DETAILED ACTION
Claim Status
Claim(s) 1-2 is/are pending.
Claim(s) 1-2 is/are rejected.
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 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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for coating layer compositions, does not reasonably provide enablement for the entire recited compositional range of water-dispersible copolyester resins. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to make coated polyester films meeting the recited formulas (i)-(iv) (claim 1) over the entire compositional scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
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There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
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(A) The breadth of the claims;
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(B) The nature of the invention;
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(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
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In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A) the claims are relatively broad -- e.g., but not limited to:
• the claims contain only broad limitations on the type of water-dispersible copolyester resin in the coating layer.
With respect to Wand factor (B), Applicant asserts that a coating satisfying the recited compositional limitations and recited formulas (i)-(iv) is critical for obtaining a film with high transparency, resistance to blocking, adhesion to hardcoat layers; and adhesion to UV inks.
With respect to Wand factor (C)-(E), while the prior art disclose coatings comprising urethane resins containing polycarbonate structures, the prior art does not disclose or provide guidance with respect to coatings with the recited parameters A, B, b, c, X as used in formulas (i)-(iv), or the effects of these parameters on transparency, resistance to blocking, adhesion to hardcoat layers, and/or adhesion to UV inks.
With respect to Wand factor (F)-(G), the disclosure as originally filed only discloses coating layer compositions containing a limited range of water-dispersible copolyester resins which satisfy recited formulas (i)-(iv) (claim 1).
With respect to Wand factor (H), in view of Applicant’s assertions with respect to the criticality of the coating composition with respect to transparency, resistance to blocking, adhesion to hardcoat layers; and adhesion to UV inks, it is the Examiner’s position that undue experimentation would be required to simultaneously satisfy the recited formulas (i)-(iv) using coating layer compositions containing water-dispersible copolyester resins which are encompassed by the present claims, but are materially different from those used in the working Examples in the specification.
The disclosure as originally filed only discloses satisfying the recited formulas (i)-(iv) using a limited range of coating layer compositions using a limited range of water-dispersible copolyester resins and there is no persuasive objective evidence that coating layer compositions which deviate from the coating compositions of the working Examples will satisfy recited formulas (i)-(iv) -- for example:
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• the type of water-dispersible copolyester resin in the coating layer -- The working Examples only utilize a single type of water-dispersible copolyester resin in the coating layer compositions -- i.e., a water-dispersible copolyester containing:
(a) terephthalate repeating units;
(b) isophthalate repeating units;
(c) 5-sodium sulfo-isophthalate repeating units;
(d) diethylene repeating units;
(e) ethylene glycol repeating units.
The present claims use the language “contains” with respect to the type of repeating units present in the water-dispersible copolyester resin. In the absence of an explicit definition to the contrary, the term “contains” is deemed the equivalent to the open term “comprises”, which allows for the presence of any other type(s) of repeating units, as long as the required repeating units (a)-(d) are present in any non-zero amounts, in the water-dispersible copolyester resin.
Therefore, the present claims allow for water-dispersible copolyester resins containing any type(s) and/or amounts(s) of main and comonomer unit, as long as the required repeating units (a)-(d) are present in any non-zero amounts -- e.g., derived from aliphatic or cycloaliphatic dicarboxylic acids; unsaturated dicarboxylic acids; aromatic diols; unsaturated diols; branched polyols; polycarboxylic acids or polyols with 3 or more functionalities; etc., especially nitrogen-containing polyacids and/or nitrogen-containing polyols.
Applicant has not provided adequate guidance regarding adjustments and/or modifications needed to produce cured coatings which simultaneously satisfy formulas (i)-(iv) using coating layer compositions containing water-dispersible copolyester resins which:
(1) contain additional repeating units derived from diacids which materially deviate from the aromatic dicarboxylic acids (i.e., terephthalic acid, isophthalic acid, or ester derivatives thereof) used to produce the water-dispersible copolyester resin used the working Examples (e.g., aliphatic or cycloaliphatic dicarboxylic acids; unsaturated dicarboxylic acids; polycarboxylic acids or polyols with 3 or more functionalities; etc.);
and/or
(2) contain additional repeating units derived from diols which materially deviate from the aliphatic diols (i.e., ethylene glycol, diethylene glycol) used to produce the water-dispersible copolyester resin used the working Examples (e.g., branched diols; aromatic diols; unsaturated diols; polyols with 3 or more functionalities; etc.);
and/or
(3) contain additional repeating units derived from polyacids and/or polyols which materially deviate from the diacids and diols used to produce the water-dispersible copolyester resin used the working Examples, in particular polyacids and/or polyols which contain nitrogen (e.g., ammonium salts of sulfoisophthalate, as disclosed in KITAZAWA ET AL (US 2006/0035070); aminocarboxylic acids, aminohydroxycarboxylic acids, aminoalcohols, diamines, sulfo-monomers containing amino groups, as disclosed in KIBLER ET AL (US 3,779,993); etc.);
particularly when recited formulas (i)-(iv) can materially affect the concentration and/or spatial distribution of nitrogen atoms in the coating layer, as evidenced by the working and comparative Examples in the specification.
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In view of the above, the disclosure as originally filed does not enable one of ordinary skill in the art to make coated polyester films simultaneously meeting the recited formulas (i)-(iv) (claim 1) or additionally the recited haze (claim 2) over the entire compositional scope of the present claims, specifically with respect to the type of water-dispersible copolyester resin.
Examiner’s Comments / Suggestions
As discussed in detail above in the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action, the use of the term “contains” in the phrase “wherein the water-dispersible copolyester resin contains” is interpreted as the equivalent to the open term “comprises”. Therefore, claim 1 still allows for the presence of unrestricted type(s) and amount(s) of additional repeating units (in particular, nitrogen-containing repeating units), as long as the recited repeating units (a)-(d) are present in any non-zero amounts, in the water-dispersible copolyester resin.
In order to adequately address the outstanding rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action, the Examiner suggests the use of claim language which clearly excludes the presence of repeating units in the water-dispersible copolyester resin which would be reasonably expected to materially affect the nitrogen element distribution and surface analysis (e.g., nitrogen-containing repeating units).
Since the disclosure as originally filed does not appear to provide adequate support for a negative limitation excluding the presence of nitrogen-containing repeating units in the water-dispersible copolyester resin (unlike the case for the negative limitation associated with the “one or more additives”), the amended language should utilize positive limitations in order to avoid the introduction of new matter -- for example, but not limited to:
Version 1:
... wherein the water-dispersible copolyester resin consists of:
(a) terephthalate repeating units;
(b) isophthalate repeating units;
(c) 5-sodium sulfo-isophthalate repeating units;
(d) ethylene glycol repeating units; and
(e) diethylene glycol repeating units, ...
Version 2:
... wherein the water-dispersible copolyester resin consists of:
(a) terephthalate repeating units;
(b) isophthalate repeating units;
(c) 5-sodium sulfo-isophthalate repeating units; and
(d) glycol repeating units, wherein the glycol repeating units are selected from:
diethylene glycol; propylene glycol; butanediol; hexanediol; 1,4-cyclohexanedimethanol; 2,2-dimethyl-1,3-propanediol; 2-methyl-2-ethyl-1,3-propanediol; 2-methyl-2-butyl-1,3-propanediol; 2-methyl-2-propyl-1,3-propanediol; 2-methyl-2-isopropyl-1,3-propanediol; 2-methyl-2-n-hexyl-1,3-propanediol; 2,2-diethyl-1,3-propanediol; 2-ethyl-2-n-butyl-1,3-propanediol; 2-ethyl-2-n-hexyl-1,3-propanediol; 2,2-di-n-butyl-1,3-propanediol; 2-n-butyl-2-propyl-1,3-propanediol; and 2,2-di-n-hexyl-1,3-propanediol; ...
The list of above glycol repeating units in Version 2 are supported by Published Application US 2022/0119603, paragraph [0061].
Response to Arguments
Applicant's arguments filed 10/06/2025 have been fully considered but they are not persuasive.
(A) Applicant argues that the Claim Amendments filed 10/06/2025 fully address the outstanding rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding scope of enablement) in the previous Office Action. While the above Claim Amendments address a majority of issues regarding scope of enablement, a few issues still remain outstanding, as discussed in detail in the present Office Action -- in particular, with respect to the type of water-dispersible copolyester resin.
While the scope of enablement of a disclosure is not limited strictly and solely to the working Examples in said disclosure, the scope of enablement provided by Applicant’s disclosure needs to be reasonably commensurate in scope with the claims in order to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims without undue experimentation. As discussed in detail above in the present Office Action, the present claims still permit the presence of a substantial range of nitrogen-containing compounds outside of: (i) the urethane resin having a polycarbonate group; and (ii) the blocked isocyanate having three or more functional isocyanate groups.
Therefore, the disclosure as originally filed fails to provide adequate guidance regarding which types of nitrogen-containing components (as part of the required water-dispersible copolyester resin) -- and in what amounts -- may (or may not) materially affect the distribution of nitrogen atoms in the coating layer and thereby may (or may not) materially affect the ability to produce cured coatings which fully comply with recited formulas (i)-(iv) (claim 1) or additionally exhibiting the recited haze (claim 2), especially when potentially unpredictable interactions between multiple nitrogen-containing components could exist which can also materially affect the concentration and spatial distribution of nitrogen atoms in a cured coating. Therefore, undue experimentation would be required for one of ordinary skill in the art to produce coated polyester films simultaneously meeting the recited formulas (i)-(iv) (claim 1) or additionally the recited haze (claim 2) over the entire compositional scope of the present claims, specifically with respect to the water-dispersible copolyester resin.
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 Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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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February 3, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787