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 .
Response to Amendment
Applicant’s arguments, see the amendments to the abstract and the remarks filed 6/23/2026, with respect to the objection to the abstract as set forth in paragraph 3 of the action mailed 4/8/2026, have been fully considered and are persuasive. The objection to the abstract has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/23/2026, with respect to the objections to claims 1, 4-6, 12 and 16-18 as set forth in paragraphs 5-13 of the action mailed 4/8/2026, have been fully considered and are persuasive. The objections to claims 1, 4-6, 12 and 16-18 have been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/23/2026, with respect to the rejections of claims 1-12 and claims 13-18 and 20 and claim 19 under 35 U.S.C. 112(b) as set forth in paragraphs 15-18 of the action mailed 4/8/2026, have been fully considered and are persuasive. The rejections of claims 1-18 have been withdrawn, except for claims 9 and 17 as noted below.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim should be amended to recite “…60% by weight, based [[in]]on the total mass…”. Appropriate correction is required.
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 § 112
Claim(s) 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites the limitation "the tackifier resin" in line 2. There is insufficient antecedent basis for this limitation in the claim as a tackifier resin has not been previously introduced.
Claims 17-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recites the limitation "the composition" in the 2nd to last line. There is insufficient antecedent basis for this limitation in the claim as a composition has not been previously introduced.
Claim 18 recites the limitation "the self-adhesive product" in line 1 and line 2. There is insufficient antecedent basis for this limitation in the claim as a self-adhesive product has not been previously introduced.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3-9 and 11-12, is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) in view of Fujino et al. (WO 2019/044637 A1), and in light of the evidence provided by Holguin et al. (US 6558790 B1). The Examiner notes that citations from the ‘051 and ‘637 references were taken from machine translations, which were included with the previous action.
Regarding claim 1, Uchida teaches a PSA tape comprising a substrate and a PSA layer laminated thereon, said PSA layer comprises a tackifier resin and a base polymer comprising a hydrogenated block copolymer (elastomer component) comprising at least a styrene monomer block and a conjugated butadiene block (para 0008-0011) such as, inter alia, a styrene-ethylene-butylene-styrene (SEBS) block copolymer (para 0012). The disclosed (SEBS) block copolymer teaches a hydrogenated polyvinylaromatic-polydiene block copolymer having an ABA structure, wherein the styrene blocks provide A = polyvinylaromatic and wherein ethylene-butylene provides B = ethylene and butylene (fully hydrogenated polydiene block).
The styrene content of the (SEBS) block copolymer is 30% by weight or less, which overlaps that presently claimed (at least 18 % by weight), towards a balance of cohesive strength, hardness and high adhesion (para 0013). Uchida also teaches that the block copolymer comprises a diblock copolymer (elastomer component) comprising the styrene monomer block and the conjugated butadiene block (at least one hydrogenated diblock copolymer, A’B’ structure, A’ = A and B’ = B) in an amount of 10 to 90 % by weight, which overlaps that presently claimed (up to 35 % by weight; see the limitations of current claim 3), towards increased adhesiveness and maintaining cohesive strength (para 0016). Thus, Uchida provides the (SEBS) block copolymer in a converse amount of 10 to 90 % by weight, which overlaps that presently claimed (at least 60 % by weight).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the (SEBS) block copolymer and the diblock copolymer in the presently claimed proportions, and to provide said (SEBS) block copolymer with the presently claimed polyvinylaromatic and ethylene fraction towards the PSA of Uchida demonstrating a balance of increased adhesiveness, cohesive strength, hardness and alkaline resistance as in the present invention.
The Examiner notes that, while Uchida teaches that the molecular weight of the base polymer is provided in weight-average molecular weight (Mw) rather than the presently claimed peak molecular weight, Uchida does teach that the block copolymer has an Mw of 50,000 to 600,000 towards compatibility of the block copolymer with other components (para 0017). It is established in the art that the molecular weight of compounds is selected based on the balance of coatability, cohesion and tack required of the compounds contribution to the composition comprising the copolymer as evidenced via Holguin (see column 4, lines 20-24).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to select the presently claimed peak molecular weight of the (SEPS) block copolymer identical to that presently claimed, based on the balance of coatability, cohesion and tack required of the prior art’s intended application, and towards compatibility with the other PSA components, as in the present invention.
Uchida continues to teach that the PSA layer comprises 0-5 parts by weight or less of tackifiers (T2) and (T3) and 3 to 80 parts by weight of tackifier resin (T1) per 100 parts by weight of the base polymer towards a balance of a suppressed increase in adhesion and adhesive residue; removability; and resistance to alkaline solutions (para 0022, 0027).
Uchida is silent to the PSA layer further comprising the presently claimed reinforcing component comprising the presently claimed at least one resin having an MMAP value between -10 to 30 ℃ and a softening point of at least 140 ℃, but Uchida does teach that the PSA layer contains additives such as, inter alia, other resins (para 0028). In addition, Uchida discusses the PSA layer’s removability towards peeling the adhesive tape without damage to the adherend (para 0007, 0009, 0022).
Furthermore, Fujino teaches a protective film comprising an adhesive layer (para 0001, 0007) comprising an adhesive resin composition comprising:
A-B-A and A-B block copolymers comprising aromatic alkenyl compound monomer units (e.g., styrene) and hydrogenated conjugated diene monomer units (e.g., butadiene) (para 0008, 0027);
1 to 50 parts by weight of an a-methylstyrene resin per 100 parts by weight of the block copolymers (para 0010); and,
0.1 to 30 parts by weight of terpene phenol resins per 100 parts by weight of the block copolymers (para 0012).
Fujino continues to teach that the a-methylstyrene resin suppresses the tackiness enhancement and improving peelability with an exemplary a-methylstyrene resin given by ENDEX155 (para 0032), which is identical to that presently disclosed as providing the presently claimed reinforcement component comprising at least one resin having an MMAP value of -10 to 30 ℃, a softening point of at least 140 ℃ and a weight-average molecular weight (Mw) of 6950.
The Examiner notes that proportions of 100 parts by weight base polymer, 3 to 85 parts by weight for a combination of tackifiers (T1), (T2) and (T3) as taught by Uchida, and 1 to 50 parts by weight of an a-methylstyrene resin as taught by Fujino, provides said base polymers in the PSA composition of Uchida/Fujino in a range which overlaps the presently claimed proportions of the elastomer component a) (28 to 60% by weight) and the a-methylstyrene reinforcing resin in a range which overlaps the presently claimed proportions of the reinforcing agent d) (2.5 to 22% by weight).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the block copolymers and the a-methylstyrene reinforcing resin in proportions identical to that of the recited elastomer component a) and reinforcing component d) towards suppressing an increase in adhesion of the PSA layer as in the present invention.
Regarding claim 3, as noted above, Uchida teaches that base polymers in the PSA composition which overlaps that presently claimed proportions of the elastomer component a) (35 to 58% by weight).
Regarding claim 4, as noted above, Uchida teaches that the styrene content of the (SEBS) block copolymer is 30% by weight or less, which overlaps that presently claimed (18 to 35 % by weight).
Regarding claim 5, as noted above, Fujino teaches that the a-methylstyrene resin has a weight-average molecular weight (Mw) of 6950 g/mol.
Regarding claim 6, as noted above, Uchida teaches that the block copolymer comprises the diblock copolymer in an amount of 10 to 90 % by weight, which overlaps that presently claimed (up to 35 % by weight).
Regarding claim 7, as noted above, Uchida teaches that the block copolymer comprises the diblock copolymer, and that the block copolymers have an Mw of 50,000 to 600,000, which overlaps that presently claimed (< 100 000 g/mol).
Regarding claim 8, as noted above, Uchida teaches that the PSA layer comprises 0-5 parts by weight or less of tackifiers (T2) and (T3) and 3 to 80 parts by weight of tackifier resin (T1) per 100 parts by weight of the base polymer, which provides the tackifiers (T1), (T2) and (T3) in a range of approximately 3 to 46 % by weight and which overlaps that presently claimed (28 to 55% by weight).
Regarding claim 9, Uchida teaches that the tackifier resin is selected from, inter alia, hydrogenated terpene resins (para 0023).
Regarding claims 11-12, current claim 1, from which the present claims depend directly or indirectly, recites the plasticizer component as optional, and thus the prior art need not teach the presently recited plasticizer component or their Mw values to teach or render obvious the presently claimed invention
Claim(s) 2 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021188051 A to Uchida et al. in view of Fujino et al. (WO 2019/044637 A1) and in further view of Osterwinter et al. (US 20180148618 A1), and in light of the evidence provided via Kanner et al. (US 7070051 B2).
Regarding claim(s) 2 and 10, as noted above, Uchida/Fujino teaches that the PSA composition may comprise plasticizers, but does not disclose the presently claimed proportions.
However, Osterwinter teaches PSAs comprising a polyvinylaromatic-polydiene block copolymer and a plasticizing resin part (a3) (para 0066) in an amount of at most 5 wt% (para 0073), which overlaps that presently claimed (at least 2 and not more than 25 % by weight, 2 to 20 % by weight).
The Examiner notes that it is established in the art that plasticizers are employed in PSA compositions towards reducing the viscosity to provide more complete substrate wetting (see Kanner at column 8, line 58 to column 9, line 19 therein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA composition of Uchida/Fujino with the presently claimed proportions of the plasticizer based on the viscosity of the PSA composition required of the prior art’s intended application as in the present invention.
Claim(s) 13-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) and in view of Fujino et al. (WO 2019/044637 A1).
Regarding claim 13, Uchida/Fujino teaches the PSA tape (self-adhesive product) comprising a substrate and a PSA layer laminated thereon as in the rejection of claims 1, 3-9 and 11-12 set forth above. Uchida also teaches that the PSA layer is formed on a release film (at least one ply of a temporary carrier material) and then transferred to the substrate (para 0040).
Further, given that Uchida/Fujino teaches the presently claimed PSA layer, to include identical components to those presently claimed, and in the presently claimed proportions, it is reasonable to conclude that the PSA layer would be redetachable by extensive stretching.
Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Regarding claims 14-15, Uchida teaches that the substrate is, inter alia, polyolefin foam (extensible permanent carrier material, stretchable film) (para 0030).
Regarding claim 16, Uchida/Fujino teaches the PSA tape (i.e., the self-adhesive product) comprising the PSA layer is formed on a release film (single-layer, double-sided self-adhesive tape, consisting of a single layer of PSA compound, temporary carrier material) as in the rejection of claims 1, 3-9 and 11-12 and claim 13 set forth above.
Regarding claims 17-18 and 20, Uchida/Fujino teaches that the substrate is, inter alia, polyethylene foam or a polyurethane foam (single-layer permanent carrier) and the PSA layer laminated on both sides of the substrate (para 0030), which said polyolefin and polyurethane foams are identical to those presently disclosed for providing the presently claimed elongation at break of at least 100 %.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A) in view of Fujino et al. (WO 2019/044637 A1).
Regarding claim 19, Uchida/Fujino teaches a PSA tape (self-adhesive product) comprising a PSA layer formed on a release film and then transferred to the substrate as in the rejection of claims 1, 3-9 and 11-12 and claim 13 set forth above, which is equally applicable to the current claim. Uchida also teaches that the PSA tape is applied to an adherend (adhesively bonded assembly) (para 0007).
Double Patenting
Claim(s) 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-19 of copending Application No. 18/884544.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending teach or render obvious all the limitations of the current claims except that the present claims require the recited reinforcing component, whereas the claim of the copending recite the reinforcing agent as optional.
However, it would have been obvious to one of ordinary skill in the art to require the reinforcing component based on the properties imparted to the PSA compound as required by the claims of the copending, and thereby arrive at the presently claimed invention from the claimed invention of the copending.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-19 of copending Application No. 18/889030.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending teach or render obvious all the limitations of the current claims except that the present claims require the recited reinforcing component, whereas the claim of the copending recite the reinforcing agent as optional.
However, it would have been obvious to one of ordinary skill in the art to require the reinforcing component based on the properties imparted to the PSA compound as required by the claims of the copending, and thereby arrive at the presently claimed invention from the claimed invention of the copending.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 6/23/2026, with respect to the rejection of claim 17 under 35 U.S.C. 112(b) as set forth in paragraph 15 of the action mailed 4/8/2026, have been fully considered but they are not persuasive.
In regards to rejection against claim 17 for lack of antecedent basis for the recitation of “the composition,” the Applicant has not amended the claim to overcome the issue, nor has the Applicant argued against the merits of the rejection. Thus, the rejection is maintained and repeated above.
Applicant’s arguments, see the remarks filed 6/23/2026, with respect to the provisional, nonstatutory double patenting rejections of claims 1-20 over claims 1-19 of copending Application No. 18/884544 and claims 1-20 over claims 1-19 of copending Application No. 18/889030 as set forth in paragraphs 26-27 of the action mailed 4/8/2026, have been fully considered but they are not persuasive.
The Examiner disagrees with the Applicant’s assertions that the noted rejections are improper as both rejections were provided in accordance the procedures dictated via the MPEP. Indeed, the Examiner respectfully submits that the rejections are proper, and thus the rejections are maintained and repeated above.
Applicant’s arguments, see the claim amendments and the remarks filed 6/23/2026, with respect to the rejections of claims 1, 3-9 and 11-12 over Uchida et al. in view of Fujino et al. under 35 U.S.C. 103; claims 2 and 10 over Uchida et al. in view of Fujino et al. and in further view of Osterwinter et al. under 35 U.S.C. 103; claims 13-18 and 20 over Uchida et al. in view of Fujino et al. under 35 U.S.C. 103; and claim 19 over Uchida et al. in view of Fujino et al. under 35 U.S.C. 103 as set forth in paragraphs 21-24 of the action mailed 4/8/2026, have been fully considered but they are not persuasive.
In response to the Applicant’s contention that one skilled in the art would not have been motivated to remedy Uchida with Fujino, the Examiner respectfully disagrees, and submits that both references are directed to removable adhesive tapes. Uchida specifically discloses this characteristic (para 0001) as does Fujino (see release properties at para 0001). In addition, the adhesives of both references are directed to vinyl aromatic-diene block polymers. Thus, both the inventions of the cited prior art and the presently claimed invention are in a relevant field of endeavor and reasonably pertinent (even if they address different problems) to each other so as to commend the disclosure of Fujino towards remedy the primary Uchida reference as noted in the prior art section of the current action. See MPEP 2141.01.
In regards to the Applicant’s allegations that Uchida/Fujino do not address tearing during stretching, the Applicant is respectfully reminded that “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Further, and while not conceding that future claim amendments requiring one or more “tear” properties would demonstrate patentability of the currently cited prior art, the Examiner notes that the claims do not require any such “tear” limitations.
Turning now to the Applicant’s submission that the presently claimed invention achieves surprisingly unexpected experimental results, the Examiner respectfully reminds the Applicant that, as set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Currently, the Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed ranges of:
28 to 60% by weight of the recited a) elastomer component;
at least 60% by weight of the hydrogenated polyvinylaromatic-polydiene block copolymer;
which said block copolymer having a polyvinyl aromatic fraction of at least 18% by weight;
2.5 to 22% by weight of the recited reinforcing component;
which said reinforcing component demonstrates an MMAP value between -10 to 30 ℃, and a softening point of at least 140 ℃.
Indeed, as provided in Tables 3-5 presently disclosed, the elastomer component ranges 46.7 to 55.0% by weight, but provides no data at or near the presently claimed lower and upper limits. Also, said Tables 3-5 provide the hydrogenated polyvinylaromatic-polydiene block copolymers given by KRATON G1654 and G1657 in a range of 65.0 to 79.1% by weight (diblock fraction at 20.9 to 35.0 % by weight), but provides no data neat the lower limit and no data for values well above 79.1% by weight (such as 100% by weight) as permitted by the at least 60% by weight limitation presently claimed.
Similarly, the reinforcing component (i.e., ENDEX 155) of the data ranges from 2.9 to 6.5% by weight, which does not sample values nearing or at the presently claimed upper limit of 22% by weight. Further, KRATON G1654 demonstrates a polyvinylaromatic fraction of 31% by weight and a peak Mw of 160,000 while the claimed invention ranges as low as 18% by weight to well above 31% by weight for the polyvinylaromatic fraction, and from 100,00 to 500,00 for the peak Mw. KRATON G1657 has polyvinylaromatic fraction (i.e., 13% by weight) lower than the lower limit presently claimed and KRATONB G1726 has a peak Mw well below the lower limit presently claimed. There is a similar lack of commensuration between the data and the claimed invention in regards to the MMAP and softening values.
Lastly, the comparative examples (C1-C3) do not contain any reinforcing component, and thus there is no data to demonstrate that the unexpected results would not occur at proportions immediately below the presently claimed lower limit of 2.5% by weight or immediately above the presently claimed upper limit of 22% by weight.
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 8/15/2026
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