DETAILED ACTION
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 and 13-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,179,472.
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a product explicitly claimed to have, inherently possessing, or rendering obvious due to overlapping numerical ranges (see MPEP 2144.05) every feature of instant claims 1-11 and 13-17.
Claims 1-9 and 12-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-9, and 21 of copending Application No. 17/770,375.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a product explicitly claimed to have, inherently possessing, or rendering obvious due to overlapping numerical ranges (see MPEP 2144.05) every feature of instant claims 1-9 and 12-19.
This is a provisional nonstatutory double patenting rejection.
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.
Claims 1-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor or a joint inventor regards as the invention.
Claims 1-3 are indefinite because each recites a “clarity” percentage. Although the instant disclosure states that haze, luminous transmission, and clarity are measured according to ASTM D1003-00 (Applicant’s published application, par. 14), the word “clarity” does not appear in the description of the test (ASTM, “Designation: D 1003-00 Standard Test Method for Haze and Luminous Transmittance of Transparent Plastics” 2000, p. 1-6). As such, the meaning of “clarity” in the context of the instant claims and how the value is measured is not clear. For the sake of compact prosecution, any measure of “clarity” is considered herein to be applicable to the claims. Appropriate correction and/or explanation are required.
Claim 8 is indefinite because it recites “wherein the open areas of the…reinforcing grid comprise at least 70% of the grid”. The meaning of this limitation is unclear because the claim does not specify by what measure the 70 % is determined. As such, it is not clear if “at least 70 % of the grid” refers to 70 % of the planar area of the whole layer that comprises the grid, 70 % by volume (i.e. the “grid” has 70 % porosity), or something else. For the sake of compact prosecution, any measure of “open areas” is considered herein to be applicable to the claim. Appropriate explanation and/or correction are required.
Claims 2-19 are also rejected under 35 U.S.C. 112(b) because they depend from 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.
Claims 1-3, 6-10, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sheely (US PG Pub. No. 2003/0114056) and, optionally, in view of Determan (US PG Pub. No. 2009/0229732) and/or Borchardt (US PG Pub. No. 2013/0115396).
Regarding claims 1-3, 6, and 13-16, Sheely teaches a reinforced tape (i.e. “reinforced substrate”) comprising a transparent backing layer (12) having opposite first and second major surfaces, a reinforcing material (18) secured and adjacent to the first major surface of the backing (12) and comprising opposite first and second planar surfaces, and a pressure-sensitive adhesive layer covering the reinforcing material and on and coextensive with the first major surface of the backing (i.e. the reinforcing layer is secured to the first major surface of the backing with the adhesive overlying the reinforcement material and is between the first major surface of the backing and the adhesive) (Abstract; par. 1, 22-24; Fig. 2). As shown in Figure 1 and discussed by Sheely, the reinforcing material comprises a grid defining many open areas, with first fibers extending in a first direction and second fibers extending perpendicular to the first direction (i.e. the first direction is tilted 90 degrees relative to the second direction) (Fig. 1; par. 23, 29).
The teachings of Sheely might be considered to differ from the current invention in that he does not explicitly teach that the reinforcing material is less extensible than the backing. However, Sheely does teach that fiber reinforcements in tapes, such as what he employs, restrict manual tearing of such tapes and that adhesive tapes that do not include such reinforcements do not have the strength of reinforced tapes and/or are prone to stretching (par. 2, 4). As such, the reinforcement material in such tapes, including in Sheely’s, is less extensible than the backing. Additionally, it would have been obvious to one of ordinary skill in the art to select a reinforcement material that is less extensible than the backing in Sheely’s tape in order to provide support in the selected extension direction, including by preventing stretching or tearing in that direction, as Sheely makes clear is a benefit of such reinforcements.
The teachings of Sheely differ from the current invention in that he does not discuss the optical properties of his product in the recited terms. However, Sheely does teach that backing and adhesive layers of the tape are transparent, and that the reinforcement material is intended to become significantly less visible when the tape is adhered to a substrate (par. 6, 7). As such, it would have been obvious to one of ordinary skill in the art to configure Sheely’s tape to be as transparent as possible when it is adhered to a substrate, including such that it has as high of a luminous transmission and clarity as possible and as low of a haze as possible, including having each of a luminous transmission, haze, and clarity in the recited ranges because Sheely teaches that the material is intended to be transparent.
Determan further teaches that when an adhesive article is used on surface such as an optical display, it is desirable for the adhesive article to be sufficiently optically clear, including having a visible light transmittance in the wavelength range of 400 to 700 nm of at least 91 % and a haze of no greater than 5 %, so it does not interfere with visibility or use of the underlying device (par. 42, 57). Conversely, if light diffusing properties are desirable, Determan teaches to make such adhesive articles so that they have a visible light transmission of at least 85 % and a haze of at least about 50 % (par. 42). Determan further teaches that visible clarity is not always synonymous with optical clarity, that steps can be taken to create adhesive articles that are optically clear, and that such steps can be omitted or altered if optical clarity is not a concern (par. 42, 62, 66, 67). Borchardt also teaches that clarity is a measure of narrow light scattering that can be used to quantify the ability to resolve detail through a film and that greater clarity is an advantage (par. 11, 45). Several materials Borchardt teaches are appropriate for various consumer products have light transmissions of above 93 %, hazes in the range of about 32 to 44 %, and clarities in the range of about 52 to 63 % (Table III, par. 99). Accordingly, it would have been obvious to one of ordinary skill in the art to configure Sheely’s tape to have a visible light transmittance of at least 91 % and a haze of no greater than 5 %, because Sheely teaches making the product transparent and Determan teaches that such values allow an “optically clear” product to not interfere with the visibility of underlying products onto which they are adjoined. Alternatively, it also would have been obvious to one of ordinary skill in the art to configure Sheely’s product to have a light transmittance of at least 85 % and a haze of about 50 % or a haze in the range of about 32 to 44 %, in order to achieve some light diffusion characteristics, if so desired for a particular appearance or application, and/or to configure the material to have a haze that Borchardt finds acceptable for various consumer products. It further would have been obvious to one of ordinary skill in the art to make the product to have as high of a clarity as possible and/or to have a clarity in the range of about 52 to 63 %, in order to reduce the narrow light scattering of the material as possible, thereby improving the ability to resolve images through the material, and because Borchardt teaches that greater clarities are advantageous, with clarities in the taught range being appropriate for various consumer products. The instantly claimed light transmission, haze, and clarity values are anticipated or rendered obvious due to overlapping or sufficiently numerically close ranges by the cited prior art. See MPEP 2144.05.
Regarding claims 7-10, the teachings of Sheely differ from the current invention in that the percentage of open areas and thickness of the reinforcing material are not disclosed. However, Sheely does teach that the reinforcement may be a CLAF fabric made up of a cross-laminated grid of fused-together (i.e. “structurally connected together, independent from the backing”) polyolefin fibers and having a basis weight of 23.1 g/m2 (par. 33). The instant disclosure teaches that the reinforcement material for the instantly claimed and disclosed product should have a thickness of 100 to 300 µm and a basis weight of 15 to 50 g/m2, and that CLAF fabric, which comprises a cross-laminated open mesh of polyolefin fibers, is suitable reinforcement material for the instantly claimed and disclosed product (Applicant’s published application, par. 28, and 31). As Sheely’s reinforcement is a CLAF fabric described to have a substantially similar structure to that of the instant disclosure and to have a basis weight within the recited range, i.e. which directly relates to the number of fibers present and the amount of “open areas” present, Sheely’s reinforcement is expected to have a basis weight, percentage of “open areas”, and thickness commensurate with the claims.
Additionally, Sheely teaches that a larger number of fiber bundles forming a reinforcement, and therefore contributing to the percentage of “open areas” and thickness of the material, provide greater strength (par. 23). Therefore, it would have been obvious to one of ordinary skill in the art to select an appropriate number of fibers or fiber bundles to form the reinforcement in Sheely’s product, including selecting a number of fibers or bundles that achieves an open area of 70 % of the grid of the material and a thickness in the range of 100 to 300 µm, according to the strength that is required/desired for the product and its intended application. Furthermore, as no criticality has been established, the recited thickness is a prima facie obvious selection of dimension that does not distinguish the claimed invention over the prior art. See MPEP 2144.04.
Regarding claim 12, as discussed above, Sheely teaches using a scrim comprising fused-together polyethylene (i.e. a polyolefin, which is a thermoplastic) fibers as the reinforcement material in his tape. Sheely also teaches various other thermoplastics (e.g. polypropylene, nylon, polyester, etc.) that can be used as the fiber component of his reinforcement material (par. 10). Therefore, Sheely teaches reinforcing materials that are thermoformable.
Regarding claims 17 and 18, the teachings of Sheely differ from the current invention in that he does not teach a transparent polyurethane backing on his product. However, Sheely does teach that the backing should be a visually transparent polymer (par. 6). Determan further discloses that polyurethane is a useful backing material for an optically clear adhesive article (par. 22). Accordingly, it would have been obvious to one of ordinary skill in the art to use a transparent polyurethane backing as the backing on Sheely’s product because Determan teaches that it is useful in optically clear adhesive articles. As discussed above, Sheely teaches that the reinforcing material may be a non-woven, polyolefin open-mesh.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sheely and, optionally, Determan and/or Borchardt, as applied above, and further in view of Ibayashi (US PG Pub. No. 2016/0361902).
Regarding claim 11, the teachings of the cited prior art differ from the current invention in that none discloses the tensile strength of a reinforcement material used in the reinforced substrate discussed above. However, Sheely does teach that the reinforcement material can have a fiber mesh structure and can include polyolefin filament materials, such as tapes including polyethylene or polypropylene (par. 10, 30). Ibayashi further teaches a polyolefin fiber mesh material that can include polyethylene or polypropylene, and that has a basis weight of 5 to 70 g/m2, which is consistent with what Sheely exemplifies (discussed above), and a tensile strength of 20 to 600 N/50 mm (par. 11, 12, 15, 39). Ibayashi’s fiber material is beneficial because it has excellent adhesive force between its layers of fibers, excellent low-temperature sealability, and high strength, and is suitably useful as a reinforcement material in various applications, including as a reinforcement for films and adhesive tapes (Abstract; par. 3, 88, 89). Therefore, it would have been obvious to one of ordinary skill in the art to include Ibayashi’s polyolefin fiber mesh material, which has a tensile strength of 20 to 600 N/50 mm, as the reinforcement in Sheely’s tape because it demonstrates excellent strength, sealability, and suitability for use as a reinforcement material in films and adhesive tapes. The instantly claimed tensile strength range is encompassed and rendered obvious by Ibayashi. See MPEP 2144.05.
Claims 1-3, 4-6, 9, 11-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Heinecke (US Pat. No. 6,685,682) in view of Ulsh (US PG Pub. No. 2009/0155565) and Determan and/or Borchardt.
Regarding claims 1-3, 13-17, and 19, Heinecke teaches a substrate comprising a backing, which is preferably transparent or translucent polyurethane, having opposite first and second major surfaces, a pressure-sensitive adhesive coextensive with the first major surface of the backing, and a release liner disposed on the adhesive (Abstract; col. 56, ln. 4-6; col. 7, ln. 35-41).
The teachings of Heinecke differ from the current invention in that the disclosed substrate is not taught to be reinforced with a reinforcement material positioned as claimed and having less extensibility than the backing. However, Heinecke does teach that the backing is preferably elastomeric (col. 5, ln. 4-6). Ulsh further teaches that reinforced tapes exhibit strength and other innumerable benefits (par. 2). Ulsh also teaches a stretchable tape that includes an extensible backing layer, a reinforcing material, which may be a scrim of polyester or polyethylene (i.e. a polyolefin) fibers arranged in a rectangular pattern (i.e. the scrim is an open-mesh grid that defines many open areas), that is less extensible than the backing layer on a major surface of the backing, and an adhesive covering the reinforcement material and backing layers (par. 10, 25-27, 29). Ulsh discloses that such a combination of materials, particularly including the recited combination of backing and reinforcement, allows the scrim to provide the desired strength and reinforcement to the tape while still allowing the tape to stretch and be conformable (par. 24, 27). Accordingly, it would have been obvious to one of ordinary skill in the art to include a reinforcement material layer that is less extensible than the backing and is made up of a rectangular scrim of polyester or polyethylene fibers between the backing and adhesive of Heinecke’s tape (i.e. wherein the backing, reinforcement, and adhesive layers are positioned as claimed and reinforcement material is secured to the backing) in order to provide the tape with enhanced strength and reinforcement while still allowing it to be stretchable and conformable.
The teachings of the cited prior art also differ from the current invention in that the light transmittance, haze, and clarity of the product are not disclosed. However, as noted above, Heinicke does teach that the backing is preferably transparent or translucent (col. 7, ln. 37-41). Determan, who teaches adhesive articles for use in a variety of applications including medical uses, further teaches that it can be desirable for an adhesive article to be sufficiently optically clear, including having a visible light transmittance in the wavelength range of 400 to 700 nm of at least 91 % and a haze of no greater than 5 %, so it does not interfere with visibility of the underlying object (par. 12, 42, 57). Conversely, if light diffusing properties are desirable, Determan teaches to make such articles so that have a visible light transmission of at least 85 % and a haze of at least about 50 % (par. 42). Determan further teaches that visible clarity is not always synonymous with optical clarity and that steps can be taken to create adhesive articles that are optically clear and that such steps can be omitted or altered if optical clarity is not a concern (par. 42, 62, 66, 67). Borchardt also teaches that clarity is a measure of narrow light scattering and can be used to quantify the ability to resolve detail through a film, and that greater clarity is an advantage (par. 11, 45). Several materials Borchardt teaches are appropriate for various consumer products have light transmissions of above 93 %, hazes in the range of about 32 to 44 %, and clarities in the range of about 52 to 63 % (Table III, par. 99). Accordingly, it would have been obvious to one of ordinary skill in the art to configure Heinecke and Ulsh’s reinforced substrate to have a visible light transmittance of at least 91 % and a haze of no greater than 5 %, because Heinecke teaches using transparent backings, thereby making clear that visibility is a concern, and Determan teaches that such values allow an “optically clear” product to not interfere with the visibility of surfaces onto which they are adjoined. Alternatively, it also would have been obvious to one of ordinary skill in the art to configure Heinecke and Ulsh’s product to have a light transmittance of at least 85 % and a haze of about 50 % or a haze in the range of about 32 to 44 %, in order to achieve some light diffusion characteristics, because Heinecke teaches that the backing may be translucent, and/or to configure the material to have a haze that Borchardt finds acceptable for various consumer products. It further would have been obvious to one of ordinary skill in the art to make the product to have as high of a clarity as possible and/or to have a clarity in the range of about 52 to 63 %, in order to reduce the narrow light scattering of the material as possible, thereby improving the ability to resolve images through the material, and because Borchardt teaches that greater clarities are advantageous, with clarities in the taught range being appropriate for various consumer products. The instantly claimed light transmission, haze, and clarity values are anticipated or rendered obvious due to overlapping or sufficiently numerically close ranges by the cited prior art. See MPEP 2144.05.
Regarding claims 4 and 5, Heinecke’s product preferably has a moisture vapor transmission rate (“MVTR”) of at least 700 g/m2 /24hrs /37°C/100-10% RH using the inverted cup method (col. 4, ln. 50-58).
Regarding claim 6, as discussed above, the scrim in the product of Heinecke and Ulsh includes a scrim with fibers in a rectangular pattern. Therefore, the grid of the scrim includes first fibers extending in a first direction, second fibers extending in a second direction, wherein the first direction tilted 90 degrees relative to the second direction.
Regarding claim 9, the teachings of the cited prior art differ from the current invention in that none teaches a thickness of the reinforcement layer of the disclosed tape. However, as no criticality has been established, the recited thickness is a prima facie obvious selection of dimension that does not distinguish the claimed invention over the prior art. See MPEP 2144.04. Additionally, it would have been obvious to one of ordinary skill in the art to select an appropriate thickness for the reinforcement material, including selecting a thickness in the range of 100 to 300 µm, according to the properties that are required/desired of the material, as would be understood by one of ordinary skill in the relevant art.
Regarding claim 11, the teachings of Heinecke and Ulsh differ from the current invention in that the tensile strength of the reinforcement material in their product is not disclosed. However, Ulsh does teach that tensile strength is a measure of the energy required to break a material, and is a characteristic of the material’s toughness (par. 14). Therefore, it would have been obvious to one of ordinary skill in the art to select an appropriate tensile strength for the reinforcement material in the product of Heinecke and Ulsh et al., including selecting a tensile strength in the range of 15 to 50 g/m2, according to the toughness that is required/desired of the reinforcement and the tape, as a whole.
Regarding claim 12, as noted above, the reinforcement material of Heinecke and Ulsh may be made of polyester or polyethylene fibers, which are both thermoplastics and, therefore, thermoformable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785
Prosecution Insights