DETAILED ACTION
This is an Office action based on application number 17/425,992 filed 27 July 2021, which is a national stage entry of PCT/JP2020/001184 filed 16 January 2020, which claims priority to JP2019-015237 filed 31 January 2019. Claims 1 and 4 are pending. Claims 2-3 and 5-8 are canceled. Claim 4 is withdrawn due to Applicant’s election.
Amendments to the claims, filed 8 December 2025, have been entered into the above-identified application.
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 Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (JP 2014-159176A with citations taken from the provided machine translation) (Ito) in view of Saruwatari et al. (JP 2008-308533A with citations taken from the provided machine translation).
Regarding instant claim 1:
Ito discloses an easily adhesive polyester film (paragraph [0011]).
Ito further discloses that said polyester film comprises a coating layer on at least one side, wherein the main components of the coating layer are a polyester resin and a blocked isocyanate (paragraph [0012]).
Ito further discloses that a polyester resin constitutes the base material of the polyester film (paragraph [0016]).
Ito further discloses that the polyester film is a multilayer film (paragraph [0018]) having a layer A/layer B/layer A, wherein layer A contains particles (paragraph [0023]). Ito discloses that said particles have an average particle size of 0.1 to 3.5 μm, and the content of the particles is preferably 0.01 to 0.20% by mass relative to the polyester (paragraph [0025]).
It is noted that the particle size of Ito overlaps that recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
The layer A of Ito is construed to read on the claimed base film.
While there is no disclosure in Ito that the average particle diameter is measured by the specifically claimed process, absent evidence of criticality regarding how the average particle diameter is measured and given that the average particle size of Ito falls overlaps the range presently claimed, it is the Examiner's position that Ito meets the requirement of the instant claim.
Ito further discloses that the polyester resin of the coating layer contains a dicarboxylic acid component and a diol component (paragraph [0014; 0036), which is construed to meet the claimed copolymerized polyester resin.
Ito further discloses that the polyisocyanate precursor of the blocked isocyanate is inclusive of a urethane-modified diisocyanate (paragraph [0049]).
Ito further discloses that the coating layer comprises a surfactant inclusive of silicone surfactants to improve levelling properties and to defoam the coating liquid (paragraph [0062]).
Ito further discloses that the coating layer is cross-linked from the viewpoint of improving adhesion and toughness (paragraph [0029]). Cross-linking said coating layer is construed to obtain a cured product as required by the instant claim.
Ito further discloses that the mass ratio of polyester resin and block isocyanate is 1/9 to 9/1 (paragraph [0056]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Ito further discloses that the coating layer includes particles having a size of 1 to 500 nm (paragraph [0058-0059]).
It is noted that the claimed average particle diameter falls within the range disclosed by Ito; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Ito further discloses that the content of the particles is 0.5% by mass or more and 20% by mass or less (paragraph [0061]).
It is noted that the content of particles falls within the range disclosed by Ito; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Ito does not explicitly disclose a polyoxyalkyelene-modified silicone surfactant and the amount thereof.
However, Saruwatari discloses an antistatic polyester-based pressure-sensitive adhesive (paragraph [0023]).
Saruwatari discloses that the adhesive includes a silicone surfactant to improve antistatic properties, wherein said surfactant is inclusive of a branched silicone surfactant having a polyoxyalkylene group in an amount of 0.1 to 10 parts per weight based on 100 parts by weight of the base resin (paragraph [0124]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the branched silicone surfactant having a polyoxyalkylene group surfactant of Saruwatari as the silicone surfactant desired by Ito. The motivation for doing so would have been that, in addition to being a desired silicone-based surfactant, the surfactant of Saruwatari provides an antistatic properties.
Therefore, it would have been obvious to combine Saruwatari with Ito to obtain the invention as specified by the instant claim.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ikehata et al. (JP2008-006782A with citations taken from the provided machine translation) Ikehata in view of Saruwatari.
Regarding instant claim 1:
Ikehata discloses an easy-adhesion polyester roll comprising an easy-adhesion layer on at least one side of a polyester base film (paragraph [0007]).
Ikehata further discloses that the polyester base film comprises silica particles having an average particle size of 1 to 3 μm in an amount of 0.003 to 0.01 mass % (paragraph [0018]).
It is noted that the average particle size and amount thereof overlaps the ranges recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Ikehata further discloses that the easy adhesion layer is composed mixtures inclusive of a copolymerized polyester resin and polyurethane resins (paragraph [0061]).
Ikehata further discloses that the polyurethane resin contains a blocked isocyanate group (paragraph [0066]).
Ikehata that preferred mixtures of copolymerized polyester resins (A) and those resins containing a blocked isocyanate group (B) have mass ratios in the range of (A)/(B) = 90/10 to 10/90 (paragraph [0075]), which overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Ikehata further discloses that a catalyst may be added to the coating liquid that forms the easy adhesion layer (paragraph [0076]), which suggests that a cured easy adhesion layer is the desired product.
Ikehata further discloses that particles are added to the coating liquid that forms the easy adhesion layer (paragraph [0080]). Ikehata discloses that the average particle size of said particles is 1.0 μm or less and the content is 60% by mass or less (paragraph [0081]).
It is noted that the claimed average particle size and content ranges recited by the claims lie within the ranges disclosed by Ikehata; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Ikehata further discloses that a surfactant is added to the coating liquid to improve wettability of the film and coat the coating liquid uniformly (paragraph [0055]).
Ikehata does not explicitly disclose a polyoxyalkyelene-modified silicone surfactant and the amount thereof.
However, Saruwatari discloses an antistatic polyester-based pressure-sensitive adhesive (paragraph [0023]).
Saruwatari discloses that the adhesive includes a silicone surfactant to improve antistatic properties, wherein said surfactant is inclusive of a branched silicone surfactant having a polyoxyalkylene group in an amount of 0.1 to 10 parts per weight based on 100 parts by weight of the base resin (paragraph [0124]); ]); however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the branched silicone surfactant having a polyoxyalkylene group surfactant of Saruwatari as the surfactant desired by Ikehata. The motivation for doing so would have been that, in addition to being a desired surfactant, the surfactant of Saruwatari provides an antistatic properties.
Therefore, it would have been obvious to combine Saruwatari with Ikehata to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant contends that the prior art of record does not obviate the claimed invention. Broadly, Applicant argues that the combination of Ito with Saruwatari and Ikehata with Saruwatari fails to discloses or reasonably suggest a readily adhesive polyester comprising a polyester base film and a readily adhesive layer having the specific combination of features (i), (ii), (iii), and (iv) while recognizing the unexpected benefits, e.g., improved “ink adhesion”, “hardcoat adhesion”, “haze”, “flaw, and “white unevenness” resulting therefrom. Applicant contends that to make the leaps and bounds required by a person of ordinary skill in the art, as suggested by the Office, to (a) select average particle diameters and amounts thereof that are within the scope of the claimed invention, (b) select the mass ratio, on a solids basis, of (A)/(B) of 50/50 to 72/28, and (c) use the polyoxyalkylene group surfactant in the amounts disclosed by Saruwatari in Ito to arrive at the claimed invention requires impermissible use of hindsight knowledge of the present invention.
Applicant’s arguments are unpersuasive. As cited in the prior art rejections of record, both Ito and Ikehata disclose polyester films comprising a coating layer wherein the claimed components are present in amounts and/or sizes that overlap the ranges recited by the claims; furthermore, Saruwatari discloses the use of the same surfactant as required by the claims in an amount that overlaps the claimed amount, and one of ordinary skill in the art would readily add such a surfactant to either Ito or Ikehata, both of whom desire the presence of a general surfactant, because such a surfactant provides antistatic properties.
Therefore, the prior art combination, due to the overlapping ranges and a clear motivation to combine the references, must encompass an embodiment that is substantially identical to the claims, and one of ordinary skill in the art would readily conclude that such an encompassed embodiment must have the same properties as Applicant’s invention (e.g., the same purported benefits). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
As to Applicant’s arguments alleging an improper use of hindsight reconstruction, In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In the instant case, it is well within the ambit of one of ordinary skill in the art to select any content and/or particle size encompassed by the prior art to arrive at the invention of the claims. Furthermore, it would have been well within the ambit of one of ordinary skill in the art and the desire for a general surfactant, to select the surfactant disclosed by Saruwatari that provides an antistatic property for inclusion into structure of Ito or Ikehata. Such an ability and motivation of one of ordinary skill in the art does not necessarily rely upon the knowledge gleaned only from Applicant’s disclosure.
Applicant’s arguments as to the unexpected nature of the benefits are unpersuasive. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. Further, the nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. See MPEP §716.02(d).
In the instant case, Applicant relies upon the data of the Examples and Comparative Examples of the original disclosure. However, the Examples of Applicant’s original disclosure are drawn to compositions of a readily adhesive layer comprising: specific copolymerized polyester resin (A), a specific isocyanate group- containing urethane resin (B), a specific silicone surfactant (c), specific particles; furthermore, the examples rely upon a base film having a specific composition, specific layer structure, and specific particle composition. The claims however, are much broader in scope as to at least the composition and layer structure. Furthermore, it is not readily clear if the evidence provided by examples of a narrower scope would readily demonstrate that all other embodiments encompassed by the claims would have the same allegedly unexpected benefits.
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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 03/10/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788