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 .
Election/Restrictions
Applicant's election with traverse of Group (I) in the reply filed on 5/21/2026 is acknowledged. The traversal is on the ground(s) that a complete search of one of the groups cannot be made without completely searching the other groups. This is not found persuasive because Groups II-IV include limitations not required in Group I. Additionally, the Applicant’s attention is respectfully directed to the prior art rejection of the elected claims set forth below, wherein it is noted that the cited prior art teaches or renders obvious all the limitations of the elected claims.
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).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed ranges of monomer (a), monomer (b), monomer(s) (c), and monomer (d) (see Tables 2.1 and 2.2 presently disclosed).
NOTE: it is unclear if the tan delta (and/or its maximum) were determined on the adhesive composition as a whole (see lines 5-20 of page 31 presently disclosed), or only on the polymer as presently claimed.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/21/2026.
Oath/Declaration
No Oath/Declaration has been filed.
Claim Objections
Claim 1 is objected to because of the following informalities: please amend the claim to recite “…dried polymer dispersion comprising a polymer…”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: vinyl sulfonic acid is repeated twice in the claim. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: the claim should be amended to recite “…between the textile carrier is a woven polyester fabric, and has a construction…” if that was what was intended. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: the claim should be amended to recite “…between the textile carrier and the pressure sensitive adhesive…”. if that was what was intended. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: please amend the claim to include the acid and/or hydroxy functional groups of current claim 1 to monomer (c). Appropriate correction is required.
Claim 19 is objected to because of the following informalities: please amend the claim to recite “…dried polymer dispersion comprising a polymer…”. Appropriate correction is required.
Claim 20 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.
Regarding claim 20, it is unclear if the recited composition of the polymer is the same composition previously recited in current claim 19, or if the recited composition of the polymer is in addition to the composition previously recited in current claim 19.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 2-3 and 17 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.
Regarding claim 2, it is unclear from the claim limitations what is, and is not, being claimed as the at least monomer (a) is recited in independent claim 1 as having a Tg of -40 ℃ or less, but octyl methacrylate recited in the current claim has a Tg of -20 ℃ (see Aldrich Data Sheet included with the current action), which is higher than -40 ℃.
Regarding claim 3, it is unclear from the claim limitations what is, and is not, being claimed as the at least monomer (b) is recited in independent claim 1 as having a Tg of 15 ℃ or higher, but octadecyl acrylate (aka stearyl acrylate) recited in the current claim has a Tg of approximately -50 ℃, which is lower than 15 ℃.
Regarding claim 17, it is unclear if the recited underside and the recited applied film are the same underside and applied film previously recited in current claim 1, or if the recited underside and the recited applied film are in addition to the underside and applied film previously recited in current claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 2, the at least monomer (a) is recited in independent claim 1 as having a Tg of -40 ℃ or less, but octyl methacrylate recited in the current claim has a Tg of -20 ℃, which is higher than -40 ℃, and thus does not further limit independent claim 1.
Regarding claim 3, the at least monomer (b) is recited in independent claim 1 as having a Tg of 15 ℃ or higher, but octadecyl acrylate (aka stearyl acrylate) recited in the current claim has a Tg of approximately -50 ℃, which is lower than 15 ℃, and thus does not further limit independent claim 1.
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.
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.
Claim(s) 1-9, 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 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 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 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 2-7, 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 1-9, 11 and 17-18 set forth above, which is identically applicable to the current claims.
Conclusion
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 6/27/2026
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