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 .
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 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 § 103
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Antila et al. (EP 3059344).
As to claim 1, Antila discloses a release liner and method of making said release liner (Abstract). Atilla discloses a base paper comprising a cellulose fiber-based substrate comprising highly refined cellulosic fibers having pulp freeness of SR 70 using the Schopper-Riegler method, said substrate having a first side and a second side opposite to the first side; and a release layer on the first side of the cellulose fiber-based substrate ; wherein the cellulose fiber-based substrate (7) has a transparency index range of 40%-85% (giving it an opacity index in a range of 15%-60%). (¶28-29, 51, 53, 58, 66, 100-103; Fig 1a).
Antila specifically discloses that the content of highly refined cellulosic fibers may comprise of a mixture of softwood and hardwood with the softwood in an amount of 1-50% (¶112) but does not specifically teach the recited range of 60-100% softwood as currently claimed. However, Anita does teach that the amount of softwood and hardwood utilized to provide different compositions, each composition having a different purpose in paper manufacturing (¶28-29); the amount of hardwood affects brightness and transparency; the amount of softwood used can improve the internal bond strength of the material to form a paper web suitable for a release liner (Id.). It would have been obvious for one of ordinary skill in the art to modify the softwood/hardwood percentages into the recited range and would have been motivated to do so because Antila teaches that the softwood/hardwood percentages are result effective variables which would have been optimized by one of ordinary skill at the time of filing.
As to claim 2, the product of claim 1 is taught as seen above. Antila discloses that a primer layer may be applied to the second side of the substrate (Fig. 1a).
As to claim 3, the product of claim 2 is taught as seen above. Antila discloses that the primer is applied in an amount of 1 to 10 g/m2 (¶51).
As to claim 4, the product of claim 2 is taught as seen above. Antila discloses that the primer may comprise of polyvinyl alcohol (¶51) which is a synthetic resin.
As to claims 5 and 6, the product of claim 1 is taught as seen above. Antila discloses that the release layer comprises a release agent comprising of silicone polymer in an amount of 0.7 to 2 g/m2 (¶66).
As to claim 7, the product of claim 1 is taught as seen above. Antila discloses that the paper can have a thickness of 35-100 microns (¶65).
As to claim 8, the product of claim 1 is taught as seen above. Antila discloses that the paper has a smoothness of 900 seconds on either side (¶41). The substrate of Antila would perform in the same recited manner since it comprises of the same recited materials.
As to claim 9, the product of claim 1 is taught as seen above. Antila discloses that the paper can comprise of a mixture of softwood and hardwood, with the softwood having an amount of 1-50 wt%, which would make the hardwood mount 50-99 wt% (¶112).
As to claim 10, the product of claim 1 is taught as seen above. Antila discloses that the substrate can comprise of a supercalendered translucent paper (¶42).
As to claim 11, the product of claim 1 is taught as seen above. Antila discloses that the substrate can have a basis weight of 30 to 120 g/m2 (¶41).
Claim(s) 12-13 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Antila et al. (EP 3059344) as applied to claims 1-11 above, and in view of JP 2000086986 (hereinafter “D1”).
As to claim 12, the product of claim 1 is taught as seen above. D1 discloses that it is known and conventional in the art to apply an adhesive layer to a translucent glassine paper to produce a tape (Abstract). D1 discloses that the adhesive may comprise of a rubber (claim 13) and applied in an amount of 15-50 g/m2 (¶19-20). It would have been obvious for one of ordinary skill in the art at the time of the invention to modify the method of Antila to include a step of applying an adhesive to the translucent paper and would have been motivated to do so because D1 teaches that such a step allows for the creation of a tape. Examiner would point out that this tape is a substrate with a non-stick surface on one side and an adhesive (sticky) surface on the opposite side, which still fulfills the intended purpose of Antila, product with a non-stick surface is formed which can act as a release liner.
As to claim 19, the product of claim 12 is taught as seen above. It is the position of the Examiner that winding a release liner material in a roll form is a known successful and conventional means of storing a web of material. Antila discloses that it is known in the art to wind a release liner stock into a roll form (¶2). It would have been obvious to one of ordinary skill in the art at the time of filing to use the roll form of Antila in the product taught by the references as combined because one of ordinary skill in the art would have been able to carry out such a substitution to achieve the predictable result of providing a known successful and conventional means for storing a web/liner material. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Claim(s) 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Antila et al. (EP 3059344) in view of Steidinger et al. (US 5707475).
Claim 14 is rejected for substantially the same reasons as claim 1 above. Antila fails to specifically teach or disclose how the release coating is applied to said paper. Steidinger discloses a method of making a label with liner (Abstract). Steidinger discloses that roll to roll coating 24 is a known successful and conventional method/means for giving a translucent paper web a desired coating of material (Fig. 2; C2, L23-51). It would have been obvious to one of ordinary skill in the art at the time of filing to use the roll to roll coater of Steidinger in the method taught by Antila because one of ordinary skill in the art would have been able to carry out such a substitution to achieve the predictable result of providing a known successful and conventional means for applying a desired coating to a translucent paper web. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Steidinger further discloses that it is known and conventional in the art to apply an adhesive layer to a translucent release liner to produce a transfer tape (Id.). It would have been obvious for one of ordinary skill in the art at the time of the invention to modify the method of Antila to include a step of applying an adhesive to the translucent liner and would have been motivated to do so because Steidinger teaches that such a step allows for the creation of a transfer tape.
As to claim 15, the method of claim 14 is taught as seen above. It is the position of the Examiner that converting a web of material into roll form is a well-known successful and conventional means of storing a web material and would have been obvious to one of ordinary skill at the time of the invention.
As to claim 16, the method of claim 14 is taught as seen above. The method of the above references as combined would create a single sided transfer tape, which comprises an adhesive layer on the opposite side of the paper substrate of the release coat. The above references as combined would utilize a roll to roll coating method to apply said adhesive to the web as taught by Steidinger.
As to claim 17, the method of claim 16 is taught as seen above. Steidinger discloses that it is known and conventional in the art to supply a paper web in roll form and to unwind said roll to process the web material (Fig. 2). It would have been obvious to one of ordinary skill in the art at the time of filing to use the roll unwinding method of Steidinger in the method taught by taught by Antila because one of ordinary skill in the art would have been able to carry out such a substitution to achieve the predictable result of providing a known successful and conventional means of supplying a web of material for processing. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
As to claim 18, the above references as combined produces an article tape which comprises of the recited structure.
Response to Arguments
Applicant's arguments filed June 23, 2026 have been fully considered but they are not persuasive.
Applicant argues on pages 6-7 that Antila fails to teach or disclose the recited softwood range of 60-100% and hardwood range of 0-40%. This argument is not persuasive since, as seen in the rejection above, Antila discloses that the amount of softwood and hardwood used in the liner are result effective variables that would be routinely optimized by one of ordinary skill in the art at the time of filing to impart desired features/traits in the liner paper.
Applicant argues on pages 7-6 that the modification of Antila by D1 would be improper since adding an adhesive layer to the liner of Antila would make it unsatisfactory for its intended purpose since this would make the liner a tape. This argument is not persuasive since, as seen in the rejection above, this would only form an adhesive backed liner, still giving the liner a non-stick surface for performing the intended purpose of forming a lining.
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 CHRISTOPHER C CAILLOUET whose telephone number is (571)270-3968. The examiner can normally be reached M-F 9AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PHILLIP TUCKER can be reached at (571)272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER C CAILLOUET/Examiner, Art Unit 1745
/GEORGE R KOCH/Primary Examiner, Art Unit 1745
Prosecution Insights