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 .
Claim Objections
Claims 9 and 17 are objected to because of the following informalities:
Regarding claim 9, the limitation “PET” should be corrected to polyethylene terephthalate (PET).
Regarding claim 17, the limitation “a rough substate” should be corrected to “the rough substrate”
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 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.
Regarding claim 1, it is unclear what is considered as rough substrate as “rough” is a relative term which renders the claim indefinite. The term “rough” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In addition, it is also unclear which element or characteristic of the substrate is associated with “rough”. The limitations of “a continuous flood coat” also renders the claim indefinite as it is unclear what substrate, coating material or actual process being associated to this “a continuous flood coat”. Thus, the limitation merely compares the adhesion on the rough substrate with a random process called “continuous flood coat” with an unspecific coating material and an unspecific substrate. For purpose of examination, any substrate with any degree of roughness on the surface is considered to read on the claimed limitation. However, Applicant should clarify what is intended, without adding new matter. The phase “substantially simultaneously” renders the claim indefinitely as it is unclear in what degree of “simultaneously” is considered as “substantially simultaneously”. For purpose of examination, the limitation is interpreted as “simultaneously”. However, Applicant should clarify what is intended, without adding new matter. The phase “substantially uniform” renders the claimed indefinitely as in it unclear in what degree of uniformity is considered to read on the claimed limitations. In addition, the conventional definition of “uniform coating” is a consistent layer of coating material across a surface without thickness variation, which contradicts with the limitations “applying an adhesive…to at least a portion of the first side of the liner but less than an entirety of the first side of the liner”. For purpose of examination, any level of uniformity is considered to read on the claimed limitation of “substantially uniform”. However, Applicant should clarify what is intended, without adding new matter. Particularly, Applicant is suggested to include the definition of “substantially uniform” in the claim if it has a specific definition different from the conventional meaning.
Claim 12 recites the limitation "the first direction". There is insufficient antecedent basis for this limitation in the claim. For purpose of examination, the limitation is considered as “a first direction”. However, Applicant should clarify what is intended, without adding new matter.
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 1-8, 10-15, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Seitz (US20070166501) in view of Bartholomew (US20210238451).
Claim interpretation the claims (specifically claim 1 and 17): it is noted that the claim limitations “whereby contact of the pattern of adhesive with a rough substate leads to enhanced adhesion…” is a property or characteristic of the pattern of adhesive. Thus, the claim does not actually require the actual step or action of contacting the pattern on adhesive with a rough substate.
Regarding claim 1, Seitz teaches a method for forming a pattern of a pressure sensitive adhesive (PSA) layer by coating the PSA onto a structured release surface of a paper (paragraphs 0017 and 0001) (a method for patterning an adhesive layer). Seitz teaches the to provide a paper liner (paragraph 0010) with a structured release surface 16 (first side), a backside 18 (a second side) and first edge and second edge (paragraphs 0017 and 0029, figure 1). Seitz teaches the contact the first side of the liner with embossing rollers (deforming member) to form the embossed pattern by pressure on the first side of the liner (paragraphs 0018, 0039-0041, figures 2a-2b and 3) (contacting the first side of the liner with a deforming member to deform the liner at least temporarily through contact with the deforming member). Seitz teaches to apply the PSA by coating on the first surface of the liner such that the adhesive conform to the pattern in the paper (simultaneously when the liner is at least temporarily deformed applying an adhesive to at least a portion of the first side of the liner), wherein the adhesive coating is continuous with the adhesive features protruding from the plane of a continuous layer of adhesive or the adhesive may be coated discontinuously so that the adhesive features from discreet islands that are separated from each other (less than an entirety of the firs side of the liner) (paragraphs 0017, 0043). As discussed above in the 112 rejections, any level of uniformity is considered to read on the limitations of uniformity, thus, Seitz’s continuous or discontinuous adhesive (pargraph 0050) reads on the claimed limitations, especially the adhesive layers as shown in figures 3 and 5 have a level of uniformity. Regarding the limitations of “whereby contact of the pattern adhesive with a rough substate leads to enhanced adhesion on the rough substrate…”, Seitz further teaches the adhesive applied on a rough surface (rough substrate) (paragraph 0053) and discloses the microstructure on the adhesive surface enable increased amount of adhesive in contact with the substate (paragraph 0054-0055), which would reasonably expected to have enhanced adhesion compared to the adhesive surface without the microstructure, including adhesive being applied by a continuous flood coat on the substrate. Since Seitz teaches the same method and materials (contacting a rough substrate with patterned surface of PSA formed on an embossed paper liner) and the claimed continuous flood coat is not specified (which includes any level of adhesion), Seitz intricially teaches the contact of the pattern of adhesive with the rough surface leads to enhanced adhesion on the rough surface with less adhesive than at least some of the unspecific continuous flood coat.
Nevertheless, Bartholomew teaches a method of making adhesive laminate by applying first applying adhesive on a liner material and then to a face material (paragraph 0004 and 0006), wherein the adhesive has a discontinuous pattern (paragraphs 0040, 0066, 0072 and 0077). Bartholomew teaches the patterned adhesive layer is applied to a rough surface have an advantage over uniform adhesive coating (a continuous flood coat) when adhered to the same rough surfaces (paragraph 0100) because the patterned adhesive has a much higher local thickness in certain aera, which allow the adhesive to adapt to roughness and improve the adhesive over that of the uniformly coated sample (paragraphs 0100 to 0101), and pattern coverage and thickness is tailored for a specific surface roughness for desired adhesiveness (paragraph 0101). Bartholomew teaches the patterning of the adhesive reduces the amount of the adhesive used (pargraph 0004). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the pattern coverage and thickness of the coating layer based on the roughness of the rough substrate in the process to yield the desired amount of adhesive being used for desired level of enhanced adhesion compared to the continuous flood coat. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 2, Seitz teaches the adhesive is applied in a discontinuous manner (paragraphs 0017, 0043).
Regarding claim 3, Seitz teaches the adhesive is applied in a continuous manner (paragraphs 0017, 0043).
Regarding claim 4, Seitz teaches to liner is paper derived liner with a moisture content (paragraphs 0011 and 0039).
Regarding claim 5, Seitz teaches to adjust the moisture content of the liner before contacting (paragraph 0044).
Regarding claim 6, Seitz teaches to add moisture to the liner (paragraph 0044).
Regarding claim 7, Seitz teaches the humidity of the paper governs the amount of the embossing pattern (paragraph 0044). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the humidity of the paper (including removing moisture to the liner before the contacting) in the process to yield the desired amount of the embossing pattern. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 8, Seitz teaches to heat the liner to 100 to 110ºC or above after applying the PSA (paragraph 0020), which would adjust the moisture content of the liner
(paragraph 0011).
Regarding claim 10, Seitz teaches the liner is siliconized (paragraph 0012).
Regarding claim 11, Seitz teaches to laminate the liner with an article material (facestock material) (pargraph 0019).
Regarding claim 12, Seitz teaches the applied adhesive has a adhesive features protruding of a continuous layer of adhesive of the adhesive features form discrete islands that are separated from each other (paragraph 0050), both of the these features reads on the limitation of applied adhesive has a peak height in the first direction. Seitz does not explicitly teach the peak height to width ratio. However, Bartholomew teaches the adhesive pattern comprising adhesive features with the width to the height of less than 50, which is over 0.02 of height with width ratio (paragraphs 0038-0041), and overlap with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Bartholomew teaches the patterned adhesive layer is applied to a rough surface have an advantage over uniform adhesive coating (a continuous flood coat) when adhered to the same rough surfaces (paragraph 0100) because the patterned adhesive has a much higher local thickness in certain aera, which allow the adhesive to adapt to roughness and improve the adhesive over that of the uniformly coated sample (paragraphs 0100 to 0101), and pattern coverage and thickness is tailored for a specific surface roughness for desired adhesiveness (paragraph 0101). Bartholomew teaches the patterning of the adhesive reduces the amount of the adhesive used (pargraph 0004). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the local thickness in that area (the ratio of height to weight of the peak) in the process to yield the for desired level of adhesiveness on the specific rough surface . Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 13, Bartholomew teaches the height is about 5 to 250µm (paragraph 0037), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 14, Bartholomew teaches the width overlaps with the claimed range (paragraphs 0037-0041). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 15, Bartholomew teaches the coverage of the adhesive is 40 to 65% (paragraph 0090), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 17, Bartholomew teaches the patterned adhesive layer is applied to a rough surface have an advantage over uniform adhesive coating (a continuous flood coat) when adhered to the same rough surfaces (paragraph 0100) because the patterned adhesive has a much higher local thickness in certain aera, which allow the adhesive to adapt to roughness and improve the adhesive over that of the uniformly coated sample (paragraphs 0100 to 0101), and pattern coverage and thickness is tailored for a specific surface roughness for desired adhesiveness (paragraph 0101). Bartholomew teaches the patterning of the adhesive reduces the amount of the adhesive used (pargraph 0004). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the pattern coverage and thickness of the coating layer based on the roughness of the rough substrate in the process to yield the desired level of enhanced adhesion compared to the continuous flood coat. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 20, Seitz teaches the embossing pressure governs the amount of the embossing pattern that will be imparted to the paper (pargraph 0044).
Claims 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Seitz (US20070166501) in view of Bartholomew (US20210238451) as applied to claims 1-8, 10-15, 17 and 20 above, and further in view of Onderisin (US20080299346).
Regarding claim 9, Seitz in view of Bartholomew teaches all limitations of this claim, except the liner is PET. However, Onderisin teaches a method of making an adhesive article (paragraph 0001) and discloses paper and liner coated with PET (polyethylene terephthalate) are functionally equivalent liners for forming the adhesive articles (pargraph 0052). Therefore, it would have been obvious to one of ordinary skill in the art to substitute liner coated with PET for paper as liner in the method of making adhesive article as disclosed by Seitz in view of Bartholomew.
Regarding claim 16, Seitz teaches the adhesive is pressure sensitive adhesive. Thus, Seitz in view of Bartholomew teaches all limitations of this claim, except the weight of the adhesive being applied. However, Onderisin teaches the adhesive has a coat weigh of 10 to 50gsm (paragraph 0050), which overlap with the claimed range.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use such coat weight as suggested by Onderisin in method of Seitz in view of Bartholomew because Onderisin teaches such coat weight is suitable for forming the similar adhesive article (paragraph 0050).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Seitz (US20070166501) in view of Bartholomew (US20210238451) as applied to claims 1-8, 10-15, 17 and 20 above, and further in view of Okubo (WO-2021085610).
Regarding claim 18, Seitz teaches the deforming member is embossing roller (paragraphs 0018, 0039-0041). Thus, Seitz in view of Bartholomew teaches all limitations of this claim, except the roller having patterned surface etching. However, Okubo teaches a method of forming a contact area with the adhesive layer (abstract) and discloses the embossing roller for forming the pattern have a patterned surface etching (paragraph 0020). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the embossing roller with the patterned surface etching as suggested by Okubo in the method of Seitz in view of Bartholomew because Okubo teaches such etching is capable of providing the pattern for the embossing roller (pargraph 0020).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Seitz (US20070166501) in view of Bartholomew (US20210238451) as applied to claims 1-8, 10-15, 17 and 20 above, and further in view of Engelhart (BR-PI0610836)
Regarding claim 18, Seitz teaches the deforming member is embossing roller (paragraphs 0018, 0039-0041). Thus, Seitz in view of Bartholomew teaches all limitations of this claim, except the roller having patterned surface attachment. However, Engelhart teaches a method of forming pattern on a fibrous web (abstract) and discloses the embossing roller for forming the pattern have a patterned surface attachment (page 10 lines 9-25). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the embossing roller with the patterned surface etching as suggested by Okubo in the method of Seitz in view of Bartholomew because Engelhart teaches such attachment is capable of providing the pattern for the embossing roller (page 10 lines 9-25).
Conclusion
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/NGA LEUNG V LAW/Examiner, Art Unit 1717
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