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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/17/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 6-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the cycloolefin [4] comprises a polymer of at least one monomer”. While there is support for one of the listed monomers as presently claimed in the present specification (see paragraphs 0016, 0027), there is no support for “at least one monomer”, i.e. combination of monomers as presently claimed. This rejection affects all the dependent claims.
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 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (JP2011123000A cited in IDS) in view of Mitsui et al. (WO 2017/195697 A1) and Baugh et al. (US 2012/0071605 A1 cited in IDS), taken in view of evidence by Zeonor (Zeonor 1060R, 2016 cited in IDS). It is noted that when utilizing Mitsui et al., the disclosures of the reference are based on US 2019/0079379 A1 (cited in IDS) which is an English language equivalent of the reference. Therefore, the paragraph numbers cited with respect to Mitsui et al. are found in US ‘379.
Regarding claims 1 and 7-10, Saito et al. disclose a microchannel chip (assembly) comprising a first resin substrate (shaped product) and a second resin substrate (shaped product), wherein a first channel is formed on a surface of the first resin substrate and a second channel is formed on a surface of the second resin substrate (see Abstract). The first resin substrate can be a square shape or a rectangular shape having thickness of 0.5 to 3 mm, i.e. shaped product having a shape of a flat plate (see paragraphs 0019, 0020). The second resin substrate can be a square shape or a rectangular shape having thickness of 0.5 to 3 mm, i.e. shaped product having a shape of a flat plate (see paragraphs 0027, 0028). Each of the first resin substrate and the second resin substrate can be made of cyclic polyolefin such as Zeonor 1060R (see paragraphs 0021, 0029, 0060). As evidenced by Zeonor, Zeonor 1060R has glass transition temperature of 100 °C (see page 6). The first resin substrate and the second resin substrate can be bonded with an adhesive (joining layer) (see paragraph 0054).
Saito et al. do not disclose the joining layer (adhesive) as presently claimed.
Mitsui et al. disclose an adhesion layer 160 between a first support member 141 and a second support member 149 (see Figure 2 and paragraphs 0059, 0064). The adhesion layer comprises a resin such as cycloolefin polymer having a number average molecular weight of 1000 to 1000000 and a glass transition temperature of 40 to 150 °C (see paragraph 0177). An example of a monomer used to prepare the cycloolefin polymer includes bicyclo[2.2.1]hept-2-ene (see page 6, starting monomer in reaction scheme and paragraph 0115). When the glass transition is lower than 40 °C, the adhesion layer cannot withstand high temperature and high pressure upon joining the first support member and the second support member, and an exfoliation occurs, and when the glass transition temperature is higher than 150 °C, then adhesiveness is poor (see paragraph 0177). The first support member 141 and the second support member 149 each can be made of a cycloolefin resin (see paragraphs 0121, 0124).
In light of motivation for using adhesion layer disclosed by Mitsui et al. as described above, it therefore would have been obvious to one of ordinary skill in the art to use adhesion layer of Mitsui et al. to bond the first resin substrate and the second resin substrate in Saito et al. in order to improve adhesion between the first resin substrate and the second resin substrate and prevent exfoliation, and thereby arrive at the claimed invention.
Saito et al. in view of Mitsui et al. do not disclose the adhesive (joining layer) comprises a softening agent.
Baugh et al. disclose a polymer composition comprising cyclic olefin polymer having Tg of greater than 60 °C and 0.1 to 50 wt% of a non-functionalized plasticizer (softening agent) having a kinematic viscosity of 3 to 3000 cSt, i.e. 3 to 3000 mm2/s (see Abstract). The non-functionalized plasticizer is a hydrocarbon that contains less than 0.001% of carbons involved in olefinic bonds/unsaturation (see paragraph 0124). Accordingly, the non-functionalized plasticizer is saturated, i.e. hydrogenated product. An example of the non-functionalized plasticizer includes fluid paraffins (i.e. liquid paraffin) having saturates of 99 wt% of higher (i.e. hydrogenated product) (see paragraphs 0147 and 0148). Accordingly, the non-functionalized plasticizer can be hydrogenated product of liquid paraffin. The polymer composition has a combination of high stiffness, impact toughness and thermal stability (see paragraph 0021).
In light of motivation for using 0.1 to 50 wt% of non-functionalized plasticizer (softening agent) such as hydrogenated product of liquid paraffin disclosed by Baugh et al. as described above, it therefore would have been obvious to one of ordinary skill in the art to use 0.1 to 50 wt% of non-functionalized plasticizer (softening agent) such as hydrogenated product of liquid paraffin of Baugh et al. in the adhesive of Saito et al. in view of Mitsui et al. in order to provide a combination of high stiffness, impact toughness and thermal stability, and thereby arrive at the claimed invention.
Accordingly, Saito et al. in view of Mitsui et al. and Baugh et al. disclose the adhesive (joining layer) comprising 5 to 100 wt% of the polycycloolefin and 0.1 to 50 wt% of the softening agent. According to the present claim, the amount of cyclic olefin is 50 to 94 wt% and the amount of softening agent is 6 to 50 wt%. Given that adhesive (joining layer) comprises softening agent and shaped products does not comprise softening agent, the adhesive (joining layer) has a material constitution different form the shaped products.
Saito et al. in view of Mitsui et al. and Baugh et al. do not disclose the joining layer (adhesive) having a haze as presently claimed. However, given that the joining layer of Saito et al. in view of Mitsui et al. and Baugh et al. is identical to that presently claimed, it is inherent or obvious that the joining layer has a haze as presently claimed.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (JP2011123000A cited in IDS) in view of Mitsui et al. (WO 2017/195697 A1) and Baugh et al. (US 2012/0071605 A1), taken in view of evidence by Zeonor (Zeonor 1060R, 2016 cited in IDS) as applied to claim 1 above, further in view of Heukelbach et al. (US 2006/0020084 A1 cited in IDS).
Regarding claim 6, Saito et al. in view of Mitsui et al. and Baugh et al. disclose the assembly as set forth above. Saito et al. in view of Mitsui et al. and Baugh et al. do not disclose a surface of shaped products is subjected to one or more treatments as presently claimed.
Heukelbach et al. disclose the surfaces of the film can be corona or flame treated to prepare for subsequent inscription or printing (see paragraph 0034). Therefore, as taught by Heukelbach et al., it would have been obvious to one of ordinary skill in the art to subject surface of shaped products of Saito et al. to corona or flame treatment in order to prepare for subsequent inscription or printing, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 07/17/2026 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments are moot in light of new grounds of rejections.
Conclusion
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
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