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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/2025, has been entered.
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 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.
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.
Claims 24, 26-35, 40-44 are rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US20170306134, herein Hattori), in the view of Hideo (US6423808, herein Hideo).
Regarding Claims 24, 27, 29, 35, 40, 41, 42, Hattori teaches a resin composition, which comprising: “ethylene and/or the α-olefin having 3 to 20 carbon atoms” [0059] as structural unit (A), and “carboxylic acid unit” [0054] as structural unit (B), in a substantially linear shape [0041], further, “converted into a metal-containing carboxylate containing a metal ion of Group 1, 2, or 12 of the periodic table” [0032], heating temperature in the heating conversion step is 100° C. to 350° C [0023] collectively reads on the ionomer formation method according to the instant application specification, hence, can lead the ionomer has “phase angle δ at the absolute value G*=0.1 MPa of the complex elastic modulus measured using a rotary rheometer being 45 degrees to 75 degrees.” [0077] lie in the claimed range.
Hattori does not teach the inflation film formation and application, and thickness; however, Hideo teaches “Inflation Film” [C19; L50] via “molding machine; molding temperature of 200 C.” [C19; L53], matches “A temperature of the annular die is preferably set to 70 to 220° c; the process of inflation film molding” [Instant App. P17; 0345]; Hideo further teaches the film thickness range is 5 to 200 um [C19; L55] lies in the claimed range. Hattori and Hideo are considered to be analogous to the claimed invention because they are in the same field of the ionomer grafted LLDPE-based functional resin composition development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hattori to add the teachings from Hideo of specific application of “Inflation Film” [C19; L50] via “molding machine; molding temperature of 200 C.” [C19; L53], film thickness range is 5 to 200 um [C19; L55], because doing so would further achieve the product development with desirable property as of “improvements in transparency, low temperature heat-Seal properties, mechanical Strength, blocking resistance and anti-migration properties,” [C15; L42] as taught by Hideo.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Hattori and Hideo teach all of the claimed ingredients, in the claimed amounts, and Hideo teaches the composition as being made by a substantially similar process as of “Inflation Film” [C19; L50] via “molding machine; molding temperature of 200 C.” [C19; L53]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. tensile modulus of elasticity, haze, film impact, heat seal strength, gloss, would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 26, Hattori teaches “0.1 to 30.0 mol % in total of units derived from at least one selected from the group consisting of an unsaturated carboxylic acid” [0031], overlaps 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 exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding Claim 28, Hattori teaches the “nickel or palladium” [0134] which is from group VIII.
Regarding Claims 30-33, Hattori teaches the “other comonomer components” [0114] as “t-Butyl Acrylate” [0336] as the formula (1) as non-cyclic monomer matches “Production example 1 comonomer 1, t-Butyl Acrylate” [Instant app. Spec. P27; 0554; Table 1], structure see below, reads on the formula (1), wherein, n=0; the T1 to T3 are hydrogen atoms, T4 is ester group has 5 carbon atoms.
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Hattori further teaches “norbornene” [0067] as the formula (2) as cyclic monomer, matches “Production example 1 comonomer 2, 2-Norbornene” [Instant app. Spec. P27; 0554; Table 1], structure see below, reads on the formula (2), wherein, n=0, the R1-R4 and R9-R12 are all hydrogen atoms.
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Regarding Claim 34, Hattori teaches “Production example 1, t-Butyl Acrylate, 3.4 mol %” [C20, Table 3] lies in the claimed range.
Regarding Claims 43-44, Hattori and Hideo collectively teach the inflation film. Hattori teaches unsaturated carboxylic acid copolymer may be converted into the metal-containing carboxylate [0266]. Hattori does not teach the wherein the structural unit (B) includes at least the unit derived from the dicarboxylic anhydride group, however, Hideo teaches monomer having a polar group such as maleic anhydride [C16; L46], reads on the unsaturated dicarboxylic anhydride. Hattori and Hideo are considered to be analogous to the claimed invention because they are in the same field of the ionomer grafted LLDPE-based functional resin composition development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hattori to add the teachings from Hideo of monomer having a polar group such as maleic anhydride [C16; L46] into the copolymer formation, because doing so would further lead to the claimed heat Seal layer, which exhibit excellent low temperature heat seal properties and heat-sealing Strength [C16; L51] as taught by Heido.
Claims 25 is rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US20170306134, herein Hattori), and Hideo (US6423808, herein Hideo) applied in claim 24 as set forth above, in the view of Mamoru (US20060047096, herein Mamoru).
Regarding Claim 25, Hattori and Heido collectively teach the resin composition as set forth above in claim 24, Hattori teaches “ethylene and/or the α-olefin having 3 to 20 carbon atoms” [0059] as structural unit (A), but does not teach the wherein a number of methyl branches calculated by 13C-NMR of the copolymer (P) in the ionomer is 50 or less per 1,000 carbons. However, Mamoru teaches ethylene (co)polymer (A2) of ethylene and an α-olefin of 4 to 20 carbon atoms and is characterized by containing: (iA2) methyl branches less than 0.1 in number per 1,000 carbon atoms measured by 13C-NMR [0032-33]. Hattori and Mamoru are considered to be analogous to the claimed invention because they are in the same field of the LLDPE-based functional resin composition formation via structural units of unsaturated carboxylic acids and ethylene (co)polymers. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to substitute the ethylene (co)polymer (A2) of ethylene and an α-olefin of 4 to 20 carbon atoms and is characterized by containing: (iA2) methyl branches less than 0.1 in number per 1,000 carbon atoms measured by 13C-NMR [0032-33] into the ionomer formation, because doing so would further achieve the excellent moldability and excellent mechanical strength [0081] as taught by Mamoru.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US20170306134, herein Hattori), in the view of Hideo (US6423808, herein Hideo).
Regarding Claim 36, Hattori teaches a resin composition, which comprising: “ethylene and/or the α-olefin having 3 to 20 carbon atoms” [0059] as structural unit (A), and “carboxylic acid unit” [0054] as structural unit (B), in a substantially linear shape [0041], further, “converted into a metal-containing carboxylate containing a metal ion of Group 1, 2, or 12 of the periodic table” [0032] via the heating temperature in the heating conversion step is 100° C. to 350° C [0023], with the time of typically 1 minute to 50 hours [0273] collectively read on the production method of Ionomer based on the instant application, hence, can lead to the claimed tensile modulus of elasticity, melt flow rate, tensile impact strength, wear, haze properties. Additionally, Hattori teaches “phase angle δ at the absolute value G*=0.1 MPa of the complex elastic modulus measured using a rotary rheometer being 45 degrees to 75 degrees.” [0077] lie in the claimed range.
Hattori does not teach the formation of the soft sheet; however, Hideo teaches “press-molded at a temperature of 180° C. to obtain a sheet.” [C20; L27], reads on the soft sheet, matches the formation method, “A temperature of the annular die is preferably set to 70 to 220° c; the process of inflation film molding” [Instant App. P17; 0345]. Hattori and Hideo are considered to be analogous to the claimed invention because they are in the same field of the ionomer grafted LLDPE-based functional resin composition development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hattori to add the teachings from Hideo of specific “press-molded at a temperature of 180° C. to obtain a sheet.” [C20; L27], because doing so would further achieve the product development with desirable property as of “improvements in transparency, low temperature heat-seal properties, mechanical Strength, blocking resistance and anti-migration properties,” [C15; L42] as taught by Hideo.
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US20170306134, herein Hattori), in the view of Hideo (US6423808, herein Hideo).
Regarding Claim 37, Hattori teaches a resin composition, which comprising: “ethylene and/or the α-olefin having 3 to 20 carbon atoms” [0059] as structural unit (A), and “carboxylic acid unit” [0054] as structural unit (B), in a substantially linear shape [0041], further, “converted into a metal-containing carboxylate containing a metal ion of Group 1, 2, or 12 of the periodic table” [0032] via the heating temperature in the heating conversion step is 100° C. to 350° C [0023], with the time of typically 1 minute to 50 hours [0273] collectively read on the production method of Ionomer based on the instant application, hence, can lead to the claimed tensile fracture elongation, wear properties. Additionally, Hattori teaches “phase angle δ at the absolute value G*=0.1 MPa of the complex elastic modulus measured using a rotary rheometer being 45 degrees to 75 degrees.” [0077] lie in the claimed range.
Hattori does not teach the formation of the dicing tape; however, Hideo teaches “the copolymer film prepared by the foregoing film molding method was then dry-laminated on the nylon-based film” [C20; L7], which collectively read on the dicing tape formation as “The dicing tape of the present invention has a base material film 1 and an adhesive layer 3 laminated on one of the sides of the base material film” [Instant App. P20; 0391]. Hattori and Hideo are considered to be analogous to the claimed invention because they are in the same field of the ionomer grafted LLDPE-based functional resin composition development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hattori to add the teachings from Hideo of “the copolymer film prepared by the foregoing film molding method was then dry-laminated on the nylon-based film” [C20; L7], because doing so would further achieve the product development with desirable property as of “improvements in transparency, low temperature heat-Seal properties, mechanical Strength, blocking resistance and anti-migration properties,” [C15; L42] as taught by Hideo.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US20170306134, herein Hattori), in the view of Hideo (US6423808, herein Hideo).
Regarding Claim 38, Hattori teaches a resin composition, which comprising: “ethylene and/or the α-olefin having 3 to 20 carbon atoms” [0059] as structural unit (A), and “carboxylic acid unit” [0054] as structural unit (B), in a substantially linear shape [0041], further, “converted into a metal-containing carboxylate containing a metal ion of Group 1, 2, or 12 of the periodic table” [0032] via the heating temperature in the heating conversion step is 100° C. to 350° C [0023], with the time of typically 1 minute to 50 hours [0273] collectively read on the production method of Ionomer based on the instant application, hence, can lead to the claimed maximum stress, tensile impact strength, haze properties. Additionally, Hattori teaches “phase angle δ at the absolute value G*=0.1 MPa of the complex elastic modulus measured using a rotary rheometer being 45 degrees to 75 degrees.” [0077] lie in the claimed range.
Hattori does not teach the laminated body; however, Hideo teaches “The copolymer film prepared by the foregoing film molding method was then dry-laminated on the nylon-based film to obtain a composite film.” [C20; L7] reads on the laminated body, “The resin that can be used can be freely selected by those skilled in the art according to the use of the laminated body.” [Instant App. P18; 0368]. Hattori and Hideo are considered to be analogous to the claimed invention because they are in the same field of the ionomer grafted LLDPE-based functional resin composition development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hattori to add the teachings from Hideo of “The copolymer film prepared by the foregoing film molding method was then dry-laminated on the nylon-based film to obtain a composite film.” [C20; L7], because doing so would further achieve the product development with desirable property as of “improvements in transparency, low temperature heat-seal properties, mechanical Strength, blocking resistance and anti-migration properties,” [C15; L42] as taught by Hideo.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US20170306134, herein Hattori), in the view of Hideo (US6423808, herein Hideo).
Regarding Claim 39, Hattori teaches a resin composition, which comprising: “ethylene and/or the α-olefin having 3 to 20 carbon atoms” [0059] as structural unit (A), and “carboxylic acid unit” [0054] as structural unit (B), in a substantially linear shape [0041], further, “converted into a metal-containing carboxylate containing a metal ion of Group 1, 2, or 12 of the periodic table” [0032] via the heating temperature in the heating conversion step is 100° C. to 350° C [0023], with the time of typically 1 minute to 50 hours [0273] collectively read on the production method of Ionomer based on the instant application, hence, can lead to the claimed elasticity recovery rate, tensile modulus of elasticity, tensile impact strength, melt flow rate, wear properties. Additionally, Hattori teaches “phase angle δ at the absolute value G*=0.1 MPa of the complex elastic modulus measured using a rotary rheometer being 45 degrees to 75 degrees.” [0077] lie in the claimed range.
Hattori does not teach the gasket; however, Hideo teaches “insulating layer for power cable, power loss during the transmission of high Voltage power” [C47; L41] via the formation method “insulating layer which has been molded” [C19; L8]; The laminated thickness of the heat Seal layer with 5 to 200 um thickness [C16; L53], collectively read on the gasket. Hattori and Hideo are considered to be analogous to the claimed invention because they are in the same field of the ionomer grafted LLDPE-based functional resin composition development. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hattori to add the teachings from Hideo of “insulating layer for power cable, power loss during the transmission of high Voltage power” [C47; L41], via the formation method “insulating layer which has been molded” [C19; L8], because doing so would further achieve the product development with desirable property as of “improvements in transparency, low temperature heat-Seal properties, mechanical Strength, blocking resistance and anti-migration properties,” [C15; L42] as taught by Hideo.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive, because:
In response to applicant's argument that “the subject matter of claim 24 was arrived at by finding that an ethylene- based film having the highly distinctive properties of the present invention, as described in the present specification, can be obtained only by mass-producing an ethylene-based ionomer in an amount sufficient for film production”, which is not persuasive.
In this case, first, the data is directed towards a feature not claimed, namely the claim does not require any scale or manufacturing speed or anything since it is a product claim. The instant claims are directed towards an ionomer composition-based film product and not the mass-producing an ethylene-based ionomer in an amount sufficient for film production.
Second, when Examples I-1 to I-20 and Comp. Examples I-1 to I-15 are considered as a whole, they establish results associated with the ranges, with respect to the claimed ranges provided for comparison.
Claim 24 is open to the structural unit (A) derived from ethylene and/or an a-olefin having 3 to 20 carbon atoms. However, Examples I-1 to I-19 only include two monomers combination with C3 and C7 (three and seven atoms), namely AA and NB (acrylic acid and norbornene); AA and iBA (acrylic acid and isobutyl acrylate) both are with C3 and C7 atoms. Therefore, these examples fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
Whether 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. See MPEP 716.02(d).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Hattori and Hideo collectively teach the ionomer composition-based film product as set forth above, furthermore, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Hattori and Hideo teach all of the claimed ingredients, in the claimed amounts, and Hideo teaches the composition as being made by a substantially similar process as of “Inflation Film” [C19; L50] via “molding machine; molding temperature of 200 C.” [C19; L53]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. transparency, elasticity recovery rate, tensile modulus of elasticity, tensile impact strength, melt flow rate, wear, would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
In response to applicant's argument that “Applicant submits that Hattori in view of Hideo does not disclose or suggest the "soft sheet" of substantially linear ionomer of claim 36, the "dicing tape" of substantially linear ionomer of claim 37, the laminated body comprising the substantially linear ionomer as recited in claim 38. Applicant further submits that Hideo's "insulating layer" does not disclose or suggest a gasket at all, let alone a gasket comprising the substantially linear ionomer of claim 39”, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In this case, Hattori and Hideo collectively teach the ionomer composition-based film product as set forth above, can collectively lead to the claimed desired property of “improvements in transparency, low temperature heat-Seal properties, mechanical Strength, blocking resistance and anti-migration properties,” [C15; L42] as taught by Hideo, who further explicitly teaches the applications of “insulating layer for power cable, power loss during the transmission of high Voltage power” [C47; L41] via the formation method “insulating layer which has been molded” [C19; L8]; The laminated thickness of the heat Seal layer with 5 to 200 um thickness [C16; L53], as taught by Hideo, collectively read on the gasket. Hideo further explicitly teaches “The copolymer film prepared by the foregoing film molding method was then dry-laminated on the nylon-based film to obtain a composite film.” [C20; L7] reads on the laminated body matches “The resin that can be used can be freely selected by those skilled in the art according to the use of the laminated body.” [Instant App. P18; 0368]; which also collectively read on the dicing tape formation matches the “The dicing tape of the present invention has a base material film 1 and an adhesive layer 3 laminated on one of the sides of the base material film” [Instant App. P20; 0391]. Hence, neither Hattori nor Hideo teaches away the instant application.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z. L./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767