DETAILED ACTION
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 (claims 1-11) in the reply filed on 08/12/2026 is acknowledged. The traversal is on the ground(s) that (i) claim 11 of the present application recites a starch-based laminating adhesive that "resists wetting during dispensing and activation of the water-activated adhesive" yet "has sufficient solubility for repulpability." This dual functionality-resistance to rewetting during tape dispensing combined with sufficient solubility for paper repulping-is the opposite of the remoistenable behavior taught by Buwalda and constitutes the contribution that the claimed inventions make over the prior art and (ii) Group I and II reflect a single general inventive concept and should not be divided. This is not found persuasive because of following reasons.
Regarding (i), claim 11 is not part of special technical feature shared between Group I, Group II and Group III, and therefore is not needed to be met by Buwalda.
Regarding (ii), as set forth in MPEP 1850 II, lack of unity of invention can be established “a posteriori” after taking the prior art into consideration. Therefore, there is a lack unity of invention because the technical feature is not a special technical feature as it does not make a contribution over the prior art in view of the prior art as set forth in the Restriction requirement mailed 06/16/2026.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/12/2026.
Information Disclosure Statement
Information Disclosure Statements (IDS) submitted on 10/09/2024, 01/08/2025 and 05/18/2026 are considered and signed IDS forms are attached.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1, line 7 recites “reinforcement”, which should be “the reinforcement”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: Claim 1, line 7 recites “innermost paper layer”, which should be “the innermost paper layers”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: Claim 6, line 2 recites “outermost paper”, which should be “the outermost paper layer”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: Claim 1, line 3 recites “reinforcements”, which should be “reinforcement”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 4 is 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.
Claim 4 recites “water-soluble polymer”. Given that 4 recites “water-soluble polymer” not recited in claim 3 from which it depends, claim 4 fails to further limit the subject matter of claim 3.
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.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Buwalda et al. (US 2016/0130479 A1 cited in IDS) in view of Finestone et al. (US 2002/0068136 A1) and Steinzor (US 2008/0102254 A1).
Regarding claims 1 and 6, Buwalda et al. disclose a tape comprising a first substrate made of a paper (outermost paper layer), a starch-based aqueous adhesive (starch-based laminating adhesive) and a second substrate made of a paper (innermost paper layer) (see Abstract and page 12, claims 1, 13 and 14).
Buwalda et al. do not disclose a reinforcement as presently claimed. Buwalda et al. do not disclose a water-activated adhesive adjacent to the bottom surface of the innermost paper layer.
Finestone et al. disclose a flexible laminate comprising outer paper layer 120, plastic layer 105, intermediate paper layer 115, plastic layer 110 and outer paper layer 125 (see Figure 6 and paragraph 0042). The layers are adhered together using a water-based adhesive (see paragraph 0047). The intermediate paper layer absorbs moisture from the water-based adhesive to facilitate drying and curing of the laminate (see paragraph 0043). The plastic films 105 and 110 are uniaxially or biaxially-oriented plastic films that provides tensile strength (see paragraph 0045). The uniaxially or biaxially-oriented plastic films read on reinforcement (uni- or bi-directional tape or ribbon) as presently claimed. Accordingly, Finestone et al. disclose the flexible laminate comprising outer paper layer / water-based adhesive / uniaxially or biaxially-oriented plastic film / water-based adhesive / intermediate paper layer / water-based adhesive / uniaxially or biaxially-oriented plastic film / water-based adhesive / outer paper layer.
In light of motivation for using flexible laminate disclosed by Finestone et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use a laminate of uniaxially or biaxially-oriented plastic film / intermediate paper / uniaxially or biaxially-oriented plastic film between the outermost paper layer and the innermost paper layer of Buwalda et al., wherein each of these layers are adhered with each other using the starch-based aqueous adhesive of Buwalda in order to improve tensile strength as well as to facilitate drying and curing, and thereby arrive at the claimed invention.
Accordingly, Buwalda et al. in view of Finestone et al. disclose the tape comprising outermost paper layer / starch-based aqueous adhesive / uniaxially or biaxially-oriented plastic film / starch-based aqueous adhesive / intermediate paper layer / starch-based aqueous adhesive / uniaxially or biaxially-oriented plastic film / starch-based aqueous adhesive / innermost paper layer. Therefore, the starch-based aqueous adhesive is necessarily disposed about each of the outermost paper layer, the uniaxially or biaxially-oriented plastic film and the innermost paper layer, and the starch-based aqueous adhesive is necessarily contiguous to the innermost paper layer, the outermost paper layer and the reinforcement.
Buwalda et al. in view of Finestone et al. do not disclose a water-activated adhesive adjacent to the bottom surface of the innermost paper layer.
Steinzor discloses a reinforced packing tape comprising a reinforcing film on a base layer of a paper, wherein a lower surface of the paper is coated with a water-activated adhesive (see Abstract). The water-activated adhesive allows application of the reinforced packing tape for sealing/adhering to other items (see paragraph 0002).
In light of motivation for using a water-activated adhesive on a lower surface of a paper disclosed by Steinzor as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use a water-activated adhesive adjacent to the bottom surface of the innermost paper layer in Buwalda et al. in view of Finestone et al. in order to allow application of tape for sealing/adhering to other items, and thereby arrive at the claimed invention.
Accordingly, Buwalda et al. in view of Finestone et al. and Steinzor disclose the tape with the water-activated adhesive. Therefore, the tape of Buwalda et al. in view of Finestone et al. and Steinzor reads on a water-activated tape.
Regarding claim 2, Buwalda et al. disclose paper can be natural kraft paper (see paragraph 0052).
Regarding claims 3 and 4, Buwalda et al. in view of Finestone et al. and Steinzor disclose the water-activated tape as set forth above. The water-activated tape comprises uniaxially or biaxially-oriented plastic film (i.e. reinforcement comprising uni- or bi-directional tape or ribbon) as noted above.
Regarding claim 5, Buwalda et al. disclose the starch-based aqueous adhesive comprises a chemically modified starch (see paragraphs 0019, 0024) or an enzymatically modified starch (see page 12, claim 1).
Claims 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Buwalda et al. (US 2016/0130479 A1 cited in IDS) in view of Finestone et al. (US 2002/0068136 A1) and Steinzor (US 2008/0102254 A1) as applied to claim 1 above, further in view of Schuelke et al. (US 2011/0008585 A1).
Regarding claims 7, 8 and 10, Buwalda et al. in view of Finestone et al. and Steinzor disclose the water-activated tape as set forth above. The water-activated tape comprises the starch-based adhesive, wherein the starch-based adhesive comprises a chemically modified or an enzymatically modified starch as noted above. While Buwalda et al. disclose starch-based adhesive, Buwalda et al. in view of Finestone et al. and Steinzor do not disclose the starch-based adhesive comprises a crosslinker.
Schuelke et al. disclose an adhesive composition comprising a starch and water-proofing resin such as urea formaldehyde resin (urea resin) (see paragraph 0021). Given that urea formaldehyde resin is urea resin identical to that presently claimed, urea formaldehyde resin will necessarily function as crosslinker.
In light of motivation for using water-proofing resin such as urea formaldehyde resin disclosed by Schuelke et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to use water-proofing resin such as urea formaldehyde resin in the starch-based adhesive of Buwalda et al. in view of Finestone et al. and Steinzor in order to provide water-proofing, and thereby arrive at the claimed invention.
Regarding claim 9, Buwalda et al. in view of Finestone et al., Steinzor and Schuelke et al. disclose the water-activated tape as set forth above. Given that a catalyst is optional, Buwalda et al. in view of Finestone et al., Steinzor and Schuelke et al. meets present claim.
Regarding claim 11, Buwalda et al. in view of Finestone et al., Steinzor and Schuelke et al. disclose the water-activated tape as set forth above. The water-activated tape comprises starch-based adhesive as noted above. Given that the starch-based adhesive of Buwalda et al. in view of Finestone et al., Steinzor and Schuelke et al. is identical to that presently claimed, the starch-based adhesive of Buwalda et al. in view of Finestone et al., Steinzor and Schuelke et al. necessarily inherently resists wetting during dispensing and activation of the water-activated adhesive; and has sufficient solubility for repulpability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
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