DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 12/05/2025 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1, 3-13, 17, 19 and 20 are examined on the merits in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites “the protective film has a monolayer structure”. It is not clear how the protective film can be “a monolayer structure” given that claim 1 recites that the protective film comprises “at least two layers” comprising a protective substrate layer and an adhesive layer.
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.
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.
Claims 1, 3-13, 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi (JP 2000000951 A cited in IDS) in view of Tomomatsu et al. (US 2017/0095993 A1) and Nagate et al. (US 2007/0026319 A1). It is noted that the disclosures of Takahashi are based on a machine translation of the reference which is included in this action.
Regarding claims 1, 3-5, 8-13, 17 and 19, Takahashi et al. disclose a laminate comprising a base material 1, an ionizing radiation curable resin layer 2 (hard coat layer), a pattern layer 3 and a surface protective layer 4 (see Abstract and Figure). Each of the ionizing curable resin layer, the pattern layer and the surface protective layer contain an ionizing curable resin, an ionizing radiation-reactive plasticizer and a polymerization inhibitor (see paragraphs 0011, 0012). The pattern layer and the surface protective layer together read on a protective film comprising a protective substrate layer (surface protective layer) and an adhesive surface/layer (pattern layer). Accordingly, the hard coat layer (ionizing radiation curable resin layer) and pattern layer are in direct contact with each other.
The ionizing curable resin can be polyolefin resin (see paragraph 0013). The ionizing radiation-reactive plasticizer can be acrylic resin (i.e. resin having a (meth)acryloyl group or a (meth)acrylate backbone) (see paragraph 0014). The ionizing radiation-reactive plasticizer reads on an active-energy curable resin. The polymerization inhibitor can be quinone-based compound such as hydroquinone or nitrogen-containing compound such as phenylhydroxyamine (see paragraph 0017). The amount of ionizing curable resin is 100 parts by weight, the amount of the ionizing radiation-reactive plasticizer is 10 to 50 parts by weight and the amount of the polymerization inhibitor is 0.05 to 0.5 parts by weight (see paragraph 0012). Accordingly, the amount of the polymerization inhibitor is 0.045 to 0.33 wt% (0.045 = 0.05/110.05 x 100 and 0.33 = 0.5/150.5 x 100).
The ionizing radiation curable resin layer 2 (hard coat layer) comprising the ionizing radiation-reactive plasticizer such as acrylic resin and 0.045 to 0.33 wt% of polymerization inhibitor reads on hard coat layer that is UV curable as presently claimed.
The pattern layer 3 (adhesive surface/layer) comprising the ionizing curable resin such as polyolefin resin reads on adhesive surface/layer as presently claimed. Based on aforementioned amounts, the amount of the ionizing curable resin (polyolefin resin) is 66 to 91 wt% (66 = 100/150.5 x 100 and 91 = 100/110.05 x 100). As evidenced by the present specification, the protective layer can be a two-layer protective film consisting of an adhesive layer that makes direct contact with a hard coat layer and a substrate, wherein the adhesive layer comprises 80 wt% or more of polyolefin resin (see paragraphs 0201, 0209 and 0210 of published application). Given that the pattern layer 3 of Takahashi comprises 66 to 91 wt% of polyolefin that overlaps with the amount of polyolefin in adhesive layer of present application, the adhesive surface of pattern layer 3 of Takahashi would be identical to the adhesive surface of adhesive layer of present application. Therefore, it is inherent or obvious that an adhesive surface of the pattern layer of Takahashi has a surface energy as presently claimed. Further, there is no disclosure of any roughness on the adhesive surface of the pattern layer 3 of Takahashi. Therefore, the adhesive surface of the protective film has a surface roughness of 0.
Accordingly, the pattern layer and surface protective layer together (protective film) of Takahashi is identical to the protective film comprising two layers as presently claimed. Therefore, given that the protective film of Takahashi is identical to that presently claimed, it is inherent or obvious that the protective film is peelable from the laminate, absent evidence to the contrary.
Takahashi discloses to prepare the laminate, a transfer film comprising a pattern layer 3, the surface protective layer 4 and a release film is prepared (see paragraph 0019). Then, the transfer film is laminated on the ionizing radiation curable resin layer 2, followed by irradiating the whole laminate with ionizing radiation (UV curable) to cure the ionizing curable resin in each layer and separating the release layer (see Abstract and paragraphs 0007, 0019). Accordingly, each layer containing the ionizing curable resin such as the ionizing radiation curable resin layer 2 (hard coat layer), the pattern layer 3 (adhesive layer) and the surface protective layer 4 (protective substrate layer) is post-cured layer.
Further, Takahashi et al. disclose when thermoforming such as embossing or vacuum forming is performed in an uncured state, a polymerization inhibitor is added to prevent curing during heat processing (see paragraph 0012). Accordingly, Takahashi et al. disclose the laminate can be a thermoformable laminate.
While Takahashi disclose the substrate can be a synthetic resin (see paragraph 0010), Takahashi et al. do not disclose the substrate comprises a thermoplastic resin as presently claimed. While Takahashi et al. disclose the polymerization inhibitor, Takahashi et al. do not disclose the polymerization inhibitor as presently claimed.
Tomomatsu et al. disclose a hard coat layer on a transparent-resin film layer that serves as a transparent film substrate for forming the hard coat layer (see Abstract and paragraph 0096). The transparent film substrate can be aromatic polycarbonate film, acrylic film or a laminate of poly(meth)acrylic imide resin film (i.e. acrylic resin film)/aromatic polycarbonate film/ poly(meth)acrylic imide resin film (i.e. acrylic resin film) (see paragraphs 0099, 0100). These films provide high transparency (see paragraph 0096 and 0101). The aromatic polycarbonate can be bisphenol-A-based polycarbonate (see paragraph 0111). The poly(meth)acrylic imide resin provides high transparency, high surface hardness, high rigidity and excellent heat resistance and dimensional stability (see paragraph 0101).
In light of motivation for using transparent film substrate such laminate of poly(meth)acrylic imide resin film (i.e. acrylic resin film)/aromatic polycarbonate film/ poly(meth)acrylic imide resin film (i.e. acrylic resin film), wherein aromatic polycarbonate is bisphenol-A-based polycarbonate as disclosed by Tomomatsu et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use transparent film substrate such laminate of poly(meth)acrylic imide resin film (i.e. acrylic resin film)/aromatic polycarbonate film/ poly(meth)acrylic imide resin film (i.e. acrylic resin film), wherein aromatic polycarbonate is bisphenol-A-based polycarbonate as the substrate in Takahashi in order to provides high transparency, high surface hardness, high rigidity and excellent heat resistance and dimensional stability, and thereby arrive at the claimed invention.
Takahashi in view of Tomomatsu et al. disclose the thermoformable laminate as set forth above. While Takahashi et al. disclose the polymerization inhibitor, Takahashi et al. in view of Tomomatsu et al. do not disclose the polymerization inhibitor as presently claimed.
Nagate et al. disclose a polymerization inhibitor such as N-isopropyl-N’-phenyl-p-phenylenediamine improve storage stability (see paragraph 0089).
In light of motivation for using a polymerization inhibitor such as N-isopropyl-N’-phenyl-p-phenylenediamine disclosed by Nagate et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use N-isopropyl-N’-phenyl-p-phenylenediamine as the polymerization inhibitor in Takahashi in view of Tomomatsu et al. in order to improve storage stability, and thereby arrive at the claimed invention.
Regarding claim 6, Takahashi in view of Tomomatsu et al. disclose the thermoformable laminate as set forth above. Further, Tomomatsu et al. disclose the hard coat can comprise additives such as inorganic fine particles having an average particle size of 300 nm or less can be added to keep the transparency of the hard coat layer and to improve surface hardness of the hard coat layer (see paragraphs 0084, 0085, 0086 and 0089). The inorganic fine particles having an average particle size of 300 nm or less read on nanoparticles.
In light of motivation for using inorganic fine particles having an average particle size of 300 nm or less disclosed by Tomomatsu et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use inorganic fine particles having an average particle size of 300 nm (i.e. nanoparticles) in the ionizing radiation curable resin layer (hard coat layer) of Takahashi in order to improve transparency and surface hardness of the ionizing radiation curable resin layer, and thereby arrive at the claimed invention.
Regarding claim 7, Takahashi in view of Tomomatsu et al. disclose the thermoformable laminate as set forth above. Further, Tomomatsu et al. disclose the hard coat can comprise additives such as leveling agents (see paragraph 0084).
Therefore, as taught by Tomomatsu et al., it would have been obvious to one of the ordinary skills in the art to add leveling agent to the ionizing radiation curable resin layer (hard coat layer) of Takahashi in order to improve leveling properties, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 12/05/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicants argue that thus, amended claim 1 recites that the adhesive layer constituting the protective film is in direct contact with the hard-coat layer. In contrast, in Takahashi, it is the pattern layer that is in direct contact with the hard-coat layer. Thus, Applicant respectfully submits that the subject matter of amended claim 1 is clearly distinguishable from Takahashi. This remains true even if the "image layer + surface protective layer" in Takahashi is interpreted as a two-layer protective film.
It is agreed that Takahashi disclose a pattern layer that is in direct contact with the hard-coat layer. However, the pattern layer 3 (adhesive surface/layer) comprising the ionizing curable resin such as polyolefin resin reads on adhesive surface/layer as presently claimed. Based on aforementioned amounts, the amount of the ionizing curable resin (polyolefin resin) is 66 to 91 wt% (66 = 100/150.5 x 100 and 91 = 100/110.05 x 100). As evidenced by the present specification, the protective layer can be a two-layer protective film consisting of an adhesive layer that makes direct contact with a hard coat layer and a substrate, wherein the adhesive layer comprises 80 wt% or more of polyolefin resin (see paragraphs 0201, 0209 and 0210 of published application). Given that the pattern layer 3 of Takahashi comprises 66 to 91 wt% of polyolefin that overlaps with the amount of polyolefin in adhesive layer of present application, the adhesive surface of pattern layer 3 of Takahashi would be identical to the adhesive surface of adhesive layer of present application. The pattern layer reads on adhesive layer, wherein the pattern layer is in direct contact with the hard coat layer.
Applicant submits that neither Tomomatsu nor Nagate compensate for the shortcomings of Takahashi discussed above. And in response to the Office Action sections 50 and 51, Applicant does not suggest that Tomomatsu and Nagate are defective because they do not disclose all features of claim 1. Rather, Applicant argues that the disclosures of Tomomatsu and Nagate do not remedy the shortcomings of Takahashi discussed above, such that the rejection should be withdrawn.
However, as set forth above it is the examiner’s position that Takahashi does not have a shortcoming regarding the claimed adhesive layer as argued by applicant and therefore, there is no need for Tomomatsu and Nagate to remedy the alleged shortcoming.
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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787