DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office action is in response to the amendment filed 2/10/2026. Claims 1-11 are currently pending in the application.
Election/Restrictions
Applicant’s election without traverse of group I, drawn to claims 1-10, in the reply filed on 2/10/2026 is acknowledged.
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/10/2026.
Claim Objections
Claims 4 and 6 are objected to because of the following informalities:
Claim 4 recites “an absolute value of a value of b*” (line 3). The use of “value of” twice is redundant. Hence, applicant is advised to rephrase it as “an absolute value of b*”.
Claim 6 recites “an absolute value of a value of a*” (line 3). The use of “value of” twice is redundant. Hence, applicant is advised to rephrase it as “an absolute value of a*”
Appropriate correction and/or clarification are required.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al (JP 2014-080507 A).
It is noted that JP 2014-080507 A is in Japanese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claims 1-3, Nakano et al disclose surface modified fluororesin film (overview) which reads on fluorine resin film has a surface subjected to a modification treatment in present claim 1. The composition of surface modified fluoropolymer film in example 3 (based of PTFE) was analyzed by ESC and found to be 56% F, 41% C, 2.4% O and 0.1% N (paragraph 0058). Hence, F/C ratio is calculated to be about 1.36 (i.e., reads on F/C ratio at the surface in present claim 2) and proportion of oxygen at the surface based on sum of carbon, oxygen and fluorine at the surface is calculated to be about 2.4 (i.e., reads on proportion of oxygen at the surface based on sum of carbon, oxygen and fluorine at the surface in present claim 3).
Nakano et al fail to disclose intensity of the peak at 2.84 eV of 0.8 or less when an intensity of maximum peak is set to 1.
However, given that composition of surface modified fluoropolymer film is based on PTFE (examples 1-3) or ETFE (see example 6) as in present invention and has an F/C ratio and proportion of oxygen at the surface falling within the presently claimed ranges in dependent claim 2-3, one skilled in art prior to the filing of present application would have a reasonable basis to expect an intensity of a peak at 284 eV chemical shift to be 0.80 or less when an intensity of a maximum peak is set to 1, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claims 4-6, Nakano et al teach that mean energy of the irradiated ions is preferably 0.5 keV or more and 1.8 keV or less. When the mean energy is lower than 0.5 keV, effect of the ion beam radiation is small and a desired composite cannot be obtained. On the other hand, when the average energy is higher than 1.8 keV, the film is deformed or colored (paragraph 0035). Therefore, it is the Office’s position that mean energy of the irradiated ions may be optimized to obtain the desired absolute value of b* of CIE1976 (L*, a*, b*) color space specified in JIS Z 8781-4 2013 at the surface of less than 3.1 as in present claim 4, an absolute value of a difference Δb* between a value of b*1 at the surface and a value of b*0 in a white reflectance standard specified in JIS Z 8781-4: 2013 of 0.45 or less as in present claim 5, and an absolute value of a* of CIE1976 (L*, a*, b*) color space specified in JIS Z 8781-4 2013 at the surface of 0.05 or less as in present claim 6, absent evidence to the contrary.
Regarding claim 7, Nakano et al teach that as the number of ions per unit area to be irradiated to the fluorine resin film, an amount necessary for the desired adhesive strength may be selected. When the amount is less than 1013 ions/cm2, the required surface modification cannot be obtained and the adhesive strength is lower (paragraph 0036). Therefore, it is the Office’s position that it is within the scope of one skilled in art prior to the filing of present application to optimize the number of ions per unit area to be irradiated to obtain the desired surface adhesiveness of 4.0 N/19 mm or more expressed as a peel strength evaluated by a 1800 peel test as in present claim 7, absent evidence to the contrary.
Regarding claim 8, see examples (Table 1, paragraph 0056) wherein the fluorine resins used include PTFE (i.e., polytetrafluoroethylene) and ETFE (i.e., ethylene-tetrafluoroetheylene copolymer) (paragraph 0028).
Regarding claim 9, Nakano et al teach that thickness of the film is preferably 10 microns to 150 microns (paragraph 0028) which overlaps with the thickness in present claim 9. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claim 10, Nakano et al teach that surface modified fluororesin film is bonded to a rubber (overview). When the surface-modified fluororesin film RF is press-bonded to rubber, the surface-modified fluororesin film is superposed on an unvulcanized rubber sheet or the like mixed with a crosslinking agent so that the surface-modified surface is always exposed and is vulcanized and molded by a molded die (paragraph 0038) which reads on coating film for coating a surface of rubber-containing substrate included in a molded rubber body in present claim 10. Additionally, it is the Office’s position that it is an intended use of the surface-modified fluororesin film of Nakano et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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