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 .
Status of the Claims
Claims 8-11, 14-18, 20-24, and 26 are pending and rejected. Claims 1, 2, 12, 13, and 25 are withdrawn. Claims 3-7 and 19 are cancelled. Claims 15, 16, 20, 23, and 24 are amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/15/2026 has been entered.
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.
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.
Claim 17 is 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.
Regarding claim 17, the claim depends from claim 15, which has been amended to require that the basis weight is at least 0.40 g/m2, such that claim 17 provides a broader range than claim 15, making it unclear what range is required for the claims. For the purposes of examination, having a basis weight within the range of claim 15 is considered to meet the limitations for both claims 15 and 17. Appropriate action is required without adding new matter.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 17 and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 17, the claim states a broader range than claim 15, from which it depends, such that it does not include all the limitation of claim 15. Appropriate action is required without adding new matter.
Regarding claim 18, the claim provides that the basis weight is at least 0.20 g/m2, however, this is already required by claim 16 from which it depends, such that it is not further limiting claim 16. Appropriate action is required without adding new matter.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 8, 10, 14-18, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Mertz, US 2004/0101679 A1 in view of Saygili, CA 3088348.
Regarding claims 8, 15-18, 20, and 21, Mertz teaches a method for producing a release film by coating a carrier film using a release coating (a process for making release liners, abstract, by applying a composition comprising a radiation curable silicone release agent in an organic solvent to a surface of a substrate or carrier film, 0011), wherein the method comprises the following steps:
(a) providing a carrier film, wherein the carrier film has a first surface side and a second surface side (where a substrate, which can be a polymer film, is provided to a coating apparatus, 0020-0021 and Fig. 1, where since the substrate is a polymer film it will include a first and second surface side);
(b) providing a coating composition which comprises a solvent component and a silicone system curable by UV radiation (where a composition comprising a radiation curable silicone release agent in an organic solvent is applied to a surface of the substrate, 0011 and 0021-0022, indicating that the composition is provided, and where the composition is curable by UV radiation, 0023 and 0030);
(c) coating at least a part of the first surface side of the carrier film provided in step (a) using the coating composition provided in step (b) (0011 and 0021-0022);
(d) evaporating at least a part of the solvent component (after the uncured composition is applied to a surface of the substrate, the coated substrate is directed to solvent removal zone, where the solvent is removed by the use of heat and/or high velocity air so as to evaporate the solvent, 0029 and 0080, such that the solvent will be evaporated); and
(e) irradiating at least a part of the first surface side of the carrier film coated in step (c) using UV radiation to cure the silicone system (where after the solvent has been removed, the substrate is exposed to radiation for curing the composition, where curing may be done using ultraviolet light, 0030, such that the first surface side of the carrier film coated in step (c) will be irradiated using UV radiation so as to cure the silicone system).
Mertz teaches that substrate is a polyolefin film such as polyethylene or polypropylene (0020, 0079), so as to provide a carrier film having a layer (b), which is based on polyolefin, wherein the polyolefin is selected from an olefin homopolymer having 2 or 3 carbon atoms, i.e. polyethylene or polypropylene.
They teach that the coating is applied in an amount sufficient to provide a dry coating weight of about 0.1 to about 1.0 g/m2, more preferably about 0.1 to about 0.6 g/m2 (0028), such that the basis weight of the release coating overlaps the range required by claim 1.
They do not teach a total thickness of the release film as required by claim 1 or that the polyolefin comprises a mixture of an ethylene homopolymer or copolymer and a propylene homopolymer or copolymer.
Saygili teaches a release foil comprising a substrate layer, a printed image, and a release coating (abstract). They teach that the release coating includes a polysiloxane that is cured by UV radiation (abstract). They teach that the release film preferably has a total layer thickness of at least 5 microns, more preferably at least 10 microns (0022). They teach that the release film preferably has a total layer thickness in the range from 5 microns to 50 microns or from 15 microns to 40 microns (0022). They teach that the invention comprises a carrier layer based on a polymer or mixture of two or more polymers such as polyolefins (0023). They teach that preferred polyolefins include polyethylene, polypropylene, or a mixture of polyethylene and polypropylene (0024). They teach that the carrier may be polyolefins or copolymers of α,β-unsaturated olefins having 2 to 10 carbon atoms (0025). They teach that the carrier layer has a thickness in the range of from 5 µm to 50 µm, preferably from 15 µm to 40 µm (0031). They teach that the film includes a release coating which comprises a polysiloxane cured by UV radiation (0039). They teach that the surface weight of the release coating of the release film is preferably in the range from 0.1 g/m2 to 1.5 g/m2 (0046). Saygili teaches that the carrier layer includes a layer based on a polymer mixture of 51-85 wt% of at least one polyethylene having a density of 0.910 to 0.940 g/cm3 and 15-49 wt% of at least one propylene homopolymer or copolymer (0062). It is noted that the polyethylene is understood to be a homopolymer when there is a single polyethylene provided. While they disclose the specific composition in the multilayer structure, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention that such a structure would also be desirable in the single layer because they broadly indicate that the structure of the carrier is based on polyethylene, polypropylene, or a mixture thereof, such that the specific mixture disclosed in the multilayer example would also be expected to be suitable for a single layer. They teach that the film is a release film suitable for use as a removable protective film for self-adhesive products, such as adhesive tapes, labels, or adherent sanitary and hygiene articles (0020).
From the teachings of Saygili, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used a carrier formed from a polymer mixture of 51-85 wt% of at least one polyethylene having a density of 0.910 to 0.940 g/cm3 and 15-49 wt% of at least one propylene homopolymer or copolymer because Saygili teaches that such a polymer mixture is a desirable carrier for a release film and Mertz indicates that polyethylene and polypropylene are suitable olefin polymers such that it will be expected to provide a desirable carrier material. Therefore, the polyolefin comprises a weight percentage of ethylene homopolymer meeting the range of claim 20 and having a density within the range of claim 20 and a weight percentage of polypropylene homopolymer or copolymer meeting the requirements of claim 20. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.”
Further, from the teachings of Saygili, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Mertz to have formed the release film having a thickness in the range of from 5 to 50 µm or from 15 to 40 µm because Saygili teaches that such a thickness is desirable for a release film similar to that of Mertz (having a olefin substrate with a silicone or polysiloxane release coating, where the basis weight of the film of Saygili overlaps the range of Martz and where the carrier is suggested to be made of the olefin mixture of Saygili as noted above) such that it will be expected to provide a desirable release film for use as a removable protective film for self-adhesive products, such as adhesive tapes, labels, or adherent sanitary and hygiene articles. Therefore, in the process of Mertz in view of Saygili, the release film will meet the requirements of claim 1, where the polymer mixture meets the requirements of claim 8 with a weight percentage of ethylene homopolymer and polypropylene homopolymer or copolymer meeting the range of claim 20 and having an ethylene density within the range of claim 20, a release coating having a basis weight within or overlapping the ranges of claims 1 and 15-18, where the carrier film has a first surface side and a second surface side, where the first surface is coated with the release coating, and where the release film has a total layer thickness overlapping the range of claim 1 and within or overlapping the range of claim 21. According to 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.” According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.”
Regarding claim 10, Mertz in view of Saygili suggest the process of claim 8. Mertz further teaches that the composition includes about 99 to about 10, preferably about 96 to about 80, and more preferably about 94 to about 85 weight percent solvent, based on the total weight of the composition (0011), such that the content of the solvent component based on the total weight of the coating composition is within the claimed range. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.”
Regarding claim 14, Mertz in view of Saygili suggest the process of claim 8. Martz further teaches that the substrate is subjected to conditions sufficient to remove substantially all of the solvent present in the release composition (0029), such that the solvent is considered to be evaporated practically completely.
Regarding claim 22, Mertz in view of Saygili or Saygili in view of Mertz suggest the process of claim 8.
Mertz further teaches that the support can include an embossed surface (0042).
Saygili teaches that the carrier layer has at least partial embossing on at least one surface (0059).
From the teachings of Saygili, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have provided embossing on the first surface because they indicate that the carrier can be embossed on at least one surface, indicating that both surfaces can be embossed, such that by embossing the first surface it will be expected to provide a desirable carrier.
Regarding claim 23, Mertz in view of Saygili suggest the process of claim 8. Mertz teaches forming a release liner having a release force of 22 g/2inch width so as to provide a release force of about 4.2 cN/cm (0069). They teach that when forming two-side adhesive or transfer tapes, it is desired that one side of the release liner have higher peel force than the other to ensure the adhesive stays with one side of the web during unwinding or lamination procedures (0071). They teach that using a rate of 12 inches/minute (approximately 300 mm/min), the easy release side had a release force of approximately 7.7 cN/cm and the tight release side had a release force of approximately 9.3 cN/cm (0076). They teach measuring the release force using STM Number 103 as an internal test for Rexam Release for determining the level of release force for a liner using Tesa 7475 acrylic adhesive tape after storage for 20 hours at 158°F, i.e., 70°C (0077). Therefore, they teach a release force within the claimed range, when measured using a similar method, such that the release force is also expected to be within the claimed range when using the claimed testing method due to the testing similarities.
Additionally, since they provide the process of claim 8, the resulting release coating is expected to provide a release force within the claimed range. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Claims 8, 10, 14-18, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Saygili, CA 3088348 in view of Mertz, US 2004/0101679 A1.
Regarding claim 8, 15-18, 20 and 21, Saygili teaches a method for producing a release film by coating a carrier film using a release coating (a method for producing a release film by applying a coating composition to a carrier layer, 0083), wherein the method comprises the following steps:
(a) providing a carrier film, wherein the carrier film has a first surface side and a second surface side (where a carrier layer is coated with a composition, 0083, such that the carrier will have a first and second surface side);
(b) providing a coating composition which comprises a solvent component and a silicone system curable by UV radiation (applying a coating composition which comprises a polysiloxane and a solvent, where the polysiloxane is curable by UV radiation, 0083 and 0100);
(c) coating at least a part of the first surface side of the carrier film provided in step (a) using the coating composition provided in step (b) (applying the coating composition to at least part of the surface of the carrier layer, 0083); and
(e) irradiating at least a part of the first surface side of the carrier film coated in step (c) using UV radiation to cure the silicone system (irradiating the curable polysiloxane with UV radiation, 0083, such that the surface will be irradiated).
They teach that the release film preferably has a total layer thickness in the range from 5 microns to 50 microns or from 15 microns to 40 microns (0022), so as to overlap the range of claims 1 and overlap or be within the range of claim 21. According to 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.” According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.”
They teach that the invention comprises a carrier layer based on a polymer or mixture of two or more polymers such as polyolefins (0023). They teach that preferred polyolefins include polyethylene, polypropylene, or a mixture of polyethylene and polypropylene (0024). They teach that the carrier may be polyolefins or copolymers of α,β-unsaturated olefins having 2 to 10 carbon atoms (0025). Saygili teaches that the carrier layer includes a layer based on a polymer mixture of 51-85 wt% of at least one polyethylene having a density of 0.910 to 0.940 g/cm3 and 15-49 wt% of at least one propylene homopolymer or copolymer (0062). It is noted that the polyethylene is understood to be a homopolymer when there is a single polyethylene provided. Therefore, the polyolefin comprises a weight percentage of ethylene homopolymer meeting the range of claim 20 and having a density within the range of claim 20 and a weight percentage of polypropylene homopolymer or copolymer meeting the requirements of claim 20. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.”
They teach that the surface weight of the release coating of the release film is preferably in the range from 0.1 g/m2 to 1.5 g/m2 (0046), such that the basis weight overlaps the range of claims 1 and 15-18. According to 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.”
They do not teach evaporating the solvent prior to performing irradiation.
As discussed above, Mertz teaches release liners and processes for making the same (abstract). They teach that a composition comprising a radiation curable silicone release agent in an organic solvent is applied to a surface of the substrate (0011 and 0021-0022). They teach that after the uncured composition is applied to a surface of the substrate, the coated substrate is directed to solvent removal zone, where the solvent is removed by the use of heat and/or high velocity air so as to evaporate the solvent (0029 and 0080). They teach providing conditions such that remove substantially all of the solvent present in the release composition (0029). They teach that after the solvent is removed, the silicone can be crosslinked by UV (0080).
From the teachings of Mertz, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the process of Saygili to have evaporated the solvent prior to UV curing because Mertz teaches that it is desirable to evaporate the solvent from a silicone (polysiloxane) composition prior to UV curing and Saygili provides a polysiloxane composition in solvent such that it will be expected to prepare the coating for curing.
Regarding claim 10, Saygili in view of Mertz suggest the process of claim 8.
Saygili does not teach the amount of solvent in the composition.
Mertz teaches that the composition includes about 99 to about 10, preferably about 96 to about 80, and more preferably about 94 to about 85 weight percent solvent, based on the total weight of the composition (0011).
From this, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have formed the composition to have about 99 to about 10, preferably about 96 to about 80, and more preferably about 94 to about 85 weight percent solvent, based on the total weight of the composition because Mertz teaches that such an amount is suitable for forming a silicone release layer composition such that it will be expected to provide a suitable coating composition for applying the release layer to the carrier. Therefore, the content of the solvent component based on the total weight of the coating composition is within the claimed range. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.”
Additionally, according to MPEP 2144.05 II A, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum solvent concentration in the composition by routine experimentation.
Regarding claim 14, Saygili in view of Mertz suggest the process of claim 8. Mertz further teaches that the substrate is subjected to conditions sufficient to remove substantially all of the solvent present in the release composition (0029). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have evaporated the solvent practically completely because Mertz teaches that it is desirable to remove substantially all of the solvent prior to UV curing.
Regarding claim 22, Saygili in view of Mertz suggest the process of claim 8.
Saygili teaches that the carrier layer has at least partial embossing on at least one surface (0059). Therefore, the first surface side will have an embossed structure on at least part of its surface since they teach that at least one surface is embossed, indicating it includes a range where all surfaces are embossed.
Regarding claim 23, Saygili in view of Mertz suggest the process of claim 8. Saygili teaches determining the release force after storing for 20 h at 70°C using a peel speed of 300 mm/min (0118). They teach that the test was done using Tesaband A 7475 (0117). They teach that the release values were in the range from 2 to 25 cN/10 cm, corresponding to 0.2 to 2.4 cN/cm (0120). They teach that the release force is performed using the test standard FTM 10, where it is the FINAT bond strength (claim 20), such that it is understood to be a FINAT 10 testing method, where the Tesaband A 7475 is a TESA 7475. Therefore, the release force is understood to be within the claimed range. According to MPEP 2131.03, “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Alternatively, even if the test does not correspond to the claimed test, the release force is within the claimed range such that it would also be expected to be within the claimed range when measuring it using the claimed method.
Further, since they provide the process of claim 8, the resulting release coating is expected to provide a release force variation within the claimed range. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Claims 9 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Mertz in view of Saygili or Saygili in view of Metz as applied to claim 8 above, and further in view of Wray, US 2012/0064022 A1.
Regarding claims 9 and 26, Mertz in view of Saygili and Saygili in view of Mertz suggest the process of claim 8.
Mertz teaches that a variety of organic solvents can be used, for example, aliphatic, aromatic, ketone and other solvents as well as mixtures of such solvents (0011). They teach that solvents such as hexane, xylene, methyl ethyl ketone, etc. can be used (0026).
Saygili teaches using ethyl acetate as a solvent (0115).
They do not teach using the claimed solvents.
Wray teaches cyclosiloxane-substituted polysiloxane compounds that are used for applications such as release agent composition (abstract). They teach that the release agent composition containing the cyclosiloxane-substituted polysiloxanes can contain an organic solvent (0327). They teach that the organic solvent is one that has excellent solubility for each component and is not reactive with any component of the release agent composition (0327). They teach that examples include xylene, ethanol, isobutanol, n-butanol, ethyl acetate, methyl ethyl ketone, isopropanol, etc. (0327). They teach that the organic solvent can be used singly or in combination of two or more (0327). They teach applying the release coating to substrates such as films made of resins including polyethylene, polypropylene, etc. (0330).
From the teachings of Wray, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have selected ethanol, isobutanol, n-butanol, and/or isopropanol (C2-4 alkyl alcohols) and ethyl acetate because Wray teaches that such solvents are suitable for siloxane release compositions applied on polyethylene and polypropylene substrates, where the solvents can be provided as a mixture of two or more and because they are indicated as being alternative solvents to those taught by Mertz which uses polysiloxane (silicone) compositions, where Mertz teaches that any suitable solvent can be used and Saygili teaches using ethyl acetate as a solvent such that it will be expected to provide a suitable solvent mixture for the silicone release composition. Therefore, the solvent will comprise ethyl acetate and one or more C2-4 alkyl alcohol, such as ethyl acetate and isopropanol.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Mertz in view of Saygili and Saygili in view of Mertz as applied to claim 8 above, and further in view of Clauter, US 2017/0349001 A1 and Ihara, US 2021/0222008 A1.
Regarding claim 11, Mertz in view of Saygili and Saygili in view of Mertz suggest the process of claim 8.
Mertz teaches that the coating weight can vary, depending on the various factors, the most significant variables being the percent solids, the viscosity of the formula, and the process conditions (0027).
They do not teach the flow time for the composition.
Clauter teaches a process for producing a pattern having a three-dimensional appearance in a coating comprising flake-form effect pigments (abstract). They teach using radiation-curing coating systems, in particular coating systems having relatively low viscosities (0046). They teach that coating systems having a viscosity of less than 30 seconds, determined in accordance with DIN EN ISO 2431 in a 4 mm efflux cup at 23°C are preferred (0046). While they do not provide a 3 mm cup, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention that the viscosity will be similar between a 4 mm cup and a 3 mm cup because of the similar size, where since the range is less than 30 seconds it is also expected to overlap the claimed range when using a 3 mm cup.
Ihara teaches organo-polysiloxane compositions for use in release paper or release film (abstract). They teach that the organopolysiloxane composition has a kinematic viscosity as measured at 25°C that is preferably 500 mm2/ or less, preferably from 20 to 430 mm2/s (0062). They teach that when the viscosity is too low, the coating weight may decrease, and when it is too high, the coating weight may become uneven or a large amount of mist may be generated (0062).
From the teachings of Mertz, Clauter, and Ihara, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the coating of Mertz in view of Saygili or Saygili in view of Mertz to have a flow time within the range of claim 11 by adding a desirable amount of solvent, because Clauter teaches that when using UV-curing coating systems, a low viscosity such as less than 30 seconds determined by DIN EN ISO 2431 in a 4 mm cup is desirable, Ihara teaches that an organo-polysiloxane release composition desirably has a viscosity of 500 mm2/ or less, preferably from 20 to 430 mm2/s, which overlaps the range described in [0201-0202] of the instant specification, where when the viscosity is too low, the coating weight may decrease, and when it is too high, the coating weight may become uneven or a large amount of mist may be generated (providing a motivation to optimize), and Mertz teaches that the coating weight depends on the percent solids and the viscosity such that by optimizing the viscosity to be within the claimed range when measured by the claimed method it will be expected to provide desirable flow for an even coating and the desired basis weight on the carrier. According to MPEP 2144.05 II A, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further, since Mertz in view of Saygili or Saygili in view of Merz suggest the process of claim 8, with an overlapping basis weight, and using a solvent range overlapping or within the range of claim 10, the resulting composition is also expected to have a flow time within or overlapping the claimed range because Mertz and Ihara indicate that the viscosity (where the flow cup is understood to measure viscosity as indicated by Clauter) will be a factor in the basis weight and Mertz indicates that the percent solids will also be a factor. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Mertz in view of Saygili and Saygili in view of Mertz as applied to claim 8 above, and further in view of Dhaler, US 7,163,720 B1, and Irifune, US 2008/0176086 A1.
Regarding claim 24, Mertz in view of Saygili and Saygili in view of Mertz suggest the process of claim 8. As discussed above for claim 23, Mertz teaches using the release film for tapes, where the tapes desirably have an easy release force and a tight release force. Further, as discussed above for claim 23, Saygili teaches measuring the release force using the claimed method.
They do not teach the variance in the release force.
Dhaler teaches a silicone/adhesive complex comprising at least a silicon coating applied on a first support and an adhesive coating applied on a second support, and whereof the release force of a silicone/adhesive interface is capable of being modulated (abstract). They teach that the silicone coating results from curing of either monomers, oligomers and/or polymers bearing at least a reactive Si-H structural unit and monomers, oligomers and/or polymers bearing at least a reactive unsaturated aliphatic group; or monomers, oligomers and/or polymers bearing at least a reactive Si-OH structural unit, etc., and an additive adjusting the release force of the silicone/adhesive interface (abstract). They teach that the additive used for regulating the release force include organic acrylics, alkenyl ethers, and acrylic silicones and/or silicones having alkenyl ether functional groups (Col. 2, lines 46-53).
Irifune teaches a UV curable silicone composition that can be readily peeled from a PSA material (abstract). They teach that the silicone composition yields a cured film with a tight release force relative to PSAs and also exhibits minimal fluctuation in the release force (abstract). They teach that packaging tapes are widely used in automatic taping operations, and these automatic taping machines are designed to operate with tapes of uniform release force (0006). They teach that if the value of the release force is small, then the fluctuation in the release force at the time of release is minimal, but if the release force is large, then the fluctuation in the release force is too great and the automatic taping machine, which has been designed on the premise of a uniform release force, may be unable to function normally (0006). They teach controlling the composition of the polymer to minimize fluctuation (0036, 0038, 0039, 0050).
From the teachings of Dhaler and Irifune, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the composition of the silicone release composition to provide a variance in release force within the claimed range when using the claimed testing method to minimize fluctuations or variance in the release force because Irifune teaches that it is desirable to minimize fluctuations so that automated taping processes work smoothly and both Dhaler and Irifune teach tuning the release force by controlling the polymer chemistry such that it will be expected to provide a release film having a more uniform release force. According to MPEP 2144.05 II A, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have measured the variance in the release force using the claimed testing method because Saygili teaches that such a method is suitable for measuring release force.
Further, since they provide the process of claim 8, the resulting release coating is expected to provide a release force variation within the claimed range. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Claim 24 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Mertz in view of Saygili and Saygili in view of Mertz as applied to claim 8 above, and further in view of Bilodeau, US 6,486,267 B1.
Regarding claim 24, Mertz in view of Saygili and Saygili in view of Mertz suggest the process of claim 8. As discussed above for claim 23, Mertz teaches using the release film for tapes, where the tapes desirably have an easy release force and a tight release force. Further, as discussed above for claim 23, Saygili teaches measuring the release force using the claimed method.
They do not teach the variance.
Bilodeau teaches a curable release composition comprising a curable organopolysiloxane (abstract). They teach curing the composition by exposure to ultraviolet light (Col. 10, lines 64-67). They teach that it is desirable to provide high release force values while having low levels of release noise (Col. 12, lines 32-46). They teach that the release force is measured at a rate of either 300 ipm or 12 imp (about 300 mm/minute) (Col. 12, lines 32-46). They teach that the release force values at 12 ipm typically range from about 3 to about 50 grams per inch (where grams are understood to be gf so as to provide a force, corresponding to about 1.158-19.3 cN/cm) (Col. 12, lines 32-46). They teach that the release noise is measured by dividing the standard deviation of release force measurement for a specific sample to provide a percent noise value (Col. 10, lines 47-54). They teach that the noise values typically range from zero to about 40% or from about 1 to about 5% (Col. 10, lines 47-54). They teach that the combination of relatively high release force and relatively low release noise exhibited with the inventive release composition is achieved as a result of the monofunctional character of component (A) and the pendant methyl groups along the hydrocarbon chain of the material (Col. 10, lines 57-63). They teach testing the release force with a Tesa 7475 tape at 300 ipm (Col. 15, line 50 to Col. 16, line 16). The standard deviation for the Tesa tape samples ranges from 0 to 11.3 (0-4.36 cN/cm) and that for Avery tapes tested ranges from 0.14 to 2.5 (0.0541-0.97 cN/cm) (Col. 16, line 1-16). Therefore, the variance of the samples ranges from 0-19 cN/cm.
From the teachings of Saygili and Bilodeau, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have optimized the variance of the samples to have a range of 0-19 cN/cm measured by the method of Saygili because Bilodeau teaches that it is desirable to reduce the noise of silicone release tapes, where the noise is measured by the standard variation (which is the square root of variance), where they indicate that such a range is suitable and Saygili teaches measuring force using the claimed method, which is similar to the 12 ipm method of Bilodeau such that it will be expected to minimize the variance of the process to provide uniform peeling. Therefore, the variance will be optimized to a range overlapping the claimed range. According to 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.” According to MPEP 2144.05 II A, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Further, since they provide the process of claim 8, the resulting release coating is expected to provide a release force variation within the claimed range. According to MPEP 2112.01 I, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)”.
Response to Arguments
Applicant’s arguments dated 9/15/2026 have been fully considered.
In light of the amendments to claims, the previous 112(b) rejections are withdrawn, however, new 112 rejections have been made as noted above.
Regarding Applicants arguments over the modification of Mertz to provide the claimed thickness, while Mertz provides examples of release films that are larger than claimed, as Applicant notes, Mertz indicates that the examples are non-limiting. Further, Mertz and Saygili are both in the field of forming release films, such that the thickness suggested by Saygili is expected to be suitable for the release film of Mertz.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the current case, since Mertz and Saygili are both in the field of release liners, where both provide olefin substrates having silicone release coatings, the thickness suggested by Saygili is also expected to be desirable/suitable for the liners of Mertz.
As to the motivation to adopt the thickness of Saygili, the suggestion is because Saygili indicates that such a thickness range is suitable, suggesting that desirable release films can be provided with such a thickness and that such thicknesses are known to be conventional. Further, Mertz does not limit the thickness to what is disclosed in the examples and there is no teaching away from the claimed thickness. Therefore, the modification to use the thickness disclosed in Saygili is expected to provide a desirable release film.
Regarding Applicant’s argument that the Office Action has not shown that the thickness teachings of Saygili are transferable to a different film structure, it is noted that while Saygili provide multilayer structures, they also provide embodiments in which the release film comprises no layers other than the carrier layer and the release coating (0063), suggesting that the thickness is also transferrable to the structure of Mertz.
Regarding Applicant’s argument that the olefin composition suggested by Saygili is only tied to the multilayer structure, while they disclose the specific composition in the multilayer structure, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention that such a structure would also be desirable in the single layer because they broadly indicate that the structure of the carrier is based on polyethylene, polypropylene, or a mixture thereof, such that the specific mixture disclosed in the multilayer example would also be expected to be suitable for a single layer. Further, claim 1 provides the option of having a first sealing layer and a second sealing layer, which corresponds to the multilayer embodiment of [0062]. Additionally, there is nothing in Mertz prohibiting additional layers on the carrier, such as sealing layers.
In response to applicant's argument that Wray is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Wray is considered to be in Applicant’s field of endeavor because they provide polysiloxane compounds for use in release agent compositions, where the compositions are provided onto a substrate for forming release coatings (abstract, 0027, 0091-0092, 0103, 0320-0332). While Wray provides alternative uses for the polysiloxane coating, they disclose the use for release coatings, such that one having ordinary skill in the art would be directed to Wray when using polysiloxane or silicone release compositions.
Applicant’s arguments over Reuter and Furst are not addressed herein, as these references are no longer used in the above rejection.
Regarding Applicant’s arguments over Dhaler, it is noted that the reference is relied upon for the indication that the release force of a silicone release film can be modulated, where Irifune teaches that it is desirable for the release force to be uniform over the film. Therefore, it is suggested to optimize the composition of the silicone release coating to minimize the variance over the coating and so as to provide a uniform release film.
Regarding Applicant’s argument that the cited references do not provide a numerical variance, as discussed above the variation in the release force is considered to be an optimizable property such that the determination of the optimal numerical value is considered to be obvious over the prior art in the absence of unexpected results. Additionally, since the cited references provide the claimed method, the resulting properties of the film are expected to meet the claimed requirements.
Conclusion
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/CHRISTINA D MCCLURE/Examiner, Art Unit 1718
