DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 8 and the addition of new claim 20 in the amendments filed 6/24/2026.
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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 6/24/2026, with respect to objections to claims 1, 4, 12 and 16 as set forth in paragraphs 3-5 of the action mailed 4/8/2026, have been fully considered and are persuasive. The objections to claims 1, 4, 12 and 16 have been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/24/2026, with respect to the rejections of claims 1-12 and claims 17-18 and claims 13-16 under 35 U.S.C. 112(b) as set forth in paragraphs 7-25 of the action mailed 4/8/2026, have been fully considered and are persuasive. The rejections claim 1-18 have been withdrawn except for the rejection of claim 16 as noted below.
Applicant’s arguments, see the claim amendments and the remarks filed 6/24/2026, with respect to the rejection of claim 19 under 35 U.S.C. 112(b) as set forth in paragraphs 26-29 of the action mailed 4/8/2026, have been fully considered and are persuasive. The rejection of claim 19 have been withdrawn except as noted below.
Applicant’s arguments, see the claim amendments filed 6/24/2026, with respect to the nonstatutory, double patenting rejection of claims 1-19 over claims 1-19 of copending Application No. 18/884544 as set forth in paragraph 39 of the action mailed 4/8/2026, have been fully considered and are persuasive. The rejection of claims 1-19 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 6/24/2026, with respect to the rejections of claims 1, 3-9 and 11-12 over Uchida et al. under 35 U.S.C. 103; claims 2 and 10 over Uchida et al. in view of Osterwinter et al. under 35 U.S.C. 103; and claims 13-18 over Uchida et al. under 35 U.S.C. 103 as set forth in paragraphs 34-36 of the action mailed 4/8/2026, have been fully considered and are persuasive. The rejections of claims 1-18 have been withdrawn.
Claim Objections
Claim 4 is objected to because of the following informalities: the claim should be amended to recite “…wherein the at least one hydrogenated polyvinylaromatic…” if that was what was intended. Appropriate correction is required.
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.
Claims 9 and 16 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.
Claim 9 recites the limitation "the tackifier resin" in line 2. There is insufficient antecedent basis for this limitation in the claim as a tackifier resin has not been previously introduced.
Claim 16 recites the limitation "the layers" in line 7. There is insufficient antecedent basis for this limitation in the claim as layers has not been previously introduced.
Regarding claim 16, it is unclear if the recited temporary carrier material of the single-layer structure is the same temporary carrier material recited in current claim 13, or if the recited temporary carrier material of the single-layer structure is in addition to the temporary carrier material recited in current claim 13.
Regarding claim 16, it is unclear if the recited temporary carrier material of the multi-layer structure is the same temporary carrier material recited in current claim 13, or if the recited temporary carrier material of the multi-layer structure is in addition to the temporary carrier material recited in current claim 13.
Regarding claim 16, it is unclear if the recited temporary carrier material of the multi-layer structure comprising the permanent carrier is the same temporary carrier material recited in current claim 13, or if the recited temporary carrier material of the multi-layer structure comprising the permanent carrier is in addition to the temporary carrier material recited in current claim 13.
Regarding claim 16, it is unclear what is intended by a “permanent carrier which is present either in a layer of the pressure-sensitive adhesive compound” as it suggests that the carrier is located within the PSA layer.
Regarding claim 16, it is unclear if the recited temporary carrier material of the multi-layer structure having at least one layer of the PSA compound and a permanent carrier is the same temporary carrier material recited in current claim 13, or if the recited temporary carrier material of the multi-layer structure having at least one layer of the PSA compound and a permanent carrier is in addition to the temporary carrier material recited in current claim 13.
Claim(s) 17 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 17, it is unclear what specifically is the same, or different.
Claim 17 recites the limitation "the two sides" in line 9. There is insufficient antecedent basis for this limitation in the claim as two sides have not been previously introduced.
Claim 18 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 18, it is unclear what specifically is the same, or different.
Claim 19 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 19, the claim comprises “at least one” self-adhesive product of current claim 13, and thus requires all the limitations contained with current claim 13; and therefore, requires all the limitations recited in current claim 1, to include items a)-e).
It is unclear if the recited PSA compound is the same PSA compound, and its respective limitations, recited in current claim 1, or if the recited PSA compound, and its respective limitations, is in addition to the PSA compound recited in current claim 1.
Claims 6-7 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 6, the elastomer component comprising not more than 45% by weight of the at least one hydrogenated diblock copolymer does not further limit the associated ranges recited in current claim 1.
Claim 19 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. 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 19, current claim 1 requires that the ethylene fraction in the B blocks is at least 50% by weight, whereas the same limitation in the current claim appears to be optional (i.e., may be at last 50 % by weight).
Regarding claim 19, current claim 1 requires that the tackifier resin component is present at 35 to 50% by weight, based on the PSA compound, and comprises 25 to 40% by weight, based on the total tackifier composition, of at least one rosin ester, none of which is required in the current claim.
Claim Rejections - 35 USC § 103
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida et al. (JP 2021188051 A), and in light of the evidence provided by Holguin et al. (US 6558790 B1). The Examiner notes that citations from the ‘051 reference were taken from a machine translation, which was included with the previous action.
Regarding claim 19, Uchida teaches a PSA tape (self-adhesive product) comprising a substrate and a PSA layer laminated thereon, Uchida also teaches that the PSA layer is formed on a release film (at least one ply of a temporary carrier material) and then transferred to the substrate (para 0040). Further, given that Uchida teaches the presently claimed PSA layer, to include identical components to those presently claimed, and in the presently claimed proportions, it is reasonable to conclude that the PSA layer would be redetachable by extensive stretching. Uchida also teaches that the PSA tape is applied to an adherend (adhesively bonded assembly) (para 0007).
The PSA layer comprises a tackifier resin and a base polymer comprising a hydrogenated block copolymer (elastomer component) comprising at least a styrene monomer block and a conjugated butadiene block (para 0008-0011) such as, inter alia, a styrene-ethylene-butylene-styrene (SEBS) block copolymer (para 0012). The disclosed (SEBS) block copolymer teaches a hydrogenated polyvinylaromatic-polydiene block copolymer having an ABA structure, wherein the styrene blocks provide A = polyvinylaromatic and wherein ethylene-butylene provides B = ethylene and butylene (fully hydrogenated polydiene block).
The styrene content of the (SEBS) block copolymer is 30% by weight or less, which overlaps that presently claimed (at least 18 % by weight), towards a balance of cohesive strength, hardness and high adhesion (para 0013). The molar ratio of the ethylene to the butylene in the (SEBS) block copolymer is 1.0 to 2 towards a balance of alkaline resistance, hardness and adhesion (para 0014). The molecular weight of ethylene is 28 g/mol and that of butylene is 56 g/mol. Thus, the molar ratio of 2 as disclosed in Uchida provides the ethylene in the SEBS block copolymer at 50 % weight based on the EB block, which overlaps that presently claimed.
Uchida also teaches that the block copolymer comprises a diblock copolymer (elastomer component) comprising the styrene monomer block and the conjugated butadiene block (at least one kind of a hydrogenated diblock copolymer, A’B’ structure, A’ = A and B’ = B) in an amount of 10 to 90 % by weight, which overlaps that presently claimed (36 to 70 % by weight), towards increased adhesiveness and maintaining cohesive strength (para 0016). Thus, Uchida provides the (SEBS) block copolymer in a converse amount of 10 to 90 % by weight, which overlaps that presently claimed (30 to 64 % by weight).
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 (SEBS) block copolymer and the diblock copolymer in the presently claimed proportions, and to provide said (SEBS) block copolymer with the presently claimed polyvinylaromatic and ethylene fraction towards the PSA of Uchida demonstrating a balance of increased adhesiveness, cohesive strength, hardness and alkaline resistance as in the present invention.
The Examiner notes that, while Uchida teaches that the molecular weight of the base polymer is provided in weight-average molecular weight (Mw) rather than the presently claimed peak molecular weight, Uchida does teach that the block copolymer has an Mw of 100,000 to 600,000 towards compatibility of the block copolymer with other components (para 0017). It is established in the art that the molecular weight of compounds is selected based on the balance of coatability, cohesion and tack required of the compounds contribution to the composition comprising the copolymer as evidenced via Holguin (see column 4, lines 20-24).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to select the presently claimed peak molecular weight of the (SEPS) block copolymer identical to that presently claimed, based on the balance of coatability, cohesion and tack required of the prior art’s intended application, and towards compatibility with the other PSA components, as in the present invention.
Uchida continues to teach that the PSA layer comprises 0-5 parts by weight or less of tackifiers (T2) and (T3) and 3 to 80 parts by weight of tackifier resin (T1) per 100 parts by weight of the base polymer towards a balance of a suppressed increase in adhesion and adhesive residue, removability, and resistance to alkaline solutions (para 0022, 0027). The Examiner notes that proportions of 100 parts by weight base polymer and 3 to 85 parts by weight for a combination of tackifiers (T1), (T2) and (T3) provides said base polymers in the PSA composition in a range of 54 to 97 % by weight, which overlaps the presently claimed proportions of the elastomer component a) (28 to 60% by weight). The PSA layer of Uchida may contain other additives such as, inter alia, plasticizers, but Uchida does not require them (para 0028).
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 (SEPS) and diblock copolymers in the presently claimed proportions for the recited elastomer component a) identical to that presently claimed towards a balance of a suppressed increase in adhesion and adhesive residue, removability, and resistance to alkaline solutions as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 6/24/2026, with respect to the rejection of claim 16 under 35 U.S.C. 112(b) as set forth in paragraphs 7 and 19 of the action mailed 4/8/2026, have been fully considered but they are not persuasive.
The amendments to the claim have not addressed the rejection, nor has the Applicant argued against the merits of the rejection. Thus, the rejection is maintained and repeated above.
Applicant’s arguments, see the claim amendments and the remarks filed 6/24/2026, with respect to the rejection of claim 19 under 35 U.S.C. 112(b) as set forth in paragraph(s) 26 of the action mailed 4/8/2026, have been fully considered but they are not persuasive.
The amendments to the claim have not addressed all the rejectionable material, nor has the Applicant argued against the merits of the same. Thus, the relevant rejection(s) is maintained and repeated above.
Applicant’s arguments, see the claim amendments and the remarks filed 6/24/2026, with respect to the rejection of claim 6 under 35 U.S.C. 112(d) as set forth in paragraph 31 of the action mailed 4/8/2026, have been fully considered but they are not persuasive.
The amendments to the claim have not addressed the rejection, nor has the Applicant argued against the merits of the rejection. Thus, the rejection is maintained and repeated above.
Allowable Subject Matter
Claim 1-7 and 9-12 and claim 13-18 are allowable over the prior art allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art reference is:
JP 2021188051 A to Uchida et al. teaches the PSA layer as in the rejection of current claim 19 set forth above, which teaches or renders obvious all the limitations of at least current claim 1 except that the disclosed tackifier resin comprises the rosin ester resin (T3) in an amount of at most 5 parts by weight, which is well below the presently claimed proportions of 25 to 40 % by weight of the presently recited at least rosin ester tackifier.
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 17 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 8/16/2026
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