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 .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-5 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0342111 (herein Tanaka).
As to claims 1 and 3-5, Tanaka discloses a resin composition (See paragraph 458 and examples) comprising
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.
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.
A 4-methyl-1-pentene copolymer (referred to as A, reading on thermoplastic resin B) different than the above B2 and B1. See paragraph 99-110 and examples.
The amount of claimed component B (A of Tanaka) is 10 to 90 parts, while claimed A-1 and A-2 (B1 and B2 of Tanaka) is 90 to 10 parts. See paragraph 35.
As to the broader disclosure, the difference between Tanaka and claimed invention is that 1) the melting point (d) of 125 to 190 oC (see paragraph 160) overlaps the claimed range of 110 to 160 190 oC and the amount of thermoplastic resin (B) is taught as 10 to 90 mass%, which overlaps the claimed range at 50 to 98 mass%. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Specific attention is drawn to examples 5 in table 5 which utilizes 30 parts B2 (reading on claimed component A-1), 10 parts B1-1 (reading on claimed component A-2) and 60 parts A (reading on claimed component B). Thus, the only difference in example 5 is that the melting point of A-2 is 180 oC (table 1), which is just outside the claimed range of 110 to 160 oC. However, the examples state that this B1-1 is interchangeable with B1-2, which has a melting point within the claimed range (table 1). Therefore, it would have been obvious to substituted B1-1 with B1-2 and thereby arrive at the claimed invention because Tanaka teaches that they are interchangeable.
Further, example 34 in table 9 reads utilizes 57 parts B2 (reading on claimed component A-1), 14 parts B1-2 (reading on claimed component A-2) and 24 parts A (reading on claimed component B). Thus, the only difference in example 34 and the claimed range is the amount of thermoplastic resin (B, about 15 mass%) and the combination of A-1 and A-2 (about 85 mass%) are just outside the claimed range of 50 to 98 mass% and 2 to 50 mass% respectively. Nevertheless, the amounts are taught as overlapping in the broader disclosure as elucidated above. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
As to claim 8, an adhesive comprising the composition is taught. See paragraph 428, 440 and 455.
As to claim 9, multilayer laminated films are taught comprising an adhesive layer of the composition and a base layer. See paragraph 422, 428, 440 and 455.
As to claim 10, a surface protection film comprising an adhesive layer of the composition is taught and thus a process of forming the layer. See paragraph 43 423, 428, 431, 440 and 455.
Claim(s) 1-13 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 3-6, 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) may be an olefin elastomer or 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.
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).
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).
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 Uekusa 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.
Conclusion
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.
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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