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 of Group II in the reply filed on 5/4/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 38-61 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/4/2026.
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 66 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 66, it is unclear from the claim limitations and in light of the specification what is and is not being claimed given that it is unclear if the monomers are referring back to only the nitrile butadiene latex, or to all of the recited latexes.
Claims 69-71 and claims 73-74 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 69, it is unclear from the claim limitations, and in light of the specification, what is being claimed given that it is unclear if, and how, the recited polymeric membrane and release liner comprise the hot melt adhesive.
Regarding claim 72, it is unclear from the claim limitations and in light of the specification what is and is not being claimed given that it is unclear if the monomers are referring back to only the nitrile butadiene latex, or to all of the recited latexes.
Regarding claims 73-74, attention is respectfully directed to paragraphs 0012-0013, 0046-0047, 0050 and 00155 of the specification as originally filed, wherein it is noted that the claimed polymeric membrane is disclosed as an example of a substrate.
Thus, it is unclear from the claim limitations whether the polymeric membrane of current claim 69 is the same as the substrate recited in current claims 73-74, or if the polymeric membrane of current claim 69 is different and/or in addition to the substrate recited in current claims 73-74.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 62-64 and 67-68 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hansen et al. (US 2006/0052472 A1), and in light of the evidence provided via Scholte et al. (US 12492283 B2).
Regarding claim 62, Hansen teaches a pressure-sensitive adhesive (PSA) tape (coated article) comprising an acrylate hotmelt PSA coated (hot melt adhesive coating) from the melt onto a backing (para 0001) and then crosslinked via a first thermal crosslinking and a UV crosslinking (both UV and thermal crosslinking) (para 0007).
Regarding claim 63, as noted above, Hansen teaches acrylate hotmelt PSA which comprises a polyacrylate (acrylic copolymer) (para 0007) and a thermal crosslinker such as, inter alia, polyfunctional isocyanates (para 0027), the latter of which constitute polymeric chain extender(s) (see column 21, lines 16-35 of Scholte).
Regarding claim 64, Hansen teaches that the polyacrylate PSAs are admixed with photoinitiators (para 0022).
Regarding claims 67-68, as noted above, Hansen teaches PSA tapes, which would necessarily find suitable use in either an outdoor or indoor application.
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) 65-66 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hansen et al. (US 2006/0052472 A1) in view of Shih et al. (US 2005/0196607 A1).
Regarding claims 65-66, Hansen teaches the PSA tape (i.e., the coated article) comprising the acrylate hotmelt PSA coated from the melt onto a backing and then crosslinked via a first thermal crosslinking and a UV crosslinking, wherein the, wherein the acrylate hotmelt PSA comprises the polyacrylate and the thermal crosslinker (i.e., the polymeric chain extender(s)) as in the rejection of current claims 62-63 set forth above.
Hansen is silent to the acrylate hotmelt PSA further comprising a water-borne latex adhesive (current claim 65) such as those listed in current claim 66.
However, Shih teaches PSA layers comprising a combination of UV-cured, hotmelt emulsion PSAs (i.e., water-borne latex adhesive, current claim 65) comprising a crosslinked acrylic emulsion (i.e., acrylic latex, current claim 66) (para 0047-0050).
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ an emulsion-type, UV-curable hot-melt PSA composition for the acrylate hotmelt PSA of Hansen towards said PSA composition comprising the coatability (low viscosity) of a water-borne composition for coating the PSA composition on a substrate, followed by drying (via evaporating said water) the acrylate hotmelt PSA as in the present invention.
Claim(s) 69-72 and claims 73-74 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hansen et al. (US 2006/0052472 A1) in view of Shih et al. (US 2005/0196607 A1), and in light of the evidence provided via Scholte et al. (US 12492283 B2).
Regarding claims 69-72 and claims 73-74, Hansen/Shih teaches the PSA tape comprising an acrylate hotmelt PSA coated from the melt onto a backing and then crosslinked via a first thermal crosslinking and a UV crosslinking; wherein the acrylate hotmelt PSA comprises the polyacrylate, the thermal crosslinker, and the photoinitiators as in the rejection of current claims 62-64 set forth above.
Hansen further teaches that the acrylate hotmelt PSA is provided on backing materials/films and release liners (multilayer composite, current claim 69), the former of which includes, inter alia, EPDM (polymeric membranes) and PET nonwovens (substrate, current claims 73-74) (para 0086-0089).
While Hansen does not specify that the PSA tape comprises both the EPDM backing material/film and the release liner (current claim 69), or both the PET nonwoven and the release liner (coated article, current claims 73-74), it would have been obvious to one skilled in the art before the effective filing date of the present invention to provide the PSA layer of Hansen/Shih to a backing material/film followed by applying a release liner of the other surface of the PSA layer to protect said other surface (e.g., from contaminates) until the PSA tape is to be adhered to an adherend as in the present invention.
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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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 6/10/2026
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