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
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.
Claim(s) 1, 4-6, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizuno et al. (JP2007-152591A) in view of Murashige et al. (US 5,149,762).
Regarding Claim 1, JP’591 teaches a multilayer film, which comprises a base layer comprising a polyamideimide polymer (i.e. copolymer containing amide and imide repeating units) 0031,0003,0022,0032]; and a primer layer formed on the base layer, wherein the primer layer comprises a range of 70/30 to 30/70, more preferably in the range of 40/60 to 60/40, polyester resin to polyurethane resin on the total weight of the primer layer [0005,0018,0022,0167]. JP’591 teaches that the primer (coating layer) has a thickness of preferably between 0.005 to 0.2 micron and more preferably between 0.008 and 0.15 micron [0143], which substantially and obviously overlaps the recited thickness. JP’591 also provides evidence that relative mass% of polyester to polyurethane is a result-effective variable, known in the prior art to affect streak defects and adhesion [0017,0022]. JP’591 fails to teach the more narrowly recited range of 60-95% polyester resin (Claim 1) or 5-40% weight of polyurethane. However, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the relative concentrations of polyurethane and polyester through routine optimization to obtain a layer with desired properties. Moreover, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
JP’591 teaches that the multilayer film further comprises a functional layer; the primer layer is interposed between the base layer and the functional layer; and the functional layer is at least one selected from the group consisting of a hard coating layer, an optically clear adhesive layer, and a printing coating layer [0023,0026].
JP’591 fails to teach the recited range of amide to imide ratios. However, it is well-known in the art that imide regions provide thermal stability and resistance to a polyamide-imide polymer. For example, Murashiga et al. (US‘762), patent from 1992, provides evidence that the content of imide is a result-effective variable, known in the prior art to affect the heat resistance of a polymer. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the mole ratio of imide to amide in the base layer through routine optimization to provide the base layer with a desired combination of properties, including strength and rigidity, provided by amide regions, and thermal resistance, provided by imide regions.
JP’591 fails to teach a cross-cut test. However, the test is relevant to the claimed multilayer of film only to the extent that it measures a property of the film itself. Because a cross-cut test measures adhesion of JP’591, the issue is whether the multilayer film of JP’591 would have had a level of adhesion such that its measurement would have provided the test result recited in Claim 6 or whether it would have been obvious to modify the multilayer film to have that level of adhesion. JP’591 also provides evidence that the level of adhesion is a result-effective variable, known in the art to affect peeling when cut [0006,0143,0169,0222]. Because JP’591 suggests a multilayer film with layers having a desirable level of adhesion, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the multilayer film of JP’591 to have the recited level of adhesion as measured by results of a cross-cut test through routine optimization. Because Claim 7 requires only one of a group consisting of a hard coating layer, an optically clear adhesive layer, and a printing coating layer, Claim 8 is interpreted to further recite ALL properties of all of the layers recited in Claim 7, only one of which is required. However, in addition, although JP’591 fails to teach a peel strength, peel strength is also a measure of adhesion, and JP’591 suggests improved adhesion with the claimed multilayer film, including improved properties against peeling [0006,0148-0149]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the multilayer film of JP’591 to have the recited measures of adhesion (“cross-cut test,” “peel strength”) through routine optimization.
Regarding Claim 4, JP’591 provides evidence that surface energy was known in the art to affect adhesion (“affinity” of one material for another) [0080]; surface energy is a known measure of adhesion. JP’591 fails to teach the recited range of surface energy. JP’591 also teaches the primer layer (“coating layer”) to provide adhesion [0001,0018,0021-0023]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the multilayer film of JP’591 with a primer layer having the recited level of adhesion -- as reported within the recited range of surface energy -- through routine optimization.
Regarding Claim 5, JP’591 teaches a transparent (i.e. greater than 85% transmittance) multilayer haze of 1.5% or less (p. 18, [0138,0022,0046]). JP’591 fails to teach the yellow index. It would have been obvious to provide the multilayer film of the combination of JP’591 in view of US‘762 with a yellow index within the recited range to preserve its desirable optical properties.
Regarding Claim 6, JP’591 fails to teach a cross-cut test. However, the test is relevant to the claimed multilayer of film only to the extent that it measures a property of the film itself. Because a cross-cut test measures adhesion of JP’591, the issue is whether the multilayer film of JP’591 would have had a level of adhesion such that its measurement would have provided the test result recited in Claim 6 or whether it would have been obvious to modify the multilayer film to have that level of adhesion. JP’591 also provides evidence that the level of adhesion is a result-effective variable, known in the art to affect peeling when cut [0006,0143,0169,0222]. Because JP’591 suggests the primer layer for the purpose of providing a desirable level of adhesion, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the multilayer film of the combination of JP’591 in view of US‘762 to have the recited level of adhesion as measured by results of a cross-cut test through routine optimization.
Regarding Claim 9, JP’591 teaches a process comprising preparing a multilayer film, which comprises: preparing a base layer comprising a polyamideimide polymer [0031-0032,0001,0005]; and coating a primer layer composition on the base layer and drying it [0064,0108,0112], wherein the primer layer comprises a range of 70/30 to 30/70, more preferably in the range of 40/60 to 60/40, polyester resin to polyurethane resin on the total weight of the primer layer [0005,0018,0022,0167]. JP’591 teaches that the primer (coating layer) has a thickness of preferably between 0.005 to 0.2 micron and more preferably between 0.008 and 0.15 micron [0143], which substantially and obviously overlaps the recited thickness. JP’591 also provides evidence that relative mass% of polyester to polyurethane is a result-effective variable, known in the prior art to affect streak defects and adhesion [0017,0022]. JP’591 fails to teach the more narrowly recited range of 60-95% polyester resin. However, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the relative concentrations of polyurethane and polyester through routine optimization to obtain a layer with desired properties. Moreover, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
JP’591 teaches that the solvent comprises preferably a mixture of water and isopropyl alcohol [0056-0057]. JP’591 teaches a 30% by weight concentration of alcohol in the solvent [0171, p. 124]. JP’591 fails to teach 75% by weight of water and less than 25% by weight of isopropyl alcohol based on the total weight of the solvent. JP’591 provides evidence that the proportion of water to isopropyl alcohol is a result-effective variable, known in the prior art to affect drying, streaking, and bubbles [0157,0171]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of JP’591 with a solvent which is a mixture of isopropyl alcohol and water in the recited proportions through routine optimization. See, also, rejection of Claim 1 under 35 USC 103 above.
Response to Arguments
Applicant’s amendment to the claims, filed 2 October 2025, with respect to the rejection of Claims 1, 4-6, and 9 under 35 USC 112(b) has been fully considered and overcomes the previous rejection under this paragraph. The rejection of Claims 1, 4-6, and 9 under 35 USC 112(b) has been withdrawn.
Applicant's arguments filed 2 October 2025 with respect to the rejections of Claims 1,4-6, and 9 under 35 USC 103 have been fully considered but they are not persuasive.
In response to Applicant’s argument concerning certain properties, Applicant has not shown criticality of IPA in comparing Examples 9 and 10, because IPA was not the only variable changed; thickness was also changed. Therefore, Applicant has not shown that IPA is responsible for a change in properties, or critically so.
In response to Applicant’s argument concerning weight ratio of polyester resin to polyurethane resin (Remarks, p. 10), Applicant’s argument relies on particularly embodiments, rather than on the entirety of the disclosure, which teaches that the primer layer comprises a range of 70/30 to 30/70, more preferably in the range of 40/60 to 60/40, polyester resin to polyurethane resin on the total weight of the primer layer. See citations in Claims 1 and 9 above. Applicant has not sufficiently addressed these broader teachings of JP’591.
In response to Applicant’s argument concerning the now recited ratio of imide to amide content (Remarks, p. 10), JP’591 fails to teach the recited ratio of imide to amide repeating units added by amendment. However, Murashige et al. (US 5,149,762) is cited in this Office Action as evidence of the known thermal resistant property of imide regions.
Conclusion
No claim is allowed.
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712