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 Rejections - 35 USC § 103
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(s) 39-43, 45-47, 52-54, 56 and 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koide et al. (WO 2018/155396). US 2020/0002461 is being used as an English equivalent to WO 2018/155396 since it is a national stage entry of the international application.
Regarding claims 39-40, 42, 43, 45-47 and 57: Koide et al. teach an optical film with a thickness of 0.15 mm (5.9 mils) [0171] comprising a resin composition comprising 98.8 wt% of an aliphatic thermoplastic polyurethane, 0.5 wt% of a first UV absorber Tinuvin-328 (benzotriazole), and a light stabilizer Tinuvin-622LD (HALS). [Example 1; Table 1].
Koide et al. also teach Tinuvin 326 (2-(2′-hydroxy-3′-t-butyl-5′-methylphenyl)-5-chlorobenzotriazole) [0079] as an ultraviolet absorber (B1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a mixture of Tinuvin 328 and Tinuvin 326 as the ultraviolet absorber (B1) in Koide. It is obvious to combine separately taught prior art ingredients which perform the same function; it is logical that they would produce the same effect and supplement each other. In re Crockett 126 USPQ 186. The skilled artisan would immediately envisage a 50/50 mixture, and the total of the first UV absorber and the second UV absorber is 0.5 wt%.
Since the composition of Koide et al. is the same as claimed it will possess the claimed properties. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 41: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a polyether diol [0071] from the short, finite list in Koide et al. as the diol in Koide et al. for the production of the aliphatic thermoplastic polyurethane.
Regarding claim 56: Since the composition of Koide et al. is the same as claimed it will possess the claimed properties. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claims 52-54: The claims contain product by process limitations. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). 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). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). The film of Koide et al. includes the claimed components in the final end product amounts [Examples; Table 1]. The claimed base resin is considered to be the same as the TPU resin.
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koide et al. (WO 2018/155396) as applied to claim 39 above further in view of Thakkar et al. (2018/0203163). US 2020/0002461 is being used as an English equivalent to WO 2018/155396 since it is a national stage entry of the international application.
Koide et al. fail to teach the claimed light stabilizer.
However, Thakkar et al. teach that Tinuvin 292 is a commercially available hindered amine light stabilizer used in a thermoplastic polyurethane resin composition for producing a film [Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Tinuvin 292 as taught by Thakkar et al. as the HALS in Koide et al. to stabilize the composition. It is a simple substitution of one known element for another to obtain predictable results.
Claim(s) 39-43, 45-47, 52-54, 56 and 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koide et al. (WO 2018/155396) in view of Michihashi et al. (JP 2001-187825A). US 2020/0002461 is being used as an English equivalent to WO 2018/155396 since it is a national stage entry of the international application.
Regarding claims 39-40, 42, 43, 45-47 and 57: Koide et al. teach an optical film with a thickness of 0.15 mm (5.9 mils) [0171] comprising a resin composition comprising 98.8 wt% of an aliphatic thermoplastic polyurethane, 0.5 wt% of a first UV absorber Tinuvin-328 (benzotriazole), and a light stabilizer Tinuvin-622LD (HALS). [Example 1; Table 1].
Koide et al. also teach Tinuvin 326 (2-(2′-hydroxy-3′-t-butyl-5′-methylphenyl)-5-chlorobenzotriazole) [0079] as an ultraviolet absorber (B1).
Koide et al. fail to teach a mixture of Tinuvin 326 and Tinuvin 328.
However, Michihashi et al. teach that in an optical film composition that a mixture of Tinuvin 326 and Tinuvin 328 in a ratio of 30:70-70:30 provides a more excellent ultraviolet absorption performance, and less yellowing [0124-0125].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a combination of Tinuvin 326 and Tinuvin 328 in a ratio of 30:70-70:30 as taught by Michihashi et al. in the composition of Example 1 of Koide et al. (the amount of Tinuvin 326 is based upon the ratio and 0.5 wt% of Tinuvin 328) to provide a more excellent ultraviolet absorption performance, and less yellowing. It would have been obvious to optimize the ratio for the desired UV absorption and yellowing.
Since the composition is the same as claimed it will possess the claimed properties. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 41: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a polyether diol [0071] from the short, finite list in Koide et al. as the diol in Koide et al. for the production of the aliphatic thermoplastic polyurethane.
Regarding claim 56: Since the composition of Koide et al. is the same as claimed it will possess the claimed properties. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claims 52-54: The claims contain product by process limitations. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). 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). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). The film of Koide et al. includes the claimed components in the final end product amounts [Examples; Table 1]. The claimed base resin is considered to be the same as the TPU resin.
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koide et al. (WO 2018/155396) and Michihashi et al. (JP 2001-187825A) as applied to claim 39 above further in view of Thakkar et al. (2018/0203163). US 2020/0002461 is being used as an English equivalent to WO 2018/155396 since it is a national stage entry of the international application.
Koide et al. fail to teach the claimed light stabilizer.
However, Thakkar et al. teach that Tinuvin 292 is a commercially available hindered amine light stabilizer used in a thermoplastic polyurethane resin composition for producing a film [Examples].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Tinuvin 292 as taught by Thakkar et al. as the HALS in Koide et al. to stabilize the composition. It is a simple substitution of one known element for another to obtain predictable results.
Response to Arguments
Applicant's arguments filed 2/27/2026 have been fully considered but they are not persuasive.
The Applicant has alleged that the mere disclosure of Tinuvin 326 and Tinuvin 328 as alternative embodiments does not provide a motivation to employ both together. This is not persuasive because it is obvious to combine separately taught prior art ingredients which perform the same function; it is logical that they would produce the same effect and supplement each other. In re Crockett 126 USPQ 186.
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).
The Applicant has made the argument that Koide et al. fails to mention yellowness index. This is not persuasive because the applicant has not provided any evidence the composition presented in the rejection would not possess the claimed yellowness index.
The applicant does not respond to the rejection of Koide et al. in view of Michihashi et al., other than to admit that Michihashi et al. teach a yellowness index of less than 2.0.
With regard to the yellowness index, Michihashi et al. teach that in an optical film composition that a mixture of Tinuvin 326 and Tinuvin 328 in a ratio of 30:70-70:30 provides a more excellent ultraviolet absorption performance, and less yellowing [0124-0125]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a combination of Tinuvin 326 and Tinuvin 328 in a ratio of 30:70-70:30 as taught by Michihashi et al. in the composition of Example 1 of Koide et al. (the amount of Tinuvin 326 is based upon the ratio and 0.5 wt% of Tinuvin 328) to provide a more excellent ultraviolet absorption performance, and less yellowing. It would have been obvious to optimize the ratio for the desired UV absorption and yellowing.
It is noted that the prior art is filled with examples of optical films that comprise a combination of Tinuvin 326 and Tinuvin 328. Yoneyama et al. (2010/0245722) [0275, 0321; Examples], Yoneyama et al. (2013/0222910) [0325], and Watanabe et al. (JP 2012-007142) [Examples], and Michihashi et al. (JP 2001-187825A) [0124-0126; Examples] are provided as evidence.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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