DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 5 in the amendments filed 3/31/2026.
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 .
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1, 6 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirose et al. (JP 2012121196 A) in view of Inagaki et al. (WO 2017/1669553 A1). Citations from the ‘196 reference were taken from a machine translation, which was included with a previous action. Citations from the ‘553 reference were taken from US 20190106534 A1, which is the English language equivalent.
Regarding claims 1 and 6, Hirose teaches a polyester film substrate having an easy-adhesion coating layer (coating layer, laminated polyester film) on at least one surface (para 0008, 0037), which said adhesive layer comprises a polyurethane resin and a polyester resin (para 0056) crosslinked (curing a composition) with a crosslinking agent (para 0101) and wherein the polyurethane is a polycarbonate-based polyurethane (para 0080).
Hirose continues to teach that the polycarbonate-based polyurethane resin comprises adding polycarbonate diols and diisocyanates such as trimers of isocyanate compounds and polyisocyanates in which diisocyanates are added to trimethylolpropane (para 0092), each of which provides three isocyanato groups towards a branched structure for the resultant polyurethane.
Hirose also teaches that the crosslinking agent comprises, inter alia, blocked tri- or higher-valent isocyanate compounds (current claim 6), and that the blocking is accomplished via a blocking agent such as, inter alia, oximes, active methylene compounds, phenols and aromatic amines (para 0103-0109). The Examiner notes that, due to the O=C=N- cyanato groups of isocyanates, isocyanate groups are polar and thus water soluble. Similarly, the blocking agents such as the disclosed alcohols are also polar compounds, and thus the blocked isocyanates are water soluble.
Hirose does not specify that the blocking agent comprises the compound(s) recited in the current claim.
However, Inagaki teaches a polyurethane resin comprising blocked polyisocyanates comprising a blocking agent selected from, inter alia, oximes, or a hydrophilic compounds such as, inter alia, phenols having a sulfonic acid group (para 0055-0058).
It is respectfully submitted that case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the hydrophilic blocking agent compounds for the blockings agents of Hirose based on the water-solubility or water-dispersibility required of the prior art’s intended action (see also the rejection of claims 9-10) as in the present invention.
Regarding claims 9-10, Hirose teaches that the polyester resin is a water-soluble or water-dispersible copolyester comprising groups consisting of sulfonic acid groups or an alkali metal salt thereof (para 0059) such as, inter alia, 5-sodium sulfoisophthalic acid (para 0061).
Regarding claim 8, Hirose teaches that the polycarbonate-based polyurethane is obtained via adding the polycarbonate polyol and the polyisocyanate(s) as set forth above in the rejection of at least current claim 1. Hirose also teaches that the ratio of the polycarbonate polyol(s) to the polyisocyanate(s) is 3 to 100 mol% to 100 mol %, respectively, towards a balance of moist heat resistance and adhesion (para 0091).
The Examiner respectfully submits that, while the prior art discusses the proportions of the polycarbonate polyol(s) and the polyisocyanate(s) in terms of moles rather the presently claimed mass, Hirose does conspicuously instruct one skilled in the art as to the motivation for considering the relative proportions of the two components as noted above.
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the polycarbonate polyol(s) and polyisocyanate(s) of Hirose in proportions identical to that presently claimed based on the balance of moist heat resistance and adhesion required of the prior art’s intended application as in the present invention.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirose et al. (JP 2012121196 A) in view of Inagaki et al. (WO 2017/1669553 A1) and in further view of Lee et al. (US 10590248 B2).
Regarding claim 7, Hirose/Inagaki is silent the blocked isocyanate compounds having an NCO equivalent of 100 to 500 g/mol.
However, Lee teaches an NCO equivalent weight of 200 to 500 g/mol towards a balance of crosslinking density/elastic modulus and adequate urethane bonds/film strength (column 4, line 57 to column 5, line 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ isocyanate crosslinking agents having the presently claimed NCO equivalence towards the easy-adhesion layer of Hirose/Inagaki demonstrating the elastic modulus and film strength required of the prior art’s intended application as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 3/31/2026, with respect to the rejections of claims 1, 6 and 9-10 over Hirose et al. under 35 U.S.C. 102(a)(1); claim 8 over Hirose et al. under 35 U.S.C. 103; claim 5 over Hirose et al. in view of Inagaki et al. under 35 U.S.C. 103; and claim 7 over Hirose et al. in view of Inagaki et al. under 35 U.S.C. 103; as set forth in paragraphs 6-9 of the action mailed 12/12/2025, have been fully considered but they are not persuasive.
Given that the claim amendments have imported the limitations of previous claim 5 into claim 1, the rejection of claims 1, 6 and 9-10 over Hirose et al. under 35 U.S.C. 102(a)(1) set forth in the previous action are no longer applicable, and thus the Examiner’s response to the Applicant’s remarks will focus on the obviousness rejection(s) of the previous action; specifically, the limitations of previous claim 5.
Turning now to the Applicant’s position on the combination of Hirose and Inagaki, and the presently claimed blocked isocyanate and the recited blocking agents. Without conceding the merits of the Applicant’s arguments towards distinguishing the presently claimed invention over the prior in regards to the “blocking resistance” or “adhesion to a hardcoat layer” or “excellent compatibility” with urethane resins, the Examiner submits that there is nothing in the claim language requiring any of these properties. It is respectfully notes that the blocking agent of the cited prior art would necessarily provide the hydrophilicity.
In addition, provided in paragraph 0108, Hirose also recognizes that the blocked isocyanates provide both high adhesion and blocking resistance. Also, given that Hirose discloses a blocked isocyanate identical to that presently claimed/disclosed, to include three or more isocyanate groups and blocking agents (e.g., oximes), it is reasonable to conclude that the compositions of Hirose (and Hirose/ Inagaki) would demonstrate the blocking resistance and adhesion to a hardcoat layer as well as the alleged compatibility with the branched urethanes of Hirose. Furthermore, the invention of Hirose is directed to a composition comprising the polyester, which is disclosed as water-dispersible (see, for example, para 0059), as is the disclosed polycarbonate-based polyurethane resin (para 0138). Thus, it is reasonable to conclude that the block isocyanate crosslinking agent employed with the polyester and polyurethane would also demonstrate water-dispersibility.
With respect to the Applicant’s assertions against the secondary Inagaki invention, the Examiner respectfully reminds the Applicant that (Examiner’s emphasis),
the "test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference... Rather, the test is what
the combined teachings of the references would have suggested to those of ordinary skill
in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that
"combining the teachings of references does not involve an ability to combine their
specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
That is, while Inagaki may employ the blocked isocyanate crosslinking agents at different steps in the formation of its polyester-polyurethane-based (para 0058 of Inagaki), all of the presently claimed invention, Hirose and Inagaki teach isocyanate crosslinking agent employed towards polyester-polyurethane-based compositions, with the Inagaki invention only incorporated in the prior art rejection(s) towards remedying Hirose in regards to the specific blocked isocyanate crosslinking agent(s) presently claimed.
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 4/26/2026
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