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
In view of Applicant’s response dated February 5, 2026, claim 1 is amended. Claim 3 is canceled. Claims 8-11 are drawn to a nonelected invention. Claims 1-2 and 4-7 are examined.
Status of Application
In view of Applicant’s amendment to claim 1, the 35 U.S.C. 112(b) rejection of claim 5 as provided in the Office Action dated 10/31/2025 is withdrawn. The rejections provided in the recited Office Action are modified as necessitated by Applicant’s amendments to claim 1.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-2 and 4-7 are 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 1 recites “the chain olefin” in line 13. There is insufficient antecedent basis for this limitation in the claim. Correction is required.
For purpose of compact prosecution, the Examiner has interpreted “the chain olefin” as “the linear olefin” of claim 1. Claims 2 and 4-7 are rejected as depending therefrom.
Claim Rejections - 35 USC § 103
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(s) 1-2 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sumida et al [JP2014151483A, as provided on the IDS dated January 29, 2024, machine translation relied upon previously provided], hereinafter Sumida, in view of Yano [JP2014240174A, as provided on the IDS dated December 28, 2022, machine translation relied upon previously provided], hereinafter Yano.
Regarding Claim 1, Sumida discloses a layered film comprising: a substrate layer [Sumida 0018, a first layer [Sumida 0018, intermediate layer], a second layer [Sumida 0018, release layer], and an ion-exchange resin-containing layer [Sumida 0020, transfer layer] in this order [Sumida 0015-0020]; the substrate layer having no easily adhesive layer [Sumida 0057, Sumida does not teach the substrate has an easily adhesive layer. Thus, Sumida meets the limitation.],
the second layer containing a cyclic olefin-based resin [Sumida 0028 and throughout], and the ion- exchange resin-containing layer containing an ion-exchange resin [Sumida 0093-0094 and throughout], wherein
the cyclic olefin-based resin is a copolymer of a cyclic olefin containing a bicyclic olefin and a linear olefin [Sumida 0030-0033 and throughout, Sumida teaches norbornenes, which are bicyclic, and ethylene, which is a linear olefin.], the linear olefin [see 112(b) above] is ethylene [Sumida 0030-0033], and
a ratio of a cyclic olefin to a linear olefin unit in the cyclic olefin containing a cyclic olefin-based resin (molar ratio) is 40/60 to 99/1 in terms of the former/the latter (molar ratio) [Sumida 0032, 0115 While only one basis of rejection is required, Sumida teaches three bases for rejection of the limitation. First basis of rejection, Example 2 has a ratio of 51/49, which anticipates the claimed range [0115]. Second basis of rejection, Sumida teaches the linear olefin can be 1 to 95 mol%, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Third basis of rejection, Sumida teaches the amount of cyclic olefin-based resin is a result effective variable where if the amount is too high, the heat resistance tends to decrease. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date that the ratio as claimed would also be a result effective variable and determining the workable range by balancing the required heat resistance for the specific application would be obvious per MPEP 2144.05II.]
Regarding the limitation “the substrate layer undergoing no surface treatment”, Sumida teaches a surface treatment may be provided to improve adhesion [Sumida 0024]. The broadest reasonable interpretation of Sumida is that a surface treatment is not required since it merely improves adhesion. Further, it would be within the ambit of the skilled artisan to decide for the specific application if the substrate surface does or does not require surface treatment to enhance adhesion. Further, omission of a step/element and its function is obvious per MPEP 2144.04 IIA. Thus, Sumida meets the limitation.
Regarding the limitation “the first layer containing an acid-modified olefin-based resin and containing no chlorine-containing resin”, Sumida’s first layer may contain a chlorinated polyolefin such as chlorinated polyethylene [Sumida 0058]; therefore, Sumida is silent to the first layer containing an acid-modified olefin-based resin and containing no chlorine-containing resin.
Yano discloses a layered film [Yano 0010 and throughout] comprising: a base material layer [Yano 0010, substrate layer], a first layer [Yano 0010, primer layer], and a second layer [Yano 0010 cyclic polyolefin resin layer] laminated in this order: the first layer containing an acid- modified olefin-based resin and containing no chlorine [Yano 0010, Yano teaches the first layer is an acid-modified polyolefin resin between a substrate and a cyclic olefin-based resin second layer for the purpose of providing sufficient adhesion between the two layers. Yano does not require chlorine-containing resin, and thus meets the limitation.], the second layer containing a cyclic olefin-based resin [Yano 0010]. Yano does not an ion exchange resin layer on the cyclic-olefin-based resin layer; however, Yano discloses the layered film can used as a laminate for electronic applications [Yano 0001-0002] and it would be within the ambit of the skilled artisan to apply Yano’s teachings of a layered laminated structure to Sumida’s layered structure and arrive at the claimed layered film. It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute Yano’s first layer for the first layer of Sumida with the expectation of a layered release film [Sumida 0001, 0020, and throughout] including an ion-exchange resin layer [Sumida 0020 and throughout] where the first layer has sufficient wettability and adhesion with the second layer [Yano 0011].
Regarding Claim 2, modified Sumida discloses the layered film according to claim 1, wherein the acid-modified olefin- based resin is an acid-modified polyethylene-based resin [Yano 0018, The broadest reasonable interpretation of Yano’s disclosure of “the olefin component that is the main component of the acid-modified polyolefin resin is… ethylene” reads on the claimed “acid-modified polyethylene-based resin”.].
Regarding Claim 4, modified Sumida the layered film according to claim 1, wherein an average thickness of the second layer is 30 µm or less [Sumida 0051, Yano 0072 Sumida discloses various ranges of thickness including 0.01 to 3 µm and 0.01 to 300 µm, depending on the required releasability, both of which obviate the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Further, Yano discloses the second layer containing a cyclic olefin-based resin is 0.1 to 30 µm for sufficient wettability and adhesion, which reads on the claimed range.].
Regarding Claim 5, modified Sumida the layered film according to claim 1, wherein the base material layer [Examiner edit, see 112(b) above] contains at least one type selected from the group consisting of a polyolefin [Sumida 0023], polyvinyl alcohol-based polymer [Sumida 0023], polyester [Sumida 0023], polyamide [Sumida 0023], polyimide[Sumida 0023], and cellulose derivative[Sumida 0023].
Regarding Claim 6, modified Sumida the layered film according to claim 1, wherein the first layer further contains a basic compound [Yano 0027- 0029].
Regarding Claim 7, modified Sumida the layered film according to claim 1, wherein the ion-exchange resin is a fluorine resin having a sulfonic acid group or a salt thereof in a side chain [Sumida 0094, 0125], and the ion-exchange resin-containing layer is an electrolyte membrane and/or an electrode membrane [Sumida 0094].
Response to Arguments
Applicant's arguments filed February 2, 2026 have been fully considered but they are not persuasive.
On pgs. 4-6, the Applicant provides a review of the status of the case and recites the Applicant’s position regarding case law. On pgs. 6-10, the Applicant recites selected portions of the prior art of Sumida and Yano, which are provided in the Office Action dated October 31, 2025 with no specific arguments.
2) On pg. 10, the Applicant argues that Sumida and Yano fail to disclose a list of features of claim 1. The Examiner respectfully disagrees with the Applicant’s position. Reference to theses specific features in the prior art is provided in the rejections above and below for convenience.
A) forming a layered film comprising a substrate layer, a first layer, a second layer, and an
ion-exchange resin-containing layer in this order [Sumida 0015-0020 and throughout, Substrate (substrate) with an intermediate layer (first layer) formed on it, a release layer (second layer) formed on the intermediate layer, and a transfer layer, which is an ion exchange resin layer formed on the release layer.];
B) (new limitation) the substrate layer being not subjected to easily adhesive treatment (surface treatment) [Sumida 0024, Sumida teaches a surface treatment may be provided to improve adhesion. The broadest reasonable interpretation of Sumida is that a surface treatment is not required since it merely improves adhesion. Further, it would be within the ambit of the skilled artisan to decide for the specific application if the substrate surface does or does not require surface treatment to enhance adhesion. Further, omission of a step/element and its function is obvious per MPEP 2144.04 IIA. Thus, Sumida meets the limitation.] ;
C) the first layer containing a specific acid-modified olefin-based resin (the term “specific” is unclear as there is no specific acid-modified olefin in the claim) and (new limitation) containing no
chlorine-containing resin [Yano 0010, Yano teaches the first layer is an acid-modified polyolefin resin between a substrate and a cyclic olefin-based resin second layer for the purpose of providing sufficient adhesion between the two layers. Yano does not require chlorine-containing resin, and thus meets the limitation.] ;
D) the second layer containing a cyclic olefin-based resin, wherein the resin is a copolymer
that contains a cyclic olefin containing a bicyclic olefin and ethylene [Sumida 0030-0033 and throughout, Sumida teaches norbornenes, which are bicyclic, and ethylene, which is a linear olefin.] in a specific ratio [Sumida 0032, 0115 While only one basis of rejection is required, Sumida teaches three bases for rejection of the limitation. First basis of rejection, Example 2 has a ratio of 51/49, which anticipates the claimed range [0115]. Second basis of rejection, Sumida teaches the linear olefin can be 1 to 95 mol%, which overlaps and obviates the claimed range. Per MPEP 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Third basis of rejection, Sumida teaches the amount of cyclic olefin-based resin is a result effective variable where if the amount is too high, the heat resistance tends to decrease. Thus, the ratio as claimed would also be a result effective variable and determining the workable range would be obvious per MPEP 2144.05II.];
and/or
E) the ion-exchange resin-containing layer containing an ion-exchange resin [Sumida 0020, 0094-0096].
3) On pg. 11, Applicant argues “that it is difficult for the skilled artisan to directly apply the primer layer of Yano to Sumida” since “Yano does not describe an ion-exchange resin containing layer”. The Examiner respectfully disagrees. Sumida teaches a layered film and applies to all the requirements of claim 1 (including an ion-exchange resin containing layer) except for the acid-modified olefin first layer. Sumida and Yano are considered analogous art in that both teach a layered film with a substrate (polyolefin, polyester are taught by both) [Sumida 0023, Yano 0010], an olefin-based first layer [Sumida 0058, Yano 0010], and an olefin-based second layer including a bicyclic olefin [Sumida 0028-0033 and throughout; Yano 0063] where the first layer is provided for adhesion between the second layer and the substrate [Sumida 0057; Yano 0021, 0072]. Yano teaches the first layer using an acid-modified olefin has improved wettability and adhesion with the second layer and suppresses the known problem of cracking of the cyclic olefin coatings on [Yano 0005,0011], which would be considered sufficient motivation for the combination with Sumida.
4) Regarding Applicant arguments on pg. 11-12 that Sumida teaches a chlorine-containing resin as the intermediate layer (first layer), which the Applicant has describe is “an essential component”. The Examiner has reviewed the prior art and there is no teaching that Sumida requires a chlorine-containing layer as an essential component. Instead, Sumida teaches a chlorine-containing resin is highly compatible with the cyclic olefin resin of the second layer and thus improves the adhesion between the substrate and the second layer [Sumida 0057]. As provided in the rejection in the recited Office Action and above, Sumida’s first layer is substituted with Yano’s first layer, which is an acid-modified olefin-based resin with no chlorine-containing resin. Yano further teaches the adhesion benefits of the acid-modified olefin first layer, which motivates the combination of Yano with Sumida as described above.
5) Regarding Applicant arguments on pg. 12 that Sumida’s examples are subjected to a corona discharge treatment to improve adhesion of the first and second layer, the Examiner has explained above how Sumida is applied to the claim limitation.
6) On pg. 12-14 the Applicant recites examples in Table 1 from the instant application dried at 130° C and hot pressed at 140 ° C at 5 MPa as demonstration of achieving both adhesiveness and releasability through harsh treatment under high-temperature and/or high-pressure. Applicant further argues that Sumida does not teach any technical meaning in achieving adhesiveness and releasability even through a harsh treatment under high-temperature and/or high pressure. The Examiner respectfully disagrees. Sumida also teaches “harsh treatment under high-temperature” through drying the coated ion exchange resin at 150 ° C [Sumida 0125] and teaches further teaches “harsh treatment under high-temperature and pressure” through the release layer being heat pressed in the range of 80 to 250 ° C at a pressure of 0.3 to 20 MPa [Sumida 0056]. Further, Sumida teaches no release defects for examples 1-8 [Sumida 0128, Table 1] demonstrating the importance of releasability and adhesiveness in Sumida’s layered structure. Thus, it would be expected in substituting Yano’s first layer for Sumida’s first layer, similar adhesiveness and releasability can be achieved given Yano’s teachings that the acid-modified olefin has good adhesion between the substrate and second layer with suppressed cracking of the release layer [Yano 0020].
7) Further, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., [ ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
8) In response to applicant's continuing arguments on pg. 13-15 regarding the prior art of Yano, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, the motivation for combining Yano with Sumida has been addressed above.
9) Regarding Applicant arguments on pg. 15 about the different acid-modified olefins used as compared to Yano’s teachings, Applicant argues the claimed invention requires a “specific” acid-modified olefin. There is no “specific” acid-modified claimed and Yano teaches an acid-modified olefin for the first layer. Thus, Sumida in view of Yano meets the invention of claim 1. Regarding the “specific” cyclic olefin of the second layer, Sumida teaches the layer as claimed (see claim 1 above).
10) On pgs. 16-17, the Applicant summarizes arguments addressed above.
A) Sumida uses vinylidene chloride as the intermediate layer and a surface treatment on the substrate layer. The Examiner addresses this argument in claim 1 and see Response to Arguments 2, B.
B) Yano’s adhesiveness under high-temperature and high-pressure is not predictable. The Examiner addresses this argument in the Response to Arguments 6-8 above. Further, Applicant’s arguments are not commensurate with the claimed invention.
C) Applicant recites unexpected results. As described in the Response to Arguments 6 above, Applicant’s results are comparable to the results of Sumida. Thus, the recited “unexpected” results are expected and obvious. Further, the claimed “unexpected results” are not commensurate with the claimed invention.
In summary, the Examiner’s position is that Sumida applies to all the limitations of claim 1 except the limitation of an acid-modified olefin based resin containing no chloride-containing resin. Yano teaches an acid-modified olefin based resin containing no chloride-containing resin as a first layer disposed between a polyester or polyolefin substrate (same as Sumida) and a second layer made with cyclic olefin (same as Sumida) with an emphasis on the adhesiveness between the substrate and second layer (same as Sumida).
For the reasons provided above, evidence of obviousness of the claimed invention over the prior art of record (Sumida in view of Yano) outweighs evidence of novelty and nonobviousness as described in the arguments and rejections above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nakagawa et al. [JP2017132251A, as provided on the IDS dated 12/28/2022, machine translation relied upon provided].
Nakagawa teaches a substrate, a first layer, and a second layer [Nakagawa 0012], where the substrate can be polyethylene or polypropylene [Nakagawa 0013] and the first layer can be an acid-modified olefin-based resin and containing no chlorine-containing resin [Nakagawa 0018 and throughout], which is relevant to claims 1, 2, 5.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to M. T. LEONARD whose telephone number is (571)270-1681. The examiner can normally be reached Mon-Fri 8:30-5 EST.
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, Miriam Stagg can be reached at (571)270-5256. 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.
/M. T. LEONARD/Examiner, Art Unit 1724
/MIRIAM STAGG/Supervisory Patent Examiner, Art Unit 1724
Prosecution Insights