DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/1/2025 has been entered.
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 .
Election/Restrictions
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/15/2024.
Newly submitted claims 21 and 22 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claims 21 and 22 are directed to a combination of the elected invention with a press having a press surface. Said invention is independent and distinct from the carrier foil of the elected invention.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21 and 22 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
New corrected drawings filed 3/4/2025 are accepted.
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) 1-4, 6, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagkano (JP 2013-216779A) in view of (a) Wilheim et al (US 4,753,847), (b) Bhushan et al (US 2006/0078724), and (c) Schurman (US 2020/010931).
Nagkano teaches a release film (herein understood to read on the claimed carrier film) of a thermoplastic resin having a matter surface for transferring layers onto desired substrates (page 1, first paragraph, page 1, last paragraph, page 7, 3rd paragraph-7th paragraph). The film has two surface wherein each surface has an arithmetic average height surface roughness of e.g. 0.5 microns to 8 microns and a maximum height Ry of 1.0 micron to 30 microns (page 7, 3rd paragraph). While Nakano does not expressly teach that the Rz value [known in the art as the ten-point mean roughness], the Ry value and the Rz values are closely related in that Ry and Rz measure from peaks and valleys of roughness, differing in that Ry is the distance between the tallest peak and lowest valley and Rz is the distance between the average of the five tallest peaks and the average of the five lowest valleys'. The Rz value may then be considered as necessarily smaller than the Ry value due to mathematical average and/or overlapping with the Rz value as the Rz value is bounded the Ry value. Thus, Nakano anticipates the claimed surface roughness of the carrier film; alternatively, In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art’, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365- 66 (Fed. Cir. 1997). See MPEP 2144.05.
Nakano is relied upon as above. Nakano further teaches polyethylene terephthalate (PET) has traditionally been used for such release films, but that releasability is sometimes insufficient (page 1, second paragraph). While Nakano does not teach the surfaces of the release sheet should be coated with a cured coating, Wilheim teaches that curable acrylic coatings may be applied to a PET release sheet in order to provide textured patterns which can be transferred to laminate components (col 1, lines 65+). Said coatings provide the laminate with ability to withstand high molding temperatures, excellent releasing properties, strength that enables it to be readily stripped after comprising, and the ability to impart a desired texture to the adjacent laminate component (col 4, lines 26+). Said acrylate coating may be cured by electron beam curing (col 3, lines 38+). Thus, it would have been obvious to utilize a three layer laminate comprising a PET core and two cured acrylic coatings as taught in Wilheim in place of the single layer film disclosed in Nakano. The motivation for doing so would have been that said laminates can withstand high molding temperatures, excellent releasing properties, strength that enables it to be readily stripped after comprising, and the ability to impart a desired texture to the adjacent laminate component (col 4, lines 26+).
Nakano in view of Wilheim is relied upon as above, but does not teach that the texturing should comprise wrinkles. However, Bhushan teaches that the geometric roughens pattern of a sheet can take on many geometries, including a curved sinusoidal pattern (see 0035; Figure 4b). Said curved profile is herein understood to read on the claimed “micro-folded wrinkles” of claim 1. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was made to texture the surfaces with any number of preferred geometries, including sinusoidal curves (herein understood to read on micro-folded wrinkles). The motivation for doing so would have been that Bhushan teaches a wide variety of pattens may be provided to roughened substrates based mainly on user preference.
With regards to the limitation that the micro-folded wrinkled structure has channels “configured to create pathways for air to escape to the edge of said foil,” Schurman teaches using a carrier film comprising a pattern of tiny air channels in the textured surface thereof (0056) which extend to the edge of the release sheet. Said pattern of air channels is then transferred to the layer adjacent to the release layer and allows for the elimination of bubbles 306 and wrinkles 308 from applied object (0056). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention weas made to select a pattern such that it comprises pathways for air to escape to the edge of tee foil. The motivation for doing so would have been such a design assists in the elimination of air bubbles and wrinkles when the applied layer is transferred to a substrate.
With regards to claim 2, Nakano is understood to teach the claimed roughness Rz of 1 um up to 50 um for the reasons noted above.
With regards to claim 3, Nakano does not teach the claimed Rsm. However, Bhushan teaches that the distance between peak (herein understood to be synonymous with the claimed “roughness RSm”) is a result effective variable that affect the contact angle of the surface (0036). Thus, it would have been obvious to optimize the roughness Rsm of the release sheet disclosed in Nakano as said variable is a known result effective variable that controls wettability of the surface.
With regards to claim 4, Nakano teaches the roughness of the upper foil surface is the same as the roughness of the lower foil surface (page 7, first full paragraph).
With regards to claim 6, Nakano teaches the foil may comprise PET (page 1, second paragraph).
With regards to claim 7, the secondary reference teaches renders obvious the use of upper irradiated acrylic varnish on the upper and the lower foil surface.
Response to Arguments
Applicant's arguments filed 9/1/2025 have been fully considered but they are not persuasive.
With regards to the rejection of claims 1-4, 6, and 7 under 35 USC $103 as being unpatentable over Nagkano (sic. Nakano) (JP 2013- 216779) in view of Wilheim et al. (US 4,753,847) and Bhushan et al (US 2006/0078724), applicant argues Nakano and Wilheim both teach a release film or coating with a textured pattern to be transferred onto a desired substrate. Applicant argues it is clear from the specification and drawings of the application that the present invention is not disclosed and would not have been obvious in view of the disclosure and teachings of Nakano, Wilheim et al, or Bhushan because the upper foil surface of the present invention which contacts the press has a wrinkled structure. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims; the claims do not recite a press or require that the textured pattern by in contact with a press.
Applicant further argues both Nakano and Wilheim et al. teach the placement of a matted or textured surface for transferring patterns to desired substrate; thus, there is no motivation or reason to place an upper foil surface having a micro-folded wrinkled structure forming channels extending to the edge of the foil. Said argument is noted but moot in view of the new grounds of rejection; neither Nakano nor Wilheim is relied upon to teach an upper foil surface having a micro-folded wrinkled structure forming channels extending to the edge of the foil.
The Examiner took the position that Nakano in view of Wilheim does not teach that the texturing should comprise wrinkles and cites Bhushan and a curved sinusoidal pattern disclosed therein, stating the curved profile is herein understood to read on the claimed “micro-folded wrinkles”. The Examiner concluded that it would have been obvious to one of ordinary skill in the art to texture the surfaces with any number of preferred geometries, including sinusoidal curves understood to read on microfolded wrinkles. (Office Action, page 4, lines 1-6). The Examiner’s construction of the curved sinusoidal pattern disclosed in Bhushan to be microfolded wrinkles is respectfully traversed. Applicant argues the definition of a fold is “a bend over on itself so that one part of it covers another”; applicant argues the curved sinusoidal pattern of Bhushan does not have any portion having a bend over on itself as in a fold. Said argument is noted but is not persuasive; the broadest reasonable interpretation of the term “fold” is “to reduce the length or size of something” or “to bend”. The prior art texturing meets said definitions.
With regards to the statement in the prior Office Action that Bhushan teaches “texturing may trap air,” said statement is not explicitly stated in the reference and has been removed from the new grounds of rejection.
Applicant argues they discovered a completely new and non-obvious combination of a microfolded wrinkled structure on a carrier foil used with and in combination with a press to improve the quality of laminate products that prevent dents from appearing in the final product. This advances the art of laminate production. Additionally and more specifically, the present invention is new and non-obvious because paragraph [0077] of Nakano teaches, “As shown in FIG. 1, when the epoxy resin flakes 1 were heat-press molded by the upper and lower dies 2 and 3, the film 4 was interposed between the flakes 1 and the dies 2 and 3”. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the ding claims; the claims are directed to a film and does not require a die or a particular method of use.
Applicant argues, with reference to the configuration of Fig. 1 of Nakano, when comparing each transfer film 4 of Nakano with the carrier foil 1 of amended claim 1, it appears In the transfer film 4 of Nakano, only the surface facing the substrate 1 (i.e. the transfer surface) has a rough profile, not the surface facing the molding die. Said argument is noted but is not persuasive as said argument is not commensurate in scope with the pending claims; the claims are directed to a film and does not require a die or a particular method of use. Furthermore, applicant is not comparing the claimed invention to the closest embodiment of the prior art as the prior are teaches the heat-treated transfer film may have transfer surface as both sides[ 0060] of Nakano. While applicant argues the transfer film of Nakano does not disclose an upper foil surface of the film for positioning adjacent a press that has a microfolded wrinkled structure as defined in amended claim 1, said argument is not commensurate in scope with the claims as the claims do not require a press and the structure of the film claimed is not distinguished from the “double sided” embodiment of Nakano.
Applicant’s arguments with regards to new independent claims 21 and 22 are considered moot as said claim has been withdrawn as not be drawn to the originally present invention. For the reasons noted above. Specifically, Claims 21 and 22 are drawn to a carrier foil that is claimed in combination with other elements, such as a press.
For the reasons noted above, applicant’s arguments are not persuasive and the claims remain rejected for the reasons set forth herein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ma et al ( US 2015/0191043) teaches a release sheet and surface patterns and roughness values associated with such sheets.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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, Callie Shosho can be reached on (571) 272-1123. 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.
KEVIN R. KRUER
Examiner
Art Unit 1787
/KEVIN R KRUER/Primary Examiner, Art Unit 1787