydrogenated polybutadiene structure-containing compound (a3).
Regarding instant claim 5:
Claim 1 of US596 recites that the compound (a3) is present in a proportion of less than 10 wt. % with respect to 100 wt. % of the polyester resin (A).
Regarding instant claim 7:
Claim 7 of US596 recites that the substrate [I] has a thickness of 0.1 to 2 mm.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. US 12,065,596 B2 (US596) in view of Nakayama and Yamabayashi.
Regarding instant claims 1 and 6:
Claim 1 of US596 recites an adhesive tape comprising a substrate [I] and an adhesive layer of a polyester adhesive agent provided on at least one opposite surfaces of the substrate [I]; wherein the substrate is one selected from the group consisting of a polyolefin foam resin, a urethane foam resin, and an acrylic foam resin; wherein the polyester adhesive agent is made from a polyester adhesive agent composition [II] which comprises a polyester resin (A) having a weight average molecular weight of 20,000 to 300,000 and having a structural unit derived from a polyol and a structural unit derived from a polyvalent carboxylic acid compound containing an aromatic structure-containing compound in a proportion of not greater than 40 mol% of the polyvalent carboxylic acid component.
Claim 4 of US596 further recites that the polyester adhesive agent comprises a hydrolysis inhibitor.
US596 does not claim the tensile strength of the polyolefin foam resin. US596 does not claim the carbodiimide-containing hydrolysis inhibitor compound.
However, Nakayama discloses an adhesive sheet comprising a foam substrate (paragraph [0002]).
Nakayama further discloses that examples of the foam include polyolefin-based resin foams (paragraph [0092]).
Nakayama further discloses that the foam substrate has a tensile strength in the MD of 0.5 MPa to 20 MPa and a tensile strength in the TD of 0.2 MPa to 20 MPa to balance handling properties, impact resistance, and conformability (paragraph [0099]). It is noted that the tensile strength ranges of Nakayama overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
It would have been obvious to one of ordinary skill in the art to ensure that the polyolefin foam substrate of US596 has the tensile strength of Nakayama. The motivation for doing so would have been to balance handling properties, impact resistance, and conformability.
Further, Yamabayashi discloses a polyester adhesive composition containing a hydrolysis inhibitor to prevent a reduction in cohesive and adhesive strength when the adhesive is exposed to high temperatures and high humidity (paragraphs [0001-0003].
Yamabayashi further discloses that the hydrolysis inhibitor is inclusive of carbodiimide group-containing compounds because they are highly effective in eliminating the catalytic activity of protons derived from carboxyl group-terminants (paragraph [0039]).
Yamabayashi further discloses that a compound containing two or more carbodiimide groups improves durability under high temperature and high humidity conditions (paragraph [0040]).
It would have been obvious to one of ordinary skill in the art to use the carbodiimide group-containing hydrolysis inhibitor compound of Yamabayashi in the adhesive of US596 to arrive at the instant claimed invention. The motivation for doing so would have been that said compounds are highly effective in eliminating the catalytic activity of protons derived from carboxyl group-terminants.
Regarding instant claim 2:
Claim 1 of US596 recites that the polyolefin resin foam has an apparent density of 10 to 200 kg/m3.
Regarding instant claim 3:
Claim 1 of US596 recites that the urethane resin foam and the acrylic resin foam each has an apparent density of 200 to 1000 kg/m3.
Regarding instant claim 4:
Claim 1 of US596 recites that the polyester resin (A) has a structural unit derived from a hydrogenated polybutadiene structure-containing compound (a3).
Regarding instant claim 5:
Claim 1 of US596 recites that the compound (a3) is present in a proportion of less than 10 wt. % with respect to 100 wt. % of the polyester resin (A).
Regarding instant claim 7:
Claim 7 of US596 recites that the substrate [I] has a thickness of 0.1 to 2 mm.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the previous prior art rejections are fully considered, but are moot due to the new grounds of rejection necessitated by Amendment.
Applicant’s arguments regarding the double patenting rejection of record are considered, but are unpersuasive.
Applicant contends that the Reference Patent (US 12,065,596) in view of Yamabayashi does not disclose or suggest the tensile strength of a foamed polyolefin substrate.
Applicant’s argument is unpersuasive. While the Reference Patent in view of Yamabayashi does not disclose the tensile strength of the foamed polyolefin substrate, the polyolefin substrate having the claimed tensile strength is an optional limitation of the claims. As the Reference Patent in view of Yamabayashi meet the claimed urethane foam resin and acrylic foam resin, the double patenting rejection is proper.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 09/16/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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