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 .
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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 16 December 2025. A preliminary amendment was filed on 10 February 2026 amending claims 1, 3, 4, 7, 9, 11, 12, 15, 16, 17, 19, 20, 21, 23, and 24. Claims 13-14 have been cancelled. Claims 1-12 and 15-24 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03 March 2023 and 28 June 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant’s election with traverse of Group I, Claims 1, 2, and 17-24 in the reply filed on 10 February 2026 is acknowledged. The traversal is on the ground(s) that the previous Office Action did not establish an undue search burden of the claims as specified by MPEP 803. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I-II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth on page 4 of the previous Office Action.
Claims 3-12, 15, and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 10 February 2026.
Specification
The abstract of the disclosure is objected to because it includes the implied phrase “The application relates to…”. Correction is recommended. See MPEP § 608.01(b), guideline (C).
Drawings
The drawings received on 03 March 2023 are acceptable.
Claim Objections
Claim 23 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 23, the Examiner suggests spelling out the intended term “a Parker Print-Surf (PPS) roughness value” in the claim. Using “a” rather than “the” is also suggested.
Claim Rejections - 35 USC § 112
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.
Claim 22 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 22, the reference to “the tie layer” lacks sufficient antecedent basis as no such tie layer is referred to in claim 1, upon which this claim depends. The Examiner suggests amending the claim to depend on claim 2 which provides proper antecedent basis for this term. See MPEP § 2173.05(e).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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, 2, 17-21, 23, and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over WO 2009/147283 A1.
Regarding claim 1, WO ‘283 discloses a release liner composition and laminate having a base material and a surface treating agent, see title and abstract. The base layer may be polyethylene terephthalate (PET) or polyolefins such as oriented polypropylene (OPP), low density polyethylene (LDPE), or high density polyethylene (HDPE) or paper. See p. 9, lines 24-29.
The surface treating agent is a functionalized carrier polymer, preferably polyvinyl alcohol (PVA), see p. 5, lines 1-10. The grafting substance for functionalizing may be a vinyl-containing acid such as 10-undecenic acid or an acid anhydride such as 4-pentenic acid anhydride, see p. 7, lines 14-21.
Example 1 modifies polyvinyl alcohol with 10-undecenyl chloride to provide the PVA with 10-undecenyl groups. See p. 11, line 25 through p. 12, line 6. This reads on covalently bonded functional vinyl groups on a thermoplastic polymer as claimed for the second composition.
Example 2 similarly grafts polyvinyl alcohol with 4-pentenyl groups which also provide covalently bonded functional vinyl groups, see p. 12, lines 11-26.
WO ‘283 does not specify that the modified polyvinyl alcohol is extruded onto the support layer as claimed. However, the limitation that the primer layer is extruded is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method 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 claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because WO ‘283 discloses a structure of a base layer with a vinyl-functionalized polyvinyl alcohol layer.
Regarding claim 2, WO “283 teaches first applying a layer of pure PVA B onto the base layer before adding the modified PVA coating. See p. 26, lines 7-12. This reads on the claimed tie layer.
Regarding claim 17, WO ‘283 teaches a release liner composition and laminate as described above in regards to claim 1. WO ‘283 teaches also forming a silicone coating on top of the surface treating layer, see p. 4, lines 10-12 and lines 31-34. Silicone is also applied as a coating in the examples, see p. 15, lines 1-5.
Regarding claim 18, WO ‘283 teaches that the polyvinyl alcohol is functionalized with a grafting agent such as 10-undecenyl chloride, see p. 11, line 25 through p. 12, line 6. See also p. 8, lines 16-20.
WO ‘283 does not teach that the polyvinyl alcohol is molten when contacted with the grafting agent. However, the limitation that the thermoplastic polymer is molten is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method 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 claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because WO ‘283 discloses a structure which includes a vinyl-functionalized polyvinyl alcohol layer.
Regarding claim 19, WO ‘283 teaches that the polyvinyl alcohol is functionalized with a grafting agent such as 10-undecenyl chloride, see p. 11, line 25 through p. 12, line 6. See also p. 8, lines 16-20.
Regarding claim 20, WO ‘283 teaches that the polyvinyl alcohol is functionalized with a grafting agent such as 10-undecenyl chloride, see p. 11, line 25 through p. 12, line 6. See also p. 8, lines 16-20. This results in terminal vinyl groups attached to a carbon structure of more than 4 carbon atoms as claimed. See also p. 14, lines 14-20.
Regarding claim 21, WO ‘283 teaches that the surface treating agent may also include other polymers and organic or inorganic pigments. Inorganic pigments read on non-thermoplastics as claimed. See p. 5, lines 27-32.
Regarding claim 23, in Example 1 WO ‘283 teaches using 2.71 grams (13.3 mmol) of 10-undecenyl chloride to modify 20 g of polyvinyl alcohol which is 0.665 mmol of vinyl groups per 1 g of PVA. This is within the claimed vinyl group molality range.
The limitation “when determined by iodometric titration method following the standard ISO 3961:2009(E)” is a limitation referring to the method of testing the amount of vinyl groups on the PVA, and does not determine the patentability of the product. The method of testing the product is not germane to the issue of patentability of the product itself. Cf. MPEP § 2113 in regards to products made by different processes in which the product is the same or obvious over the product of the prior art, and MPEP § 2111.02(II) regarding preamble statements reciting the purpose or intended use of a product. Using any accurate method to determine the amount of vinyl groups on the PVA can demonstrate the claimed property.
Regarding claim 24, WO ‘283 teaches that the base layer may be polyethylene terephthalate (PET) or polyolefins such as oriented polypropylene (OPP), low density polyethylene (LDPE), or high density polyethylene (HDPE) or paper. See p. 9, lines 24-29.
Claim Rejections - 35 USC § 103
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/147283 A1 as applied above, and further in view of EP 2,944,464 A1.
Regarding claim 2, WO ‘283 discloses a release liner composition having a base material and a surface treating agent as described above in regards to claim 1. An additional layer may be included as described above in regards to claim 2. WO ‘283 does not teach or suggest a tie layer formed of a grafted polyolefin as claimed.
However, EP ‘464 describes a mold release film having a resin layer provided on one surface of a polyester film, and the resin layer includes a polypropylene which is modified with acrylic acid, methacrylic acid, or maleic anhydride, see p. 3, [0012-0014]. The resin layer also includes polyvinyl alcohol, see paragraph [0029].
WO ‘283 and EP ‘464 are analogous as they each describe coating of release film polymer surfaces with treating agents. It would have been obvious to have used a modified polypropylene resin along with the polyvinyl alcohol as EP ‘464 teaches that this combination improves adhesiveness to the polyester film compared to polyvinyl alcohol itself, see paragraph [0029].
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Niu (U.S. Pat. 10,399,375) describes primer compositions of polyvinyl alcohol, a cationic salt, and water. The primers are applied to a substrate such as a polymer substrate. Niu does not specify that the PVA is covalently bonded to vinyl functional groups.
Kosonen (U.S. Pat. 11,932,992 and U.S. Pub. 2021/0340708), assigned to the same company as the present application and having several of the same inventors, describes a paper substrate having a functionalized polyvinyl alcohol coating applied which is suitable bond bonding silicone. The reference is not available as prior art due to the filing date and co-assignee as the present application.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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