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 Claims 1, 2, 12, 13, and 25 are withdrawn.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 8-11, 20, 23, and 24 are amended. Claim 26 is newly added.
Please note: In future claim sets, claim 25 should be given the proper status identifier of “withdrawn”.
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.
Claims 15-16 and 23 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.
Regarding claims 15-16, the claims require specific basis weights of the release coating, however, claim 8 requires that the method produces a release film of claim 1, where the basis weight of the release coating is at least 0.2 g/m2 and at most 0.7 g/m2. Therefore, claim 8 is considered to require the basis weight range of claim 1. Claims 15-16 provide a broader range than that of claim 1 and therefore claim 8, making it unclear what basis weight range is required for claims 15 and 16. For the purposes of examination the basis weight for these claims is considered to include a lower end point of at least 0.2 g/m2 as required by claim 1, as well as claims 17, and 18. Appropriate action is required without adding new matter.
Regarding claim 23, the claim states preferably determined according to FINAT 10 compared to a test adhesive tape TESA® 7475 from Beiersdorf after storage for 20 h at 70°C and at a peel speed of 300 mm/min, where the term “preferably” makes it unclear which limitations are required to meet the claimed limitations. For the purposes of examination, since the release force is “preferably” measured by the described method, the claim is being interpreted as though that measurement method is not required such that having a release force meeting the claimed ranges measured by any method will meet the claimed requirements. Appropriate action is required without adding new matter.
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, 20, 21, and 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. 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 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, where the claimed method is not considered to be required as discussed in the 112(b) rejection above.
Claims 9 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Mertz in view of Saygili 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 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).
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 or 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, where Mertz teaches that any suitable solvent can be used 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 as applied to claim 8 above, and further in view of Reuter, WO 2020/104214 A1.
The following citations for Reuter, WO 2020/104214 A1 are in reference to Reuter, US 2022/0017758 A1 which is considered to be the English translation of Reuter, WO 2020/104214 A1 because it is the US national stage of the PCT application.
Regarding claim 11, Mertz in view of Saygili suggest the process of claim 8.
They do not teach the flow time for the composition.
Reuter teaches compositions suitable for coating components in an in-mold coating process and a method of using the composition for improving the flow behavior of the compositions used for producing components (abstract). They teach that the composition includes at least one solvent, at least one alkoxylated polysiloxane, etc. (abstract). They teach that it is preferably that the composition has a viscosity of 10 to 60 s, more particularly of 20 to 30 s (DIN4 flow cup), measured according to DIN EN ISO 2431 (0055). They teach that establishing a low viscosity facilitates the application of the composition and therefore ensures sufficient wetting of the molding tool and also a uniform coating of the component (0055). They tach that due to the inclusion of a solvent, the composition is fluid and is able to run to form a uniform coating film (0040). They teach that the amount of organic solvents need to be sufficient for a solution to have a suitable viscosity (0105).
From the teachings of Reuter, 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 to have a flow time within the range of claim 11 by adding a desirable amount of solvent, because Reuter teaches that viscosity is measured according to DIN EN ISO 2431 with flow times ranging from 10 to 60 s being desirable, where having a low viscosity facilitates the application of the composition and therefore ensures sufficient wetting of the molding tool and also a uniform coating of the component, where solvents can be used to provide a desired viscosity, such that by optimizing the viscosity to meet the claimed requirements, the coating composition will be expected to provide a uniform release coating on the surface of the carrier and ensure sufficient wetting of the surface. 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 and Reuters suggest the process of claim 8 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. 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 22 is rejected under 35 U.S.C. 103 as being unpatentable over Mertz in view of Saygili as applied to claim 8 above, and further in view of Furst, US 2013/0189436 A1.
Regarding claim 22, Mertz in view of Saygili suggest the process of claim 8. Mertz further teaches that the support can include an embossed surface (0042).
They do not specifically teach that the first surface side on which the silicone coating is applied is embossed.
Furst teaches a process for producing a polymeric film which is furnished on one side with a cured polysiloxane coating (abstract). They teach producing a single- or multilayer plastic foil by coating one of its surface with a t least one polysiloxane that has to be cured, curing the polysiloxane under drying, and repeating the process for the other side (0010-0014). They teach that the polysiloxane is applied to a tubular foil (0023). They teach that after production, the tubular foil can be embossed (0043, 0069, and Fig. 1). They teach that one surface of the embossed tubular foil is then coated with at least one curable polysiloxane in liquid form (0070). They teach that the foil is a peelable release foil or a peelable protective foil for self-adhesive labels, adhesive tapes, for stickers, or for adhesive hygiene products (0055).
From the teachings of Furst, 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 in view of Saygili to have embossed the surface on which the coating is applied because Furst teaches that such a process is desired in a release liner for various products and Mertz teaches that the carrier can be embossed such that it will be expected to provide a desirable carrier and release liner. Therefore, a first surface side of the carrier film will have an embossed structure on at least part of its surface.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Mertz in view of Saygili 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 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.
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 use 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 be 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, 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 4/2/2026 have been fully considered.
In light of the amendments to claims 9-11, 14, and 24, the previous 112(b) rejections are withdrawn. It is noted that the 112(b) rejections of claims 15-16 and 23 are upheld. It is noted that Applicant has argued the clarity of claims 15 and 16 as directed to a 112(d) rejection, however, the claims were rejected under 112(b). Specifically, the range of claims 15 and 16 are broader than the range of claim 1, making them unclear. As to claims 23, it is noted that the claim still allows for the method of measuring the release form to be optional.
Regarding Applicant’s arguments over Saygili requiring a layered construction as opposed to a mixture, it is noted that Saygili provides a layered structure having a sealable layer (a), a layer (b) based on a polymer mixture of polyethylene and a polypropylene homopolymer or copolymer, and (c) a sealable layer (c) (0062). Therefore, the layer (b) provides a carrier layer formed of olefins as desired by Mertz. Further, claim 1 indicates that the carrier film can include a first and second sealing layer.
Regarding Applicant’s arguments over new claim 26, as discussed above, it is suggested to provide a mixture of ethyl acetate and isopropanol, ethanol, n-butanol, and/or isobutanol, such that the solvents include a mixture of ethyl acetate and isopropanol.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA D MCCLURE whose telephone number is (571)272-9761. The examiner can normally be reached Monday-Friday, 8:30-5:00 EST.
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/CHRISTINA D MCCLURE/Examiner, Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
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