DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 3 in the amendments filed 8/21/2026.
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 .
Oath/Declaration
The Oath/Declaration filed 8/25/2026 does not include inventor Fabian Brockmeyer, who was listed on the ADS filed 9/19/2024.
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 8/21/2026, with respect to the objections to claims 1, 4, 10-11, 17 and 19 as set forth in paragraphs 5-10 of the action mailed 7/1/2026, have been fully considered and are persuasive. The objections to claims 1, 4, 10-11, 17 and 19 have been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 8/21/2026, with respect to the rejections of claims 2-3, 7 and 20 under 35 U.S.C. 112(b) as set forth in paragraphs 11 and 13 of the action mailed 7/1/2026, have been fully considered and are persuasive. The rejections of claims 2-3, 7 and 20 have been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 8/21/2026, with respect to the rejection of claims 2-3 under 35 U.S.C. 112(d) as set forth in paragraph 15 of the action mailed 7/1/2026, have been fully considered and are persuasive. The rejection of claims 2-3 has been withdrawn.
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
Claims 1-2, 4-11 and 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of monomer (b) demonstrating a Tg of 15℃ or higher, and the claim also recites that monomer (b) consists of methyl methacrylate, which demonstrates a Tg of 105, 115 or 120℃, and thus is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 19-20 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 19 recites the broad recitation of monomer (b) demonstrating a Tg of 15℃ or higher, and the claim also recites that monomer (b) consists of methyl methacrylate, which demonstrates a Tg of 105, 115 or 120℃, and thus is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
Claim(s) 1-2, 4-9, 11 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ukei et al. (US 2016/0280967 A1) in view of Soerens et al. (US 2006/0142445 A1), in light of the evidence provided by Kanner et al. (US 7070051 B2) and the Aldrich Data Sheet.
Regarding claim 1, Ukei teaches a surface protection sheet (10) (adhesive tape) comprising a pressure-sensitive adhesive (PSA) layer (2) on a support substrate (1) (para 0026-0027; Fig. 1), which said support substrate (1) comprises a composite of, inter alia, woven fabrics (textile carrier) and a resin film (underside applied film) (para 0049; 0064) and which said PSA layer (2) is an acrylic PSA comprising a crosslinked acrylic polymer (para 0078) The crosslinking occurs via crosslinking agents such as, inter alia, isocyanate-based crosslinking agents (para 0079-0080). The PSA layer (2) is formed from a dried composition of a water-dispersed acrylic PSA, wherein the acrylic polymer (dispersion polymer) is obtainable via emulsion polymerization (para 0081-0083; 0175).
Ukei also teaches that the acrylic polymer comprises a monomer mixture (para 0084) comprising:
monomer (A) selected from a combination of, inter alia, n-butyl acrylate and methyl methacrylate (para 0085), the former of which is identical to that presently claimed/disclosed as providing the presently claimed (a) (meth)acrylic monomer having a Tg of -40 ℃ or less and the latter of which is identical to that presently claimed/disclosed as providing the presently claimed (b) ethylenically unsaturated monomer having a Tg of 15 ℃ or higher;
monomer (B) comprising a carboxyl group-containing monomer to introduce a crosslinking point in the acrylic polymer or increase the cohesiveness of the acrylic polymer, and is selected from, inter alia, acrylic acid (para 0086), which is identical to that presently claimed/disclosed as providing the presently claimed (c) ethylenically unsaturated monomer having an acid functional group;
monomer (C) comprising a hydroxy group-containing monomer such as, inter alia, 2-hydroxyethyl methacrylate (para 0087-0089), which is identical to that presently claimed/disclosed as providing the presently claimed (c) ethylenically unsaturated monomer having a hydroxyl functional group; and,
a chain transfer agent (a molecular weight- or polymerization degree-adjusting agent) such as, inter alia, n-dodecyl mercaptan in an amount of 0.01 to 1 parts by weight per 100 parts by weight of the total monomer content (para 0150).
The chain transfer agent is disclosed in proportions relative to the total monomers of the acrylic polymer, while the presently claimed chain transfer agent is claimed as a wt.-% of the polymer. However, it is noted that 0.01 to 1 parts by weight per 100 parts by weight of the total monomer content provides the chain transfer agent in a wt.-% of (0.01 to 1 pbw/100.01 to 100.1 pbw) x 100 of approximately 0.01 to 0.1 wt.-%, which is identical to that presently claimed (0.01 to 0.25 wt.-%).
Ukei continues to teach that the monomer (A) is provided at 50 to 99 % by weight, which overlaps that presently claimed for the combination of the wt.-% of the monomers (a) (80.75 to 94.89 wt.-%) and (b) (5.00 to 14.00 wt.-%), towards mitigating the peel strength to itself and anti-residue properties (para 0100). Ukei also instructs that including methyl methacrylate is directed towards adjusting the Tg of the acrylic copolymer with monomers having a Tg higher than 0 ℃ (para 0124). See also the Tg values of Table 1 (para 0109).
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 n-butyl acrylate and consisting of the methyl methacrylate in the presently claimed proportions for monomer (a) (i.e., 80.75 to 94.89 wt.-%) and monomer (b) (5.00 to 14.00 wt.-%) based on the overall Tg required on the prior art’s acrylic polymer as in the present invention.
Ukei further teaches that Monomer (B) is provided at 0.5 to 4 % by weight towards a balance of reducing self-adherence, anti-residue properties and peel strength ratio, and monomer (C) is provided at 3 to 15 % by weight (para 0103). Monomers (B) and (C) are employed to provide crosslinking points for the acrylic polymer (para 0105). The Examiner notes that the combined amounts of monomers (B) and (C) provides an overlap with that presently claimed for the monomer (c) (i.e., 0.10 to 5.00 wt.-%). The Tg of acrylic acid is 105 ℃ and that of 2-hydroxyethyl methacrylate is 57 ℃ (see the Aldrich Data Sheet).
The acrylic polymer has a glass transition temperature (Tg, or aka tan delta maximum) of 0 to -55 ℃, which overlaps that presently claimed (-25 to -15 ℃), towards a balance of initial low-temperature adhesion, aged peel strength and peel strength ratio (para 0106), which is adjusted via selection of the monomeric components and their respective proportions (para 0107).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to further provide both the crosslinking monomers (B) and (C) in the presently claimed combined wt.-% range (i.e., 0.10 to 5.00 wt.-%) based on the overall Tg required on the prior art’s acrylic polymer towards a balance of initial low-temperature adhesion, aged peel strength and peel strength ratio as required by the prior art’s intended application as in the present invention.
Ukei moreover teaches that the PSA composition comprises 5 parts by weight or less of a tackifier per 100 parts by weight of the acrylic polymer, which overlaps that presently claimed (0.50 to 10.00), towards mitigating the peel strength to itself (para 0167).
The Examiner notes that it is established in the art that the Tg of a PSA is adjusted via its formulation with tackifiers, which are added to improve the “quick grab,” to reduce the viscosity (and improved substrate wetting) and to raise the Tg, the latter of which is selected based on the balance of tack, peel and cohesion as evidenced via Kanner (see column 8, line 58 to column 9, line 19).
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 Ukei with the presently claimed proportion of tackifier(s) based on the “quick grab,” degree of substrate wetting, peel strength and cohesion required of the prior art’s intended application as in the present invention.
Ukei is silent to the acrylic polymer comprising a tan delta at 130 ℃ in a range of 0.38 to 0.55.
However, Soerens instructs that the tan(delta) is the ratio of the loss modulus (G”) to the storage modulus (G’); and describes the balance of the viscous response of the adhesive (i.e., (G”)) such as viscosity, and the adhesive performance properties (i.e., (G’)) such as shear resistance, bonding properties and debonding properties.
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 acrylic polymer of Ukei with the presently claimed tan delta based on the balance of the viscous response and the adhesive performance properties at the temperature of use (e.g., 130 ℃) as required of the prior art’s intended application as in the present invention.
The recitation in the claims that the adhesive tape is “for wrapping cables” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the Examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Ukei discloses a surface protection sheet (10) as presently claimed, it is clear that the surface protection sheet (10) Ukei would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Regarding claims 2 and 4-7, as noted above, Ukei teaches that monomer (A) comprises n-butyl acrylate and methyl methacrylate; monomer (B) comprises acrylic acid; monomer (C) comprises 2-hydroxyethyl methacrylate; and the chain transfer agent is n-dodecyl mercaptan.
Regarding claim 8, while Ukei does not specify the presently claimed peel adhesion on steel (i.e., at least 2.0 N/cm) under the presently claimed conditions (i.e., ASTM 3330 for an adhesive coat weight of 30 g/m2 on 23 mm polyester film carrier), Ukei teaches that the PSA layer has a thickness, which is proportional to coat weight, of 3 to 100 mm towards minimizing peel strength increase and anti-residue properties (para 0176).
Ukei also teaches that the initial peel strength (SA) to a stainless steel plate is 0.5 to 10 N/25 mm (0.2 to 4N/cm), which overlaps that presently claimed, towards reapplication to an adherend (para 0009, 0036). The Examiner also respectfully notes that,
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.
Indeed, given that Ukei teaches a PSA composition identical to that presently claimed, to include identical compositional components and in identical proportions, it is reasonable to conclude the PSA layer (2) of the surface protection sheet (1) of Ukei would demonstrate the presently claimed peel adhesion under the presently claimed conditions; and/or it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the peel adhesion to that presently claimed based on the peel strength increase, anti-residue, and reapplication properties required of the prior art’s intended application as in the present invention.
Regarding claim 9, Ukei teaches that the support substrate comprises a woven polyester fabric (para 0049).
Regarding claim 11, While Ukei does not specify that the disclosed woven polyester fabric, resin film and PSA layer are disposed in this order, Ukei does disclose that the support substrate has a multi-layer structure including two layers such as a laminate of the woven polyester fabric and the resin film (para 0064). The Examiner submits that it would have been an obvious choice to one skilled in the art to arrange the layer structure of the surface protection sheet (10) to provide the resin film interim to the PSA layer (2) and an outer layer of the woven polyester fabric.
Regarding claims 17-18, Ukei teaches or renders obvious the presently claimed invention comprising monomers (a)-(d), and their respective proportions, as set forth in the rejections of claims 1, 7 and 11 as set forth above, to include the surface protection film consisting of the support substrate (1) and the PSA layer (2) (and optionally, the resin film).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ukei et al. (US 2016/0280967 A1) in view of Soerens et al. (US 2006/0142445 A1) and in further view of Hanle et al. (US 2021/0040355 A1), and in light of the evidence provided by Kerep (US 2019/0211230 A1).
Regarding claim 10, Ukei does not disclose that the polyester woven fabric comprises a warp thread count of 10 to 60/cm, a weft thread count of 10 to 40/cm, a yarn weight of the warp threads of 40 to 400 dtex, and a yarn weight of the weft threads of 40 to 660 dtex.
However, Hanle teaches an adhesive tape comprising a PSA layer applied to a side of a carrier (abstract), which said carrier is a polyester woven fabric having a warp thread count of 10 to 60/cm, a weft thread count of 10 to 40/cm, a yarn weight of the warp threads of 40 to 400 dtex, and the yarn weight of the weft threads of 40 to 660 dtex (para 0108-0112).
The Examiner submits that it is established in the art that the thread count and yarn weight are factors considered in determining the resultant basis weight of a woven fabric, which in turn is a factor in the woven fabric’s abrasion strength and stiffness as evidenced via Kerep (see para 0018-0029 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 woven fabric of Ukei with the presently claimed warp/weft profile based on the structural properties required of the support substrate (1) as in the present invention.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ukei et al. (US 2016/0280967 A1) in view of Soerens et al. (US 2006/0142445 A1).
Regarding claims 19-20, Ukei/Soerens teaches the presently claimed invention as in the rejection of at least current claims 1-2, 4-9, 11 and 17-18 set forth above, which is identically applicable to the current claims.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 8/21/2026, with respect to the rejections of claims 1-9, 11 and 17-18 over Ukei et al. in view of Soerens et al. under 35 U.S.C. 103; claims 1-9, 11 and 17-18 over Ukei et al. in view of Soerens et al. and in further view of Hanle et al. under 35 U.S.C. 103; and claims 19-20 over Ukei et al. in view of Soerens et al. under 35 U.S.C. 103 as set forth in paragraphs 18-20 of the action mailed 7/1/2026, have been fully considered but they are not persuasive.
The Applicant’s attention is respectfully directed to the prior art rejections set forth above, wherein it is submitted that the cited references teach or render obvious all the limitations of the presently claimed invention. The Examiner further submits that one skilled in the art would have been well apprised to select only the n-butyl acrylate and methyl methacrylate monomers (i.e., consisting of methyl methacrylate) for the disclosed monomer (A) as postured above based on the overall Tg of the resultant acrylic polymer.
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 10/9/2026
