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 .
Response to Amendment
Amendments to the claims, filed on 6/2/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
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
Claims 1, 2, 6, 7, 9, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kono et al (JP 2015-104883 A) in view of Yajima (JP 2019/147885 A).
Regarding claims 1, 6, 7, and 17, Kono teaches a film insert molded article (e.g., thermoformed body) comprising a shaped curable insert film comprising a base material layer (e.g., resin layer C) (15) and a curable hardcoat layer (e.g., resin layer B-2) (14) layered on the base material; and a thermoplastic resin layer (e.g., resin layer A)(13) layered on the base material side of said insert film and/or the surface of the insert film on the other side from the curable hardcoat layer, wherein, a curable hardcoat layer (e.g., resin layer B-2) of the insert film is in an uncured state (abstract; page 2, 4, 6, 13, 17, 29; fig 1b). Kono further teaches the curable hardcoat layer contains a leveling agent (page 16). Kono teaches resin layer B-2 is cured by ionizing radiation (i.e., an active energy ray-curable resin); and may comprise epoxy acrylates (i.e. having a (meth)acryloyl group and is a (meth)acrylate polymer) (page 3, 14, 16).
Kono teaches the hardcoat layer (e.g., resin layer B-2) comprising a resin (e.g., resin b-1) should have hardness and the resin may comprise fillers (page 16-17); wherein it was known in the art at the time of invention to use nanoparticles (e.g., 0.1 µm) as a hard dispersed phase (i.e., filler) to add hardness to resins (page 12).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to add and adjust the amount of nanoparticles in the hardcoat layer of Kono to optimize its hardness.
Kono fails to suggest the (meth)acrylate polymer has a (meth)acrylic equivalent weight of 360 to 750 and a weight average molecular weight of 4,500 to 50,000.
Yajima teaches a resin film (e.g., hard coat) and a laminate; wherein the resin film an active energy ray-curable resin having a (meth)acryloyl group, the active energy ray-curable resin having a (meth)acryloyl group is a (meth)acrylate polymer; the (meth)acrylate polymer (i.e., reactive methacrylate) that has a (meth)acrylic equivalent weight of 200 to 2,000 and a weight average molecular weight preferably of 2,500 to 95,000; wherein the active energy ray-curable resin further comprises fillers and leveling agents; wherein the resin film being used as a hard coat layer exhibits high hardness and good moldability such as stretchability (page 2-4, 6-7).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the active energy ray-curable resin composition of Yajima with the curable hardcoat layer of Kono for a curable hard coat resin that exhibits high hardness and good moldability such as stretchability. Furthermore, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (MPEP § 2144.06 I); and it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Yajima teaches the (meth)acrylate polymer (i.e., reactive methacrylate) has a (meth)acrylic equivalent weight of 200 to 2,000 and a weight average molecular weight preferably of 2,500 to 95,000 (page 4). These ranges substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Yajima, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Kono as modified by Yajima teaches or would have otherwise rendered obvious to one of ordinary skill in the art at the time of invention the composition of the hardcoat layer of the instant claims, so it is deemed to possess the same properties of the embodiment of the instant claims. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
The Examiner notes an Kono teaches an additional hardcoat layer (B-1) on the side of the thermoplastic resin layer (e.g., resin layer A)(13) (abstract; page 29; fig 1b); but due to its location and the metes and bounds of the instant claim structure it would not be considered part of the insert film (i.e., comprising a base material layer and a curable hardcoat layer).
Regarding claim 2, the limitation of the instant claim is a product by process limitation and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 2 and the product of Kono.
Regarding claim 9, Kono teaches a film insert molded article which is obtained by curing the curable hardcoat layer of the film insert molded article according to claim 1 (page 3).
Regarding claim 19, Kono teaches a protective film layered on the hardcoat layer in contact with the surface of the hardcoat layer on the other side of the base material layer (page 3, 22).
Response to Arguments
Applicant’s arguments with respect to the instant claims have been considered but are moot due to the new grounds of rejection under 35 U.S.C. 103 in view of a new combination of prior art of record. The Applicant is directed to the 35 USC § 103 section above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/ Primary Examiner, Art Unit 1783
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