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 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.
Claim(s) 1-3 and 5-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tagami (JP 2013-188871).
Regarding claim 1 and 5, Tagami discloses primer layer, i.e. a coating, comprising isocyanate compound, i.e. polyisocyanate component, acrylic polyol (0006, 0010, 0024), and methyl acetate, i.e. organic solvent containing alkyl ester, (0038) wherein the polyisocyante component includes an aromatic ring containing isocyanate (0030) and acrylic polyol is a polymer of a monomer composition containing a hydroxyl group containing polymerizable monomer and a carboxyl group containing polymerizable monomer (0028). Given that Tagami does not disclose acrylonitrile in the coating layer, it is clear that the coating of Tagami is free of acrylonitrile.
Tagami is silent regarding equivalent ratio of isocyanate group of the polyisocyanate component to hydroxyl group of polyol component and a mass ratio of carboxyl containing monomer to the hydroxyl group containing monomer.
Since the instant specification is silent to unexpected results, the specific equivalent ratio isocyanate groups of the polyisocyanate component to hydroxyl group of polyol component and a mass ratio of carboxyl containing monomer to the hydroxyl group containing monomer is not considered to confer patentability to the claims. As the film quality and adhesion that can be modified (0034-0037), among others, by adjusting the amounts of polyisocyanate component and acrylic polyol, the precise amounts would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amounts cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amounts of each component in the coating to obtain the desired film quality and adhesion (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 2, Tagami discloses the coating composition of claim 1, wherein the aromatic ring containing isocyanate includes tetramethylxylylene diisocyanate (0030).
Regarding claim 3, Tagami discloses the coating composition of claim 1, wherein the monomer composition includes styrene monomer, i.e. an aromatic vinyl monomer, (0028).
Regarding claim 6, Tagami discloses the coating composition of claim 1, wherein a content ratio of the carboxyl group containing monomer is 5 parts by mass with respect to 100 parts by mass of the total amount of the monomer composition (table 1, example 11).
Regarding claim 7, Tagami discloses the coating composition of claim 1, wherein given that Tagami discloses the same acrylic polyol as claimed in present claim, it is clear that the acrylic polyol of Tagami would inherently have the same properties as present claim.
Regarding claim 9, Tagami discloses a laminate comprising a resin layer 32, an inorganic thin film layer 13 disposed on one side in the thickness direction of the resin film, a primer layer 12 made of composition of claim 1, i.e. cured product of polyisocyanate component and acrylic polyol (polyurethane), (0032, 0038) disposed on one side in the thickness direction of the inorganic thin film layer, an adhesive layer 31 disposed on one side in the thickness direction of the polyurethane layer, and a heat sealable film 32 disposed on one side in the thickness direction of the adhesive layer (0052, 0069, fig. 3).
Regarding claim 10, Tagami discloses the laminate of claim 9, wherein the organic thin film layer includes silicon oxide (0042).
Regarding claim 11, Tagami discloses the laminate of claim 9, wherein the resin film includes polyethylene resin, i.e. polyolefin resin, (0052-0053).
Response to Arguments
Applicant's arguments filed 09/08/2025 have been fully considered but they are not persuasive.
Applicant points to examples in specification and argues the criticality of using the equivalent ratio of polyisocyanate component to hydroxyl groups of the polyol. However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims. The examples disclose specific type and amounts of polyisocyanate component, acrylic polyol and organic solvent while the present claim broadly recites any type and amount of polyisocyanate component, acrylic polyol and organic solvent. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range.
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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