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 01/29/2026 is acknowledged. The previous rejection is maintained in this office action. Claims 1-5 and 9-15 are examined on the merits in this office action.
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 1-5 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayasu et al. (WO 2016/060100 A1 cited in IDS) in view of Malinoski (US 2015/0226910 A1) and Nakashima et al. (WO 2016/147739 A1 cited in IDS). It is noted that when utilizing Nakayasu et al., the disclosures of the reference are based on which is an English language equivalent of the reference. Therefore, the paragraph numbers cited with respect to Nakayasu et al. are found in US ‘089. It is noted that when utilizing Nakashima et al., the disclosures of the reference are based on US 2018/0072029 A1 which is an English language equivalent of the reference. Therefore, the paragraph numbers cited with respect to Nakashima et al. are found in US ‘029.
Regarding claims 1-5 and 13-15, Nakayasu et al. disclose a synthetic resin laminated sheet (multilayer sheet) and a molded article obtained from the multilayer sheet wherein the multilayer sheet comprises an acrylic resin layer laminated in at least one surface of a substrate layer comprising a polycarbonate resin (see Abstract and paragraph 0010). The polycarbonate resin is prepared from aromatic dihydroxy compound (see paragraph 0013). That is, the polycarbonate resin is an aromatic polycarbonate resin. The acrylic resin is prepared from methyl (meth)acrylate (see paragraph 0168). Accordingly, Nakayasu et al. disclose a multilayer film comprising a first acrylic resin layer, an aromatic polycarbonate resin layer and a second acrylic resin layer directly laminated in the order.
The glass transition temperature of the polycarbonate resin is 100 to 135 °C (see paragraph 0149). Further, the difference between the glass transition temperature of the acrylic resin layer (first acrylic resin layer and the second acrylic resin layer) and the aromatic polycarbonate resin layer is 0 to 30 °C (see paragraphs 0038, 0041).
Nakayasu et al. do not disclose polycarbonate resin as presently claimed. Nakayasu et al. do not disclose acrylic resin as presently claimed. Nakayasu et al. do not disclose Tb-Ta1 ≤ 30 and Tb-Ta2 ≤ 30. Nakayasu et al. do not disclose a total light transmittance of the multilayer film is 85% or more. Nakayasu et al. do not disclose a retardation of the multilayer film is 75 nm or less or 50 nm or less or 40 nm or less or 30 nm or less.
Malinoski discloses a polycarbonate copolymer such as a poly(aliphatic ester)-polycarbonate copolymer which exhibit balance of high flow properties, high optical transmission and clarity, low color, high ductility, and good impact properties (see paragraphs 0044, 0058, 0059, 0060, 0061 and 0062). The poly(aliphatic ester)-polycarbonate copolymer comprises 93 to 96 mol% of a structural unit (carbonate units) derived from bisphenol A (aromatic dihydroxy compound such as 2,2-bis(4-hydroxyphenyl)propane) and 4 to 7 mol% of a structural unit (ester units) derived from sebacic acid (aliphatic dicarboxylic acid) (see paragraphs 0051,0052, 0054). The poly(aliphatic ester)-polycarbonate copolymer has a glass transition temperature of from 110 to 145 °C (see paragraph 0015). Accordingly, the poly(aliphatic ester)-polycarbonate copolymer reads on aromatic polycarbonate resin as presently claimed. Further, the poly(aliphatic ester)-polycarbonate copolymer is suitable for producing molded articles (see paragraph 0081).
In light of motivation for using poly(aliphatic ester)-polycarbonate disclosed by Malinoski as described above, it therefore would have been obvious to one of the ordinary skill in the art to use poly(aliphatic ester)-polycarbonate of Malinoski as the polycarbonate resin in Nakayasu et al. in order to exhibit balance of high flow properties, high optical transmission and clarity, low color, high ductility, and good impact properties, and thereby arrive at the claimed invention.
Nakayasu et al. in view of Malinoski do not disclose acrylic resin as presently claimed. Nakayasu et al. in view of Malinoski do not disclose Tb-Ta1 ≤ 30 and Tb-Ta2 ≤ 30. Nakayasu et al. in view of Malinoski do not disclose a total light transmittance of the multilayer film is 85% or more. Nakayasu et al. in view Malinoski do not disclose a retardation of the multilayer film is 75 nm or less or 50 nm or less or 40 nm or less or 30 nm or less.
Nakashima et al. disclose a multilayer resin film comprising a layer of acrylic resin, a layer of aromatic polycarbonate, and a layer of acrylic resin (see paragraph 0009) wherein the acrylic resin layer comprises an acrylic resin comprising 50 to 95 mol% of methyl methacrylate and 5 to 50 mol% of vinyl cyclohexane (see Abstract). The acrylic resin provides curling resistance (see paragraph 0139).
In light of motivation for using an acrylic resin comprising 50 to 95 mol% of methyl methacrylate and 5 to 50 mol% of vinyl cyclohexane disclosed by Nakashima et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use an acrylic resin comprising 50 to 95 mol% of methyl methacrylate and 5 to 50 mol% of vinyl cyclohexane of Nakashima et al. as the first acrylic resin and the second acrylic resin in Nakayasu et al. in view of Malinoski in order to provide curling resistance, and thereby arrive at the claimed invention.
Nakayasu et al. in view of Malinoski and Nakashima et al. do not disclose Tb-Ta1 ≤ 30 and Tb-Ta2 ≤ 30. Nakayasu et al. in view of Malinoski and Nakashima et al. do not disclose a total light transmittance of the multilayer film is 85% or more. Nakayasu et al. in view of Malinoski and Nakashima et al. do not disclose a retardation of the multilayer film is 75 nm or less or 50 nm or less or 40 nm or less or 30 nm or less.
Given that the multilayer film including a first acrylic resin layer, an aromatic polycarbonate resin layer, and a second acrylic resin layer of Nakayasu et al. in view of Malinoski and Nakashima et al. is identical to that presently claimed including first acrylic resin, aromatic polycarbonate resin, and a second acrylic resin each made from monomers identical to that presently claimed in amounts identical that presently claimed, it is clear that the multilayer film of Nakayasu et al. in view of Malinoski and Nakashima et al. would necessarily inherently have the same (Tb-Ta1), (Tb-Ta2), total light transmittance, and retardation as presently claimed.
Regarding claim 9, given that the multilayer film including a first acrylic resin layer, an aromatic polycarbonate resin layer, and a second acrylic resin layer of Nakayasu et al. in view of Malinoski and Nakashima et al. is identical to that presently claimed including first acrylic resin, aromatic polycarbonate resin, and a second acrylic resin each made from monomers identical to that presently claimed in amounts identical that presently claimed, it is clear that the multilayer film of Nakayasu et al. in view of Malinoski and Nakashima et al. would necessarily inherently have the same water absorption as presently claimed.
Regarding claims 10-12, Nakayasu et al. disclose a laminated synthetic sheet (hard coat laminated film) comprising a hard coat layer laminated on surface of the acrylic resin layer (see paragraph 0029). Further, Nakayasu et al. disclose an article comprising the laminated synthetic sheet (see paragraph 0031). That is, Nakayasu et al. disclose an article as presently claimed.
Claims 1-5 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayasu et al. (WO 2016/060100 A1 cited in IDS) in view of Malinoski (US 2015/0226910 A1) and Carloff et al. (US 2016/0122525 A1 cited in IDS). It is noted that when utilizing Nakayasu et al., the disclosures of the reference are based on US 2017/0306089 A1 which is an English language equivalent of the reference. Therefore, the paragraph numbers cited with respect to Nakayasu et al. are found in US ‘089.
Regarding claims 1-5 and 13-15, Nakayasu et al. disclose a synthetic resin laminated sheet (multilayer sheet) and a molded article obtained from the multilayer sheet wherein the multilayer sheet comprises comprising an acrylic resin layer laminated in at least one surface of a substrate layer comprising a polycarbonate resin (see Abstract and paragraph 0010). The polycarbonate resin is prepared from aromatic dihydroxy compound (see paragraph 0013). That is, the polycarbonate resin is an aromatic polycarbonate resin. The acrylic resin is prepared from methyl (meth)acrylate (see paragraph 0168). Accordingly, Nakayasu et al. disclose a multilayer film comprising a first acrylic resin layer, an aromatic polycarbonate resin layer and a second acrylic resin layer directly laminated in the order.
The glass transition temperature of the polycarbonate resin is 100 to 135 °C (see paragraph 0149). Further, the difference between the glass transition temperature of the acrylic resin layer (first acrylic resin layer and the second acrylic resin layer) and the aromatic polycarbonate resin layer is 0 to 30 °C (see paragraphs 0038, 0041).
Nakayasu et al. do not disclose polycarbonate resin as presently claimed. Nakayasu et al. do not disclose acrylic resin as presently claimed. Nakayasu et al. do not disclose Tb-Ta1 ≤ 30 and Tb-Ta2 ≤ 30. Nakayasu et al. do not disclose a total light transmittance of the multilayer film is 85% or more. Nakayasu et al. do not disclose a retardation of the multilayer film is 75 nm or less or 50 nm or less or 40 nm or less or 30 nm or less.
Malinoski discloses a polycarbonate copolymer such as a poly(aliphatic ester)-polycarbonate copolymer which exhibit balance of high flow properties, high optical transmission and clarity, low color, high ductility, and good impact properties (see paragraphs 0044, 0058, 0059, 0060, 0061 and 0062). The poly(aliphatic ester)-polycarbonate copolymer comprises 93 to 96 mol% of a structural unit (carbonate units) derived from bisphenol A (aromatic dihydroxy compound such as 2,2-bis(4-hydroxyphenyl)propane) and 4 to 7 mol% of a structural unit (ester units) derived from sebacic acid (aliphatic dicarboxylic acid) (see paragraphs 0051,0052, 0054). The poly(aliphatic ester)-polycarbonate copolymer has a glass transition temperature of from 110 to 145 °C (see paragraph 0015). Accordingly, the poly(aliphatic ester)-polycarbonate copolymer reads on aromatic polycarbonate resin as presently claimed. Further, the poly(aliphatic ester)-polycarbonate copolymer is suitable for producing molded articles (see paragraph 0081).
In light of motivation for using poly(aliphatic ester)-polycarbonate disclosed by Malinoski as described above, it therefore would have been obvious to one of the ordinary skill in the art to use poly(aliphatic ester)-polycarbonate of Malinoski as the polycarbonate resin in Nakayasu et al. in order to exhibit balance of high flow properties, high optical transmission and clarity, low color, high ductility, and good impact properties, and thereby arrive at the claimed invention.
Nakayasu et al. in view of Malinoski do not disclose acrylic resin as presently claimed. Nakayasu et al. in view of Malinoski do not disclose Tb-Ta1 ≤ 30 and Tb-Ta2 ≤ 30. Nakayasu et al. in view of Malinoski do not disclose a total light transmittance of the multilayer film is 85% or more. Nakayasu et al. in view of Malinoski do not disclose a retardation of the multilayer film is 75 nm or less or 50 nm or less or 40 nm or less or 30 nm or less.
Carloff et al. disclose a resin composition comprising an acrylic resin comprising at least 30 wt% of methyl methacrylate and unsaturated monomer such as vinyl cyclohexane copolymerizable with methyl methacrylate (see paragraphs 0032 and 0034). That is, amount of methyl methacrylate is 30 to 100 wt% and amount of vinyl cyclohexane is 0 to 70 wt%. Given that the molecular weight of methyl methacrylate is ~100 and the molecular weight of vinyl cyclohexane is ~110, when there is present 30 wt.% methyl methacrylate and 70 wt.% vinyl cyclohexane, it is calculated that there is present 0.3 moles (30/100) methyl methacrylate and 0.6363 moles (70/110) vinyl cyclohexane or 32.04 mol% 0.3/(0.3+0.6363)) methyl methacrylate and 67.96 mol% (0.6363/(0.3+0.6363)) vinyl cyclohexane. Therefore, Carloff et al. discloses acrylic resin made from 32.04-100 mol% methyl methacrylate and 0-67.96 mol% vinyl cyclohexane. The resin composition has increased heat distortion resistance and lower warpage (see paragraph 0030).
In light of motivation for using a resin composition comprising acrylic resin comprising 32.04 to 100 mol% of methyl methacrylate and 0 to 67.96 mol% of vinyl cyclohexane disclosed by Carloff et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a resin composition comprising acrylic resin comprising 32.04 to 100 mol% of methyl methacrylate and 0 to 67.96 mol% of vinyl cyclohexane of Carloff et al. as the first acrylic resin layer and the second acrylic resin layer in Nakayasu et al. in view of Malinoski in order to provide increased heat distortion resistance and lower warpage, and thereby arrive at the claimed invention.
Nakayasu et al. in view of Malinoski and Carloff et al. do not disclose Tb-Ta1 ≤ 30 and Tb-Ta2 ≤ 30. Nakayasu et al. in view of Malinoski and Carloff et al. do not disclose a total light transmittance of the multilayer film is 85% or more. Nakayasu et al. in view of Malinoski and Carloff et al. do not disclose a retardation of the multilayer film is 75 nm or less or 50 nm or less or 40 nm or less or 30 nm or less.
Given that the multilayer film including a first acrylic resin layer, an aromatic polycarbonate resin layer and a second acrylic resin layer of Nakayasu et al. in view of Malinoski and Carloff et al. is identical to that presently claimed, including first acrylic resin, aromatic polycarbonate resin, and a second acrylic resin each made from monomers identical to that presently claimed in amounts that overlap that presently claimed, within the overlapping ranges, it is clear that the multilayer film of Nakayasu et al. in view of Malinoski and Carloff et al. would necessarily inherently have the same (Tb-Ta1), (Tb-Ta2), total light transmittance, and retardation as presently claimed.
Regarding claim 9, given that the multilayer film including a first acrylic resin layer, an aromatic polycarbonate resin layer and a second acrylic resin layer of Nakayasu et al. in view of Malinoski and Carloff et al. is identical to that presently claimed, including first acrylic resin, aromatic polycarbonate resin, and a second acrylic resin each made from monomers identical to that presently claimed in amounts that overlap that presently claimed, within the overlapping ranges, it is clear that the multilayer film of Nakayasu et al. in view of Malinoski and Carloff et al. would necessarily inherently have the same water absorption as presently claimed.
Regarding claims 10-12, Nakayasu et al. disclose a laminated synthetic sheet (hard coat laminated film) comprising a hard coat layer laminated on surface of the acrylic resin layer (see paragraph 0029). Further, Nakayasu et al. disclose an article comprising the laminated synthetic sheet (see paragraph 0031). That is, Nakayasu et al. disclose an article as presently claimed.
Response to Arguments
Applicant's arguments filed 01/29/2026 have been fully considered but they are not persuasive because of following reasons.
Applicants argue that one of ordinary skill in the relevant art contemplating the teachings set forth in paragraphs 0007-0008 as well as Comparative Example 9 of Nakayasu would have clearly understood that it is a critically important or an essentially required characteristic feature for solving the above problems to use the polycarbonate resin (A), i.e., a polycarbonate resin containing a polycarbonate alone but not containing any other component substantially in Nakayasu.
It is agreed that Nakayasu discloses significance of a polycarbonate resin alone in comparison to an alloy/blend of the polycarbonate resin with the other resin (see paragraphs 0007, 0008, 0271 and 0272). A specific Comparative Example 9 shows that a blend of an aromatic polycarbonate resin with polyester resin mixed in a mass ratio of 70:30 has inferior results in comparison to aromatic polycarbonate resin alone (see paragraphs 0271, 0272 and Tables 1 and 4). While Nakayasu teaches away from blending of the aromatic polycarbonate resin with other resin such as polyester resin, Nakayasu do not teach away from modifying/replacing the aromatic polycarbonate resin.
Applicants argue that Malinoski fails to cure the deficiencies of Nakayasu. Malinoski neither discloses nor suggests that a laminated synthetic resin sheet having an acrylic resin layer laminated on a surface of a polycarbonate resin layer is provided, a HC layer is laminated, or that the laminate is subjected to thermoforming, especially deep-draw molding.
As set forth above, Nakayasu already disclose a multilayer film comprising a first acrylic resin layer, an aromatic polycarbonate resin layer and a second acrylic resin layer. Malinoski has been only used to teach a specific polycarbonate resin such as a poly(aliphatic ester)-polycarbonate copolymer that is suitable for preparing molded articles. Further, note that while Malinoski do not disclose all the features of the present claimed invention, Malinoski is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely poly(aliphatic ester)-polycarbonate copolymer, and in combination with the primary reference, discloses the presently claimed invention.
Applicants argue that one of ordinary skill in the relevant art would not have been motivated by the teachings of either Nakayasu or Malinoski to substitute the poly(aliphatic ester)-polycarbonate copolymer of Malinoski for the polycarbonate resin (A) of Nakayasu. The Examiner considers it "in order to exhibit balance of high flow properties, high optical transmission and clarity, low color, high ductility, and good impact properties". Applicant respectfully disagrees. The balance of these properties does not provide any evidence for the motivation of the skilled person to change the critically important or essentially required characteristic feature for solving the above problems in Nakayasu. On the contrary, Nakayasu clearly teaches that the inclusion of a component other than a polycarbonate into the polycarbonate resin (A) constituting the substrate layer resulted in the production of a laminate with poor appearance, i.e., the problems described in Nakayasu could not be solved thereby. In sharp contrast to Nakayasu, the poly(aliphatic ester)-polycarbonate copolymer of Malinoski clearly contains a component "poly(aliphatic ester)" other than a polycarbonate. Accordingly, Nakayasu teaches away from the poly(aliphatic ester)-polycarbonate copolymer of Malinoski, which contains a component "poly(aliphatic ester)" other than a polycarbonate.
While Nakayasu teaches away from blending of the aromatic polycarbonate resin with other resin such as polyester resin, Nakayasu do not teach away from modifying/replacing the aromatic polycarbonate resin. As set forth above in the office action, the examiner is not using Malinoski to blend the aromatic polycarbonate resin with other resin such as poly(aliphatic ester) resin. Instead, the examiner is replacing aromatic polycarbonate resin of Nakayasu with poly(aliphatic ester)-polycarbonate copolymer of Malinoski. Accordingly, Nakayasu in view of Malinoski discloses poly(aliphatic ester)-polycarbonate copolymer as the aromatic polycarbonate resin. It is noted that poly(aliphatic ester)- polycarbonate copolymer is a specific type of polycarbonate resin (copolymer) and it is not a blend of polycarbonate resin with poly(aliphatic ester) resin.
Applicants argue that it would never have been obvious for a person skilled in the art starting from Nakayasu to replace the polycarbonate resin (A) that is the critically important or essentially required characteristic feature for solving the above problems in Nakayasu with the poly(aliphatic ester)- polycarbonate copolymer of Malinoski from which Nakayasu teaches away.
However, while Nakayasu appears to teach away from blend of polycarbonate resin with other resin such as polyester resin (Comparative Example 9), Nakayasu do not have any evidence (i.e. data) to show that replacement of polycarbonate resin with poly(aliphatic ester)- polycarbonate copolymer would provide inferior properties. It is noted that poly(aliphatic ester)- polycarbonate copolymer is a specific type of polycarbonate resin (copolymer) and it is not a blend of polycarbonate resin with poly(aliphatic ester) resin.
Further, given that the poly(aliphatic ester)-polycarbonate copolymer of Malinoski is a specific type of polycarbonate generically disclosed by Nakayasu, it would be reasonable to expect that this specific polycarbonate would necessarily provide the required characteristic features that would also solve the problems in Nakayasu.
Applicants argue that neither Nakashima nor Carloff cures the deficiencies of Nakayasu and Malinoski.
However, note that while Nakashima and Carloff do not disclose all the features of the present claimed invention, Nakashima and Carloff is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely specific acrylic resin by Nakashima and specific acrylic resin by Carloff, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
Prosecution Insights