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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3 June 2026 has been entered.
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 1, 4-6, and 9 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.
Claim 1 recites the combination of limitations:
wherein the primer layer comprises 70% by weight to 95% by weight of a polyester resin based on the total weight of the primer layer, and 5% by weight to 30% by weight of a polyurethane resin based on the total weight of the primer layer, wherein a cross-cut test result of a surface of the hard coating layer or the printing coating layer according to the ASTM D3359 standard is 5B or more, or the optically clear adhesive layer has a 180⁰ peel strength of 0.8 kgf/inch or more to the base layer according to the ASTM D903 standard, wherein the polyamide polymer is a copolymer containing amide repeating units and imide repeating units, wherein the mole ratio of imide repeating units to amide repeating units is 2:98 to 70:30, and wherein the primer layer has a thickness of 0.03 µm to 1.0 µm, and wherein a 180⁰ peel strength of the optically clear adhesive layer with respect to the base layer, measured according to ASTM D903, is 1.0 kgf/inch or more.
The combination of limitations is indefinite, because it is not clear what limitations are required and which are optional. The claim includes the limitations “wherein the primer layer comprises . . .” and “wherein a cross-cut test result” before the limitation “or the optically clear adhesive layer has a 180⁰ peel strength” in lines 9-10, which is then followed by further “wherein” clauses, ending with the limitation “and wherein a 180⁰ peel strength of the optically clear adhesive layer with respect to the base layer, measured according to ASTM D903, is 1.0 kgf/inch or more.” The limitation first requires that the optically clear adhesive layer has a peel strength of 0.8 kgf/ inch or more as an alternative to one or more previous limitations (unclear which) and then ends with requiring a peel strength that is greater than the range that was merely an alternative in a previous line. Therefore, it is unclear whether every “wherein” limitation after the limitation beginning with limitation “or the optically clear adhesive layer has a 180⁰ peel strength” is an alternative to the two preceding “wherein” clauses” and it is unclear whether the last clause, “wherein a 180⁰ peel strength of the optically clear adhesive” is intended to make the previous alternative absolutely required with a different range (which would seem inconsistent with its recitation as an alternative property with a different range in a previous line), whether it is a “wherein” clause of an alternate limitation (part of the “or the optically clear adhesive” alternative). Because no semi-colons are used to make clear what limitations are part of what alternative embodiment, the claim is interpreted to require the first two “wherein” clauses where the optically clear adhesive layer does not necessarily have a peel strength within the recited range OR the embodiment where the optically clear adhesive layer has a peel strength within the recited range and also the “wherein” clauses which follow the limitation “or the optically clear adhesive layer has.”
Claims 4-6 and 9 are rejected as depending from rejected Claim 1.
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. NOTE: Claim 1 does not clearly require the recited limitation(s) for peel strength (see rejection under 35 USC 112(b) above).
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 arguments filed 3 June 2026 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 arguments concerning the effects of a single component (Remarks, p. 5), the argument is understood to argue against the criticality of a specific concentration of IPA, since it suggests there is not sufficient evidence to show that a particular concentration of IPA makes a material or critical difference.
In response to Applicant’s argument that routine optimization requires that a particular parameter must first be recognized as a result-effective variable (Remarks, p. 5), JP’591 provides evidence, as explained in the rejections, that the ratio of polyurethane to and polyester is a result-effective variable, known to affect streaking and adhesion. Applicant may rebut optimization by showing that a variable is not result-effective. MPEP 2144.05. Applicant has made no such showing, but merely asserts that the prior art does not recognize the amounts as result-effective.
In response to Applicant’s statement about “Examiner’s allegation that Example 7 includes pure water” (Remarks, p. 7), it is not clear what allegation Applicant is referring to or what the context of the “allegation” would be, whether in a rejection or elsewhere; Applicant does not cite to any specific statement or argument of Examiner and has provided the context in which Examiner may have indicated Example 7. Furthermore, Examiner has not cited Example 7 in the rejections. Ex. 7 in Table 2, in fact, uses a 100:0 ratio of water to IPA (i.e. pure water).
Conclusion
No claim is allowed.
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
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