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 .
Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated February 27, 2026. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8 – 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a multilayer tape having a damping layer and a bonding layer with thicknesses, does not reasonably provide enablement for the materials which meet the claimed properties. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claims 8 - 17 encompasses a system comprising a multilayer tape. The specification discloses sufficient information for one of ordinary skill in the art to a multilayer tape having a damping layer and a bonding layer with thicknesses. However, the specification does not provide direction on how to form a tape from the disclosed materials which meet the claimed properties. At the time of filing, the state of the art was such that one of ordinary skill in the art would not be able to determine what materials listed in the specification would meet the properties being claimed. Thus, the disclosed examples and embodiments does not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 8 – 17.
The breadth of the claims:
The claims encompass all the multilayer tape constructions that have a damping layer and a bonding layer, wherein each layer has a glass transition temperature, a thickness, and viscoelastic loss factor.
The nature of the invention:
The invention relates to a tape exhibiting one layer having a glass transition temperature greater or equal a second layer.
The state of the prior art:
While knowledge of multilayer tapes is extensive, there is little to no precedent for determining the materials forming the multilayer tape having a glass transition temperature greater or equal a second layer.
The level of ordinary skill:
The level of ordinary skill in the art is high.
The level of predictability in the art:
The properties of a specific material in many cases can predicted. However, selecting two materials with a specific relation to each is not considered to be predictable.
The amount of direction provided by the inventor:
The inventor discloses materials that may be used to form the damping and bonding layers (see, Page 15, Paragraph 0062 – Page 21, Paragraph 0084). Examples of the materials of the multilayer tape are disclosed. All of the examples provide materials that fall within, or very close to, the disclosed properties. No guidance is provided for selecting the materials exhibiting the required properties.
The existence of working examples:
There are many materials within or similar that exhibit the required properties provided in the instant application. No examples are provided of materials having the required properties that are dissimilar to the preferred materials.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure:
The materials described in the disclosure would allow the production of a multilayer tape exhibiting the required properties selected from within its bounds; however, blind experimentation would have to be employed by one of ordinary skill in the art to produce a multilayer tape exhibiting the required.
No guidance is provided in the instant specification that would allow one of ordinary skill in the art to produce a multilayer tape having the required properties outside of the compositions indicated as being enabled.
The exemplary embodiments disclosed in the instant specification cover only a narrow fraction of the broad protection sought in the instant claims. In combination with the established unpredictability of the art, the lack of guidance would require one of ordinary skill in the art to conduct excessive blind experimentation to determine which materials for the damping layer and bonding layer exhibit the required properties. The teaching set forth in the specification provides no more than an invitation for those of skill in the art to experiment searching for the required properties in compositions outside the range indicated as enabled. See, Enzo Biochem, Inc. v. Calgene, Inc., 52 USPQ2d 1129.
The scope of enablement provided to one of ordinary skill in the art by the disclosure must be commensurate in scope with the protection sought by the claims. See, AK Steel Corp. v. Solla, 68 USPQ2d 1280. The instant claims attempt to cover all multilayer tapes that exhibit a set of desired properties rather than the means by which those properties may be obtained, which constitutes the subject matter discovered by applicant. The subject matter identified as enabled by the examiner includes the entire scope of the subject matter taught by applicant as sufficient to obtain the critical properties of his invention.
Claims 9 – 17 are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, due to their dependency on the above rejected claim.
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, 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.
Claims 1 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over Meckler et al. (WO 2018/057570 A1).
Meckler et al. discloses a base substrate having a substrate extensional stiffness (KS) (Figure 1, #40) multilayer tape construction comprising: a damping layer having a damping layer glass transition temperature (Tg,d), a damping layer thickness (Hd), and a damping layer viscoelastic loss factor (tan(ƃ)d and a bonding layer having a bonding layer glass transition temperature (Tg,b), a bonding layer thickness (Hb), and a bonding layer viscoelastic loss factor (tan(ƃ)b wherein Tg,b is greater than or equal to Tg,d, wherein each of the damping layer and the bonding layer comprises at least one pressure sensitive adhesive selected from the group consisting of silicon adhesives, (meth)acrylic adhesives, rubber adhesives, polyisobutyl/butyl polymers, and hybrid adhesives (Abstract; Claims 1, 9, 11, 13; Paragraphs 0023, 0026, and 0030). However, Meckler et al. fail to disclose (Tg,b-Tg,d)is less than (80± 40)( Hd / Hb )(0.3±0.2)°C, a 200-Hz composite loss factor peak at a temperature less than 0°C, a peel adhesion greater than 10 N/25 mm, shear adhesion fail temperature greater than 115 °C, a shear adhesion fail temperature greater than 100 °C, a 200-Hz composite loss factor width greater than 40 °C, and a 200-Hz composite loss factor peak at a temperature less than -5 °C, a peel adhesion greater than 10 N/25 mm, a dynamic shear greater than 375 N/625 mm2, and a 200-Hz composite loss factor peak at a temperature less than -5 °C, a peel adhesion greater than 10 N/25 mm, a dynamic shear greater than 75 N/625 mm2, and a 200-Hz composite loss factor peak at a temperature less than -15 °C, (Tg,b-Tg,d)is less than (80± 40)( Hd / Hb )(0.3±0.2)°C, (Tg,b-Tg,a)is less than (60 ± 40)(Hd/Hb)(0.3±0.2)°C, Tg,b ranges from -35 °C to 100 °C, Tg,a ranges from -80°C to 0°C, Hd ranges from 0.1 mil to 200 mil, Hb ranges from 0.1 mil to 200 mil, (tan(ƃ)d is equal to or greater than (10-10 Hd-2.5 +0.25) as measured over a target operating temperature range or over a target operating frequency range, the target operating temperature range is greater than 30 °C, the target operating temperature range includes temperatures between -40 °C and 0 °C, the target operating frequency range is greater than 240 Hz, the target operating frequency range includes frequencies between 100 Hz and 2000 Hz, (tan(ƃ)d ranges from 1 to 4, Tg,b is at least 25 °C greater than Tg,d, and wherein tan is at least 2 greater than (tan(ƃ)b, Tg,b is less than 25 °C greater than Tg,d , wherein Hd is greater than or equal to Hb, and wherein (tan(ƃ)d is at least 1.5 greater than (tan(ƃ)b, Tg,b is less than 25 °C greater than Tg,d , wherein Hd is less than Hb, and wherein (tan(ƃ)d is at least 2 greater than (tan(ƃ)b, and (tan(ƃ)b ranges from 0.5 to 2.5.
With regard to the limitations of “(Tg,b-Tg,d)is less than (80± 40)( Hd / Hb )(0.3±0.2)°C, a 200-Hz composite loss factor peak at a temperature less than 0°C, a peel adhesion greater than 10 N/25 mm, shear adhesion fail temperature greater than 115 °C, a shear adhesion fail temperature greater than 100 °C, a 200-Hz composite loss factor width greater than 40 °C, and a 200-Hz composite loss factor peak at a temperature less than -5 °C, a peel adhesion greater than 10 N/25 mm, a dynamic shear greater than 375 N/625 mm2, and a 200-Hz composite loss factor peak at a temperature less than -5 °C, a peel adhesion greater than 10 N/25 mm, a dynamic shear greater than 75 N/625 mm2, and a 200-Hz composite loss factor peak at a temperature less than -15 °C, (Tg,b-Tg,d)is less than (80± 40)( Hd / Hb )(0.3±0.2)°C, (Tg,b-Tg,a)is less than (60 ± 40)(Hd/Hb)(0.3±0.2)°C, Tg,b ranges from -35 °C to 100 °C, Tg,a ranges from -80°C to 0°C, Hd ranges from 0.1 mil to 200 mil, Hb ranges from 0.1 mil to 200 mil, (tan(ƃ)d is equal to or greater than (10-10 Hd-2.5 +0.25) as measured over a target operating temperature range or over a target operating frequency range, the target operating temperature range is greater than 30 °C, the target operating temperature range includes temperatures between -40 °C and 0 °C, the target operating frequency range is greater than 240 Hz, the target operating frequency range includes frequencies between 100 Hz and 2000 Hz, (tan(ƃ)d ranges from 1 to 4, Tg,b is at least 25 °C greater than Tg,d, and wherein tan is at least 2 greater than (tan(ƃ)b, Tg,b is less than 25 °C greater than Tg,d , wherein Hd is greater than or equal to Hb, and wherein (tan(ƃ)d is at least 1.5 greater than (tan(ƃ)b, Tg,b is less than 25 °C greater than Tg,d , wherein Hd is less than Hb, and wherein (tan(ƃ)d is at least 2 greater than (tan(ƃ)b, and (tan(ƃ)b ranges from 0.5 to 2.5”, Meckler et al. discloses a multilayer tape construction comprising: a damping layer having a damping layer glass transition temperature (Tg,d), a damping layer thickness (Hd), and a damping layer viscoelastic loss factor (tan(ƃ)d and a bonding layer having a bonding layer glass transition temperature (Tg,b), a bonding layer thickness (Hb), and a bonding layer viscoelastic loss factor (tan(ƃ)b wherein Tg,b is greater than or equal to Tg,d., wherein each of the damping layer and the bonding layer comprises at least one pressure sensitive adhesive selected from the group consisting of silicon adhesives, (meth)acrylic adhesives, rubber adhesives, polyisobutyl/butyl polymers, and hybrid adhesives (Abstract; Claims 1, 9, 11, 13; Paragraphs 0023, 0026, and 0030) and made from selected materials for the damping and bonding layers (Paragraphs 0016 – 0028). Since the composition of the reference is the same as those claimed herein it follows that the multilayer tape of Meckler et al. would inherently possess the properties recited in claims 2 - 17. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially thesame as a composition disclosed in the prior art, the burden is properly upon theapplicant to prove by way of tangible evidence that the prior art composition does notnecessarily possess characteristics attributed to the CLAIMED composition. In reSpada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67,205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA1971).
Products of identical composition may not have mutually exclusive properties. Inre Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Response to Arguments
Applicant's arguments filed February 27, 2026 have been fully considered but they are not persuasive.
Applicants argue that the system of Meckler et al. does not disclose the properties of the damping and bonding layer. This is not deemed persuasive since arguments cannot take the place of evidence in the record to overcome a rejection. See MPEP 2145. As shown above, Meckler et al. disclose a multilayer tape construction comprising: a damping layer having a damping layer glass transition temperature (Tg,d), a damping layer thickness (Hd), and a damping layer viscoelastic loss factor (tan(ƃ)d and a bonding layer having a bonding layer glass transition temperature (Tg,b), a bonding layer thickness (Hb), and a bonding layer viscoelastic loss factor (tan(ƃ)b wherein Tg,b is greater than or equal to Tg,d., wherein each of the damping layer and the bonding layer comprises at least one pressure sensitive adhesive selected from the group consisting of silicon adhesives, (meth)acrylic adhesives, rubber adhesives, polyisobutyl/butyl polymers, and hybrid adhesives (Abstract; Claims 1, 9, 11, 13; Paragraphs 0023, 0026, and 0030) and made from selected materials for the damping and bonding layers (Paragraphs 0016 – 0028).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Patricia L Nordmeyer whose telephone number is (571)272-1496. The examiner can normally be reached 10am - 6:30pm EST, Monday - Friday.
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 March 23, 2026