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.
Claim Rejections - 35 USC § 102 / 103
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.
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, 2, 4, 7-9, 11, 14, 15, and 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kaji (JP 2021-001281).
Kaji is directed to a corrosion-preventive adhesive tape comprising a substrate and an adhesive layer (paragraph 0009).
In the embodiment of Example 10, the substrate is a polyethylene terephthalate film having a thickness of 50 mm and the adhesive layer is 600 mm thick and formed of an acrylic adhesive having a storage modulus of 250,000 Pa at 23 oC that contains zinc and graphite particles (Table 1). The adhesive tape is adhered to a steel plate (paragraph 0049).
While Kaji does not report the difference in tensile load at 2.5% and 0.5% elongation or the tear strength of their substrate, paragraphs 0011 and 0012 on pages 5-7 of the applicant's specification states that the difference in tensile load and tear strength of the base material is a function of the material used and its thickness. Polyethylene terephthalate is cited as a preferred material (e.g., see paragraph 0013 on page 7) and the range of 40 to 140 mm is cited as a preferred thickness (e.g., see paragraph 0018 on page 9). Since the substrate in Example 10 is a polyethylene terephthalate film having a thickness of 50 mm, one of ordinary skill in the art would expect it to inherently possess a difference in tensile load at 2.5% and 0.5% elongation and a tear strength that satisfies the limitations of claim 1, particularly since Example 8 of the specification also employs a polyethylene terephthalate film having a thickness of 50 mm.
Claim Rejections - 35 USC § 103
Claims 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kaji (JP 2021-001281).
Kaji teaches all the limitations of claim 10, as outlined above, except for an embodiment employing carbon nanotubes.
The adhesive in the embodiment of Example 10 contains graphite powder as a carbon-based material (paragraph 0053). Kaji teaches the functional equivalence of graphite and carbon nanotubes as conductive material other than the sacrificial corrosion-protective metal (i.e., zinc particles in Example 10) added to the adhesive layer (paragraph 0031).
Since Kaji teaches that graphite and carbon nanotubes are functionally equivalent structure conductive materials, one of ordinary skill in the art would have found it obvious to substitute carbon nanotubes for graphite.
Kaji teaches all the limitation of claim 18, as outlined above, except for specifying the size of the attachment area.
While there is no explicit teaching to attach the tape to a metal surface of 2000 cm2 or more, Kaji does teach that the corrosion-preventive tape is capable of easily repairing damaged areas of steel structures, such as bridges, towers, viaducts, tanks, plants, and bridge piers (paragraph 0044). Since one of ordinary skill in the art would immediately recognize that structures such as bridges, towers, viaducts, tanks, plants, and bridge piers routinely have surface areas well in excess of 2000 cm2, it would have been obvious to attach the corrosion-preventive tape to an area of at least 2000 cm2 to provide corrosion protection to such structures.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kaji (JP 2021-001281) in view of Fagerburg et al. (US 5,480,926).
Kaji teaches all the limitations of claim 3, as outlined above, except for specifying the gloss retention of the tape after the accelerated weather resistance test recited in the claim. However, according to paragraph 0016 on page 8 of the specification, the gloss retention after subjected to the recited accelerated weather resistance test is a function of the resin constituting the base material and may be enhanced by blending an ultraviolet absorber into the base material.
According to Fagerburg, it is well known in the art that polyesters are generally not very stable to the effects of UV radiation, resulting in hazing, property loss, and yellowing when exposed to sunlight (column 1, lines 13-20). Fagerburg further teaches that it is well known in the art to retard the loss of properties by the addition of a UV absorbing compound, allowing for the retention of properties for a longer time (column 1, lines 21-36).
It would have been obvious to one of ordinary skill in the art to add an amount of UV absorbing compound sufficient to retard the loss of properties to the polyethylene terephthalate substrate of Kaji employed in Example 10, since the resulting corrosion-preventive adhesive tape is designed to be used on outdoor objects, such as bridges, towers, and bridge piers (paragraph 0044).
Table 1 on page 37 of the specification shows that a polyethylene terephthalate film having a thickness of 50 mm exhibits a gloss reduction of 70%. One of ordinary skill in the art would expect the subsequent addition of enough UV absorbing compound to retard the onset of property loss to result in a gloss reduction that would satisfy the limitations of claim 3.
Claims 5, 6, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kaji (JP 2021-001281) in view of Hasegawa (JP H09-242982A).
Kaji teaches all the limitations of claims 5, 12, and 13, as outlined above, except for the presence of a zinc layer between the substrate and the adhesive layer.
Hasegawa is directed to corrosion-preventive member comprising, in order: a zinc plate between an adhesive layer containing zinc powder and a resin film (paragraph 0007). The zinc plate creates a passivation zone in a similar but more reliable manner to the adhesive layer (paragraph 0011).
It would have been obvious to one of ordinary skill in the art to add a zinc layer between the adhesive and substrate of Kaji to improve the reliability of the corrosion-preventive adhesive tape.
Regarding claim 5 (and 6 which depends from 5), the combination of the polyethylene terephthalate substrate and zinc layer reads on a resin film (i.e., the polyethylene terephthalate) having a coating (i.e., the zinc) on its surface.
Claims 16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kaji (JP 2021-001281) in view of Wang (CN 205291777).
Kaji teaches all the limitations of claims 16 and 19, as outlined above, except for the presence of a detachable surface protection film on the substrate opposite the adhesive layer.
Wang is directed to a composite board providing good corrosion and rust resistance (paragraphs 0008-0013). Release paper protective films are applied to both surfaces to prevent the plate from being scratched during transportation (paragraph 0013).
It would have been obvious to one of ordinary skill in the art to apply a removable protective film to the surface of the substrate opposite the adhesive layer in the tape of Kaji to prevent the surface from being scratched prior to its application.
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 1-3, 5, 7-14, 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 8, 10-12, and 15-18 of copending Application No. 18/280,326 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claims, such as claims 4 and 7, with the independent claim to yield an adhesive tape exhibiting the benefits conveyed by the limitations of the dependent claims.
Additionally, regarding claim 17, since the adhesive tape recited in the claims of copending Application No. 18/280,326 is an anticorrosive tape, it would have been obvious to attach the tape to a metal surface to provide the metal surface with corrosion resistance since metals are known to be susceptible to corrosion.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4, 6, 15, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 8, 10-12, and 15-18 of copending Application No. 18/280,326 in view of Kaji (JP 2021-001281).
Claims 1-4, 7, 8, 10-12, and 15-18 of copending Application No. 18/280,326 recite all the limitations of claims 4, 6, 15, and 18, as outlined above, except for: the material and thickness of the base layer, the storage elastic modulus of the adhesive layer, and the attachment area.
Kaji is directed to a corrosion-preventive adhesive tape comprising a substrate and an adhesive layer (paragraph 0009). In the embodiment of Example 10, the substrate is a polyethylene terephthalate film having a thickness of 50 mm and the adhesive layer is 600 mm thick and formed of an acrylic adhesive having a storage modulus of 250,000 Pa at 23 oC (Table 1). Kaji further teaches that corrosion-preventive tape may be used to repair damaged areas of steel structures, such as bridges, towers, viaducts, tanks, plants, and bridge piers (paragraph 0044).
Regarding claims 4, 6, and 15, it would have been obvious to one of ordinary skill in the art to use a polyethylene terephthalate film having a thickness of 50 mm as the base film and an adhesive having a storage modulus of 250,000 Pa at 23 oC since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07.
Regarding claim 18, it would have been obvious to use the anticorrosive tape recited in the claims of copending Application No. 18/280,326 to repair damaged areas of steel structures, such as bridges, towers, viaducts, tanks, plants, and bridge piers since Kaji teaches this as a suitable use for corrosion-preventive tapes. Since one of ordinary skill in the art would immediately recognize that structures such as bridges, towers, viaducts, tanks, plants, and bridge piers routinely have surface areas well in excess of 2000 cm2, it would have been obvious to attach the corrosion-preventive tape to an area of at least 2000 cm2 to provide corrosion protection to such structures.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4, 7, 8, 10-12, and 15-18 of copending Application No. 18/280,326 in view of Wang (CN 205291777).
Claims 1-4, 7, 8, 10-12, and 15-18 of copending Application No. 18/280,326 recite all the limitations of claims 16 and 19, as outlined above, except for the presence of a detachable surface protection film on the substrate opposite the adhesive layer.
Wang is directed to a composite board providing good corrosion and rust resistance (paragraphs 0008-0013). Release paper protective films are applied to both surfaces to prevent the plate from being scratched during transportation (paragraph 0013).
It would have been obvious to one of ordinary skill in the art to apply a removable protective film to the surface of the substrate opposite the adhesive layer in the tape recited in the claims of copending Application No. 18/280,326 to prevent the surface from being scratched prior to its application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday mornings, Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787
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