DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 6/22/26. Specifically, claim 1 is amended to incorporate the limitations of previous claim 1. Note that the rejections are substantially identical with the proviso of removing lines not directed towards the amended claim (e.g. lines directed towards a broader embodiment and previous claim 6).
The newly introduced limitations and/or the new claims were not present at the time of the preceding action. For this reason, the present action is properly made final.
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 .
Claim Rejections - 35 USC § 103
Claim(s) 1-5 and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015012274 (herein Uekusa) in view of US 2014/0342111 (herein Tanaka).
In setting forth the instant rejection, a machine translation of Uekusa has been relied upon. Both the WO document and the machine translation were supplied with the IDS filed 8/4/23.
As to claims 1 and 3-5, Uekusa discloses a resin composition (see abstract, pages 1-4 and examples) comprising a 4-methyl-1-pentene copolymer (A) with a comonomer of propylene (examples) and a thermoplastic resin (B) other than 4-methyl-1-pentene copolymer. The amount of (A) is 2 to 50 parts and (B) is 50 to 98 parts. See paragraph 89 on page 3. Also see examples. The thermoplastic resin (b) is a styrene elastomer. See paragraph 517 to paragraph 552 in pages 13-14. The composition is for a surface protective film (abstract).
Uekusa is silent on a mixture of 4-methyl-1-pentene copolymers.
Tanaka discloses similar compositions and protective films. See abstract and examples.
Tanaka teaches that the composition comprises a 4-methyl-1-pentene propylene (alpha olefin) copolymer (referred to as B2, reading on A-1) comprising 60 to 80 mol% (75 to 89 mass%) 1-methyl-1-pentene and the remainder of 20-40 mol% (11 to 25 mass%) alpha olefins of 2-4 carbons other than 4-methyl-1-pentene. See paragraph 141, 339 and examples. The melting point is disclosed is less than 110 oC or not observed (see paragraph 190 and examples). This is exemplified as B2 in table 1 with 74 mol% 4-methyl-1-pentene and 26 mol% propylene and a melting point not observed. Tanaka teaches that this copolymer helps improve flexibility, impact resistance and molding properties. See paragraph 192 and 334.
Tanaka teaches that the composition comprises a 4-methyl-1-pentene propylene (alpha olefin) copolymer (referred to as B1, reading on A-2) comprising 80 to 98 mol% (89 to 99 mass%) 1-methyl-1-pentene and the remainder of 2-20 mol% (1 to 11 mass%) alpha olefins of 2-4 carbons other than 4-methyl-1-pentene. See paragraph 141, 339 and examples. The melting point is disclosed as 125 to 190 oC (see paragraph 160 and examples). This is exemplified as B1-2 in table 1 with 84 mol% 4-methyl-1-pentene and 16 mol% propylene and a melting of 131 oC. Tanaka teaches that this copolymer helps improve transparency, elongation, toughness and heat resistance. See paragraphs 193, 207 and 334. The ratio of B1 to B2 of Tanaka (claimed components A-1 and A-2) is 99-1 each. See paragraph 37 and examples.
It would have been obvious at the time of the invention to have modified the composition of Uekusa with the combination of claimed components A-1 and A-2 for A as suggested by Tanaka because one would want to improve transparency, elongation, toughness, heat resistance, flexibility, impact resistance and moldability.
As to claim 2, the composition of is identical with identical components. Therefore, it is reasonable to take the position that the claimed properties would naturally flow from the identical material. Thus, the claimed properties are inherently present in the Uekusa/Tanaka composition.
As to claim 8, adhesives comprising the composition are taught. See abstract and examples of Uekusa.
As to claim 9-11, laminates, multilayer films, bodes there of and surface protection films comprising an adhesive layer of the composition and a base material layer L2 comprising polypropylene. See paragraph 699-754 on pages 17-19.
As to claim 12, a method for producing a surface protection film is taught comprising forming the surface by a t-die film forming method. See paragraph 699-785 on pages 17-19.
As to claim 13, a method of protecting a surface having a surface irregularity height of 0.1 to 300 µm using the film is taught. See paragraph 789-815 on pages 19-20.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. However, note that the rejections over Tanaka alone have been withdrawn in light of applicant’s amendments.
In response to applicant's argument that the ranges of Tanaka do not align with Uekusa and cannot be incorporated, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In the instant case, Tanaka is utilized as a teaching reference to teach the advantage of the claimed mixture of 4-methyl-1-pentene copolymers. Uekusa already teaches the ranges of the 4-methyl-1-pentene copolymer and one would look to Tanaka to improve upon Uekusa because they would want to optimize transparency, elongation, toughness, heat resistance, flexibility, impact resistance and moldability via utilized the mixture of Tanaka.
Similarly, the compositions of Tanaka are similar insofar as they are adhesives, multilayer films and surface protective films having thermoplastic compositions comprising 4-methyl-1-pentene copolymers and elastomers. Likewise, as elucidated above, Uekusa are adhesives, multilayer films and surface protective films having thermoplastic compositions comprising 4-methyl-1-pentene copolymers and elastomers.
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 MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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