DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/08/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the lubricant is stearic acid soap…..the lubricant is added in an amount of 0.1 phr to 1 phr”. While there is support for 0.1 phr to 1 phr of lubricant such as stearic acid, there is no support for 1 phr of lubricant such as stearic acid soap (see paragraph 0041, 0043). While Table 1 provides support for 0.1 phr of stearic acid soap, there is no support for 1 phr of stearic acid soap (see paragraphs 0060 and Table 1). It is suggested that the claim is amended to recite stearic acid instead of stearic acid soap. This rejection affects all the dependent claims.
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 Igarashi et al. (JP 2004235395 A cited in IDS) in view of Mitamura et al. (US 2020/0362145 A1), Harada et al. (US 2018/0086945 A1), Sunagawa et al. (US 2014/0061616 A1 cited in IDS) and Purvis (6,180,246 cited in IDS). It is noted that the disclosures of Igarashi et al. are based on a machine translation of the reference cited in IDS.
Regarding claims 1-10, Igarashi et al. disclose an adhesive film (UV release tape) comprising a base film (substrate layer), an adhesive layer (UV release layer) and a release film (separation layer), in that order (see page 5, paragraph 0018). The base film can comprise a polyvinyl chloride resin, a plasticizer and a stabilizer, and the base film can have a thickness of 10 to 500 microns (see page 6, paragraph 0018). Igarashi et al. disclose that a barrier layer (isolation layer) can be provided between the substrate and the adhesive layer (UV release layer) (see page 6, lines 364-367).
The adhesive layer (UV release layer) is formed of the adhesive which contains an acrylic adhesive polymer, a crosslinking agent (hardener) in amount of 0.1 to 30 parts by weight to the adhesive polymer of 100 parts by weight (see page 10, paragraph 0035). Accordingly, the amount of acrylic polymer is 77 to 99.9 wt%, which overlaps with amount of 22 to 80 phr of acrylic and acryl polymer (22 = 20 +2 and 80 = 60 +20). The adhesive also contains a radical (photo) polymerization initiator (see page 9, paragraph 0034). The amount of radical polymerization initiator can be 0.625 parts by weight which overlaps with that presently claimed (Example 1). The adhesive layer (UV release layer) is identical to that presently claimed. Therefore, it is inherent or obvious that the UV release layer has a peeling strength as presently claimed.
Igarashi et al. do not disclose the base layer as presently claimed. While Igarashi et al. disclose the barrier layer (isolation layer) between the substrate and the adhesive layer (UV release layer), Igarashi et al. do not disclose the barrier layer as presently claimed. Igarashi et al. do not disclose an ultraviolet transmittance of the UV release tape is greater than 70% or greater than 78%.
Mitamura et al. disclose a vinyl chloride resin composition comprising a stabilizer composition in amount of 0.3 to 15 parts by mass with respect to 100 parts by mass of vinyl chloride resin, 0.01 to 5.0 parts by mass of lubricant such as stearic acid with respect to 100 parts by mass of vinyl chloride resin, plasticizer, impact modifier such as elastomers and pigments (colorant) (see Abstract and page 19, claims 8 and 9 and paragraphs 0095, 0096, 0102, 0104, 0121). Further, absent criticality of stearic acid over stearic acid soap in the present invention and given that the present invention appears to use stearic acid and stearic acid soap interchangeably (see paragraphs 0043 and 0060), stearic acid meets lubricant as presently claimed. The stabilizer composition comprises 100 parts by mass of organic zinc salt such as zinc stearate, 5 to 700 parts by mass of organic acid calcium salt such as calcium stearate and 5 to 200 parts by mass of hindered amine-light stabilizer (see Abstract and paragraphs 0032, 0044, 0045, 0036, 0069). These amounts of organic zinc salt and organic calcium salt are desired from the standpoints of thermal stability, coloration resistance and thermal coloration resistance (see paragraph 0054). Based on these amounts, the weight ratio of organic zinc salt to organic calcium salt is 20:1 to 0.14:1 (20 = 100/5 and 0.14 = 100/700). That is, the ratio of organic calcium salt to organic zinc salt is 1:0.14 to 1:20, which overlaps with that presently claimed. The vinyl chloride resin composition provides excellent thermal stability, coloration resistance and thermal coloration resistance (see paragraph 0149).
In light of motivation for using a vinyl chloride resin composition disclosed by Mitamura et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a vinyl chloride resin composition of Mitamura et al. for preparing the base layer of Igarashi et al. in order to provide excellent thermal stability, coloration resistance and thermal coloration resistance, and thereby arrive at the claimed invention.
Igarashi et al. in view of Mitamura et al. do not disclose amount and type of plasticizer, amount of modifier and amount of colorant in the base layer (substrate layer). While Igarashi et al. disclose the barrier layer (isolation layer) between the substrate and the adhesive layer (UV release layer), Igarashi et al. in view of Mitamura et al. do not disclose the barrier layer as presently claimed. Igarashi et al. in view of Mitamura et al. do not disclose an ultraviolet transmittance of the UV release tape is greater than 70% or greater than 78%.
Harada et al. disclose a PVC film comprising a plasticizer such as bis(2-ethylhexyl) terephthalate in amount of 15 to 75 parts by weight per 100 parts by weight of PVC in order to provide plasticization effects and heat resistance (see paragraphs 0022, 0024, 0025, 0031, 0032, 0033). Further, the PVC film comprises an elastomer (impact modifier) in amount of 1 to 75 parts by weight per 100 parts by weight of PVC in order to provide miscibility, strength, heat resistance and flexibility (see paragraphs 0034, 0038, 0039). Further, colorant such as pigment or dye can be added to PVC film in amounts generally employed in the field of PVC film (see paragraph 0048).
In light of motivation for using 15 to 75 parts by weight of a plasticizer such as bis(2-ethylhexyl) terephthalate per 100 parts by weight of PVC, 1 to 75 parts by weight of impact modifier per 100 parts by weight of PVC and colorant in amounts generally employed in the field of PVC film disclosed by Funaki et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use 15 to 75 parts by weight of a plasticizer such as bis(2-ethylhexyl) terephthalate per 100 parts by weight of PVC, 1 to 75 parts by weight of impact modifier per 100 parts by weight of PVC and colorant in amounts generally employed in the field of PVC film, including amount of colorant as presently claimed, in the base layer of Igarashi et al. in view of Mitamura et al. in order to provide plasticization effects and heat resistance, to provide miscibility, strength, heat resistance and flexibility as well as to provide desired color, and thereby arrive at the claimed invention.
While Igarashi et al. disclose the barrier layer (isolation layer) between the substrate and the adhesive layer (UV release layer), Igarashi et al. in view of Mitamura et al. and Harada et al. do not disclose the barrier layer as presently claimed. Igarashi et al. in view of Mitamura et al. and Harada et al. not disclose an ultraviolet transmittance of the UV release tape is greater than 70% or greater than 78%.
Sunagawa et al. disclose a gas barrier layer comprising polyvinyl chloride that provides barrier against oxygen and air (see paragraph 0100).
In light of motivation for using a barrier layer comprising polyvinyl chloride disclosed by Sunagawa et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use barrier layer comprising polyvinyl chloride in Igarashi et al. in view of Mitamura et al. and Harada et al. in order to provide barrier against oxygen and air, and thereby arrive at the claimed invention.
Igarashi et al. in view of Mitamura et al., Harada et al. and Sunagawa et al. do not disclose the barrier layer comprises a mixture of polyvinyl chloride and vinyl chloride resin as presently claimed.
Purvis et al. disclose a layer a blend of 75 to 98 phr PVC homopolymer and 2 to 25 phr copolymer of vinyl chloride and vinyl acetate (vinyl acetate resin or vinyl chloride-vinyl acetate binary copolymer) that provides improved flow properties and improved processability over the PVC homopolymer (see col. 4, lines 3-20).
In light of motivation for using a blend of 75 to 98 phr PVC homopolymer and 2 to 25 phr copolymer of vinyl chloride and vinyl acetate disclosed by Purvis et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a blend of 75 to 98 phr PVC homopolymer and 2 to 25 phr copolymer of vinyl chloride and vinyl acetate instead of polyvinyl chloride in Igarashi et al. in view of Mitamura et al., Harada et al. and Sunagawa et al. in order to provide improved flow properties and improved processability, and thereby arrive at the claimed invention.
Igarashi et al. in view of Mitamura et al., Harada et al., Sunagawa et al. and Purvis et al. do not disclose the adhesive film is a UV release tape.
While there is no disclosure that the adhesive film is a UV release tape as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. UV release tape, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art adhesive film and further that the prior art structure which is an adhesive film identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Igarashi et al. in view of Mitamura et al., Harada et al., Sunagawa et al. and Purvis et al. disclose the adhesive film (UV release tape) as set forth above. Given that the adhesive film of Igarashi et al. in view of Mitamura et al., Harada et al., Sunagawa et al. and Purvis et al. is identical to UV release tape as presently claimed, it is inherent or obvious that an ultraviolet transmittance of the UV release tape is greater than 70% or greater than 78%.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Igarashi et al. (JP 2004235395 A cited in IDS) in view of Mitamura et al. (US 2020/0362145 A1), Harada et al. (US 2018/0086945 A1), Li et al. (CN 216890758U cited in IDS) and Purvis (6,180,246 cited in IDS). It is noted that the disclosures of Igarashi et al. are based on a machine translation of the reference cited in IDS and the disclosures of Li et al. are based on a machine translation of the reference cited in IDS.
Regarding claims 1-10, Igarashi et al. disclose an adhesive film (UV release tape) comprising a base film (substrate layer), an adhesive layer (UV release layer) and a release film (separation layer), in that order (see page 5, paragraph 0018). The base film can comprise a polyvinyl chloride resin, a plasticizer and a stabilizer, and the base film can have a thickness of 10 to 500 microns (see page 6, paragraph 0018). Igarashi et al. disclose that a barrier layer (isolation layer) can be provided between the substrate and the adhesive layer (UV release layer) (see page 6, lines 364-367).
The adhesive layer (UV release layer) is formed of the adhesive which contains an acrylic adhesive polymer, a crosslinking agent (hardener) in amount of 0.1 to 30 parts by weight to the adhesive polymer of 100 parts by weight (see page 10, paragraph 0035). Accordingly, the amount of acrylic polymer is 77 to 99.9 wt%, which overlaps with amount of 22 to 80 phr of acrylic and acryl polymer (22 = 20 +2 and 80 = 60 +20). The adhesive also contains a radical (photo) polymerization initiator (see page 9, paragraph 0034). The amount of radical polymerization initiator can be 0.625 parts by weight which overlaps with that presently claimed (Example 1). The adhesive layer (UV release layer) is identical to that presently claimed. Therefore, it is inherent or obvious that the UV release layer has a peeling strength as presently claimed.
Igarashi et al. do not disclose the base layer as presently claimed. While Igarashi et al. disclose the barrier layer (isolation layer) between the substrate and the adhesive layer (UV release layer), Igarashi et al. do not disclose the barrier layer as presently claimed. Igarashi et al. do not disclose an ultraviolet transmittance of the UV release tape is greater than 70% or greater than 78%.
Mitamura et al. disclose a vinyl chloride resin composition comprising a stabilizer composition in amount of 0.3 to 15 parts by mass with respect to 100 parts by mass of vinyl chloride resin, 0.01 to 5.0 parts by mass of lubricant such as stearic acid with respect to 100 parts by mass of vinyl chloride resin, plasticizer, impact modifier such as elastomers and pigments (colorant) (see Abstract and page 19, claims 8 and 9 and paragraphs 0095, 0096, 0102, 0104, 0121). Further, absent criticality of stearic acid over stearic acid soap in the present invention and given that the present invention appears to use stearic acid and stearic acid soap interchangeably (see paragraphs 0043 and 0060), stearic acid meets lubricant as presently claimed. The stabilizer composition comprises 100 parts by mass of organic zinc salt such as zinc stearate, 5 to 700 parts by mass of organic acid calcium salt such as calcium stearate and 5 to 200 parts by mass of hindered amine-light stabilizer (see Abstract and paragraphs 0032, 0044, 0045, 0036, 0069). These amounts of organic zinc salt and organic calcium salt are desired from the standpoints of thermal stability, coloration resistance and thermal coloration resistance (see paragraph 0054). Based on these amounts, the weight ratio of organic zinc salt to organic calcium salt is 20:1 to 0.14:1 (20 = 100/5 and 0.14 = 100/700). That is, the ratio of organic calcium salt to organic zinc salt is 1:0.14 to 1:20, which overlaps with that presently claimed. The vinyl chloride resin composition provides excellent thermal stability, coloration resistance and thermal coloration resistance (see paragraph 0149).
In light of motivation for using a vinyl chloride resin composition disclosed by Mitamura et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a vinyl chloride resin composition of Mitamura et al. for preparing the base layer of Igarashi et al. in order to provide excellent thermal stability, coloration resistance and thermal coloration resistance, and thereby arrive at the claimed invention.
Igarashi et al. in view of Mitamura et al. do not disclose amount and type of plasticizer, amount of modifier and amount of colorant in the base layer (substrate layer). While Igarashi et al. disclose the barrier layer (isolation layer) between the substrate and the adhesive layer (UV release layer), Igarashi et al. in view of Mitamura et al. do not disclose the barrier layer as presently claimed. Igarashi et al. in view of Mitamura et al. do not disclose an ultraviolet transmittance of the UV release tape is greater than 70% or greater than 78%.
Harada et al. disclose a PVC film comprising a plasticizer such as bis(2-ethylhexyl) terephthalate in amount of 15 to 75 parts by weight per 100 parts by weight of PVC in order to provide plasticization effects and heat resistance (see paragraphs 0022, 0024, 0025, 0031, 0032, 0033). Further, the PVC film comprises an elastomer (impact modifier) in amount of 1 to 75 parts by weight per 100 parts by weight of PVC in order to provide miscibility, strength, heat resistance and flexibility (see paragraphs 0034, 0038, 0039). Further, colorant such as pigment or dye can be added to PVC film in amounts generally employed in the field of PVC film (see paragraph 0048).
In light of motivation for using 15 to 75 parts by weight of a plasticizer such as bis(2-ethylhexyl) terephthalate per 100 parts by weight of PVC, 1 to 75 parts by weight of impact modifier per 100 parts by weight of PVC and colorant in amounts generally employed in the field of PVC film disclosed by Funaki et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use 15 to 75 parts by weight of a plasticizer such as bis(2-ethylhexyl) terephthalate per 100 parts by weight of PVC, 1 to 75 parts by weight of impact modifier per 100 parts by weight of PVC and colorant in amounts generally employed in the field of PVC film, including amount of colorant as presently claimed, in the base layer of Igarashi et al. in view of Mitamura et al. in order to provide plasticization effects and heat resistance, to provide miscibility, strength, heat resistance and flexibility as well as to provide desired color, and thereby arrive at the claimed invention.
While Igarashi et al. disclose the barrier layer (isolation layer) between the substrate and the adhesive layer (UV release layer), Igarashi et al. in view of Mitamura et al. and Harada et al. do not disclose the barrier layer as presently claimed. Igarashi et al. in view of Mitamura et al. and Harada et al. not disclose an ultraviolet transmittance of the UV release tape is greater than 70% or greater than 78%.
Li et al. disclose an isolation layer (barrier layer) between a base material layer comprising a polyvinyl chloride resin and a pressure-sensitive adhesive layer (see Abstract). The isolation is used for blocking the plasticizer in the base material layer from migrating to the pressure-sensitive adhesive layer (see claim 1). The isolation layer is made of an isolation resin such as vinyl chloride, i.e. polyvinylchloride resin (see page 3, paragraph 20).
In light of motivation for using an isolation layer (barrier layer) comprising polyvinyl chloride resin disclosed by Li et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use the barrier layer comprising polyvinyl chloride in Igarashi et al. in view of Mitamura et al. and Harada et al. in order to provide blocking of the plasticizer in the base material layer from migrating to the pressure-sensitive adhesive layer, and thereby arrive at the claimed invention.
Igarashi et al. in view of Mitamura et al., Harada et al. and Li et al. do not disclose the barrier layer comprises a mixture of polyvinyl chloride and vinyl chloride resin as presently claimed.
Purvis et al. disclose a layer a blend of 75 to 98 phr PVC homopolymer and 2 to 25 phr copolymer of vinyl chloride and vinyl acetate (vinyl acetate resin or vinyl chloride-vinyl acetate binary copolymer) that provides improved flow properties and improved processability over the PVC homopolymer (see col. 4, lines 3-20).
In light of motivation for using a blend of 75 to 98 phr PVC homopolymer and 2 to 25 phr copolymer of vinyl chloride and vinyl acetate disclosed by Purvis et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a blend of 75 to 98 phr PVC homopolymer and 2 to 25 phr copolymer of vinyl chloride and vinyl acetate instead of polyvinyl chloride in Igarashi et al. in view of Mitamura et al., Harada et al. and Li et al. in order to provide improved flow properties and improved processability, and thereby arrive at the claimed invention.
Igarashi et al. in view of Mitamura et al., Harada et al., Li et al. and Purvis et al. do not disclose the adhesive film is a UV release tape.
While there is no disclosure that the adhesive film is a UV release tape as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. UV release tape, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art adhesive film and further that the prior art structure which is an adhesive film identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Igarashi et al. in view of Mitamura et al., Harada et al., Li et al. and Purvis et al. disclose the adhesive film (UV release tape) as set forth above. Given that the adhesive film of Igarashi et al. in view of Mitamura et al., Harada et al., Li et al. and Purvis et al. is identical to UV release tape as presently claimed, it is inherent or obvious that an ultraviolet transmittance of the UV release tape is greater than 70% or greater than 78%.
Response to Arguments
Applicant's arguments filed 08/08/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicants argue that additionally, Igarashi specifically teaches that when using a conventional adhesive film, it is necessary to irradiate the light before the conventional adhesive film is peeled off from the wafer surface, so it is necessary to introduce light irradiation equipment during the process; hence, to solve the problems, an adhesive film is provided so that there is no need to introduce a light irradiation equipment when the adhesive film is peeled from the wafer (see Igarashi, paragraphs [0005]-[0010] and [0059]). That is, the adhesive film disclosed by Igarashi is designed for being peeled from the wafer without requiring light exposure. Therefore, there would not be a reasonable motivation for one of ordinary skill in the art to modify the composition of the adhesive film disclosed by Igarashi to make the adhesive film have an ultraviolet light transmittance being greater than 70%.
However, the adhesive film of Igarashi is not modified to make the adhesive film have an ultraviolet light transmittance being greater than 70%. Igarashi has been modified by cited prior arts to achieve specific properties as noted above. Accordingly, the adhesive film (UV release tape) of Igarashi in view of cited prior arts is identical to that presently claimed. Given that the adhesive film of Igarashi et al. in view of cited prior arts is identical to UV release tape as presently claimed, it is inherent or obvious that an ultraviolet transmittance of the UV release tape is greater than 70%, absent evidence to the contrary.
Further, the fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants argue that moreover, the other secondary references, Qian, Sunagawa, Purvis, Li and Machida, while being cited for disclosing certain technical features, are collectively silent regarding a substrate layer including specific amounts of bis(2-ethylhexyl) phthalate, stearic acid soap, calcium stearate, and zinc stearate. Therefore, one of ordinary skill in the art would not look to the cited references, either alone or in combination, to arrive at the features recited in the amended claim 1.
However, note that while Sunagawa, Purvis, and Li do not disclose all the features of the present claimed invention, Sunagawa, Purvis, and Li are each used as a teaching reference, and therefore, it is not necessary for these secondary references to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather each reference teaches a certain concept, namely barrier layer comprising polyvinyl chloride by Sunagawa and Li, and barrier layer comprising polyvinyl chloride and vinyl chloride resin by Purvis, and in combination with the primary reference, discloses the presently claimed invention.
Applicants argue that Purvis discloses a laminated glazing unit comprising an interlayer which is formed of a copolymer of from about 75 to 98 phr PVC and from about 2 to 25 phr polyvinyl acetate. However, Purvis specifically teaches that the copolymer, composed of from about 75 to 98 phr PVC and from about 2 to 25 phr polyvinyl acetate, exhibits high flowability. (see Purvis, col. 4, lines 3-13). It is well known in the art that resins with high flowability typically exhibit poor barrier properties for isolation. [Emphasis added]. Therefore, the disclosure of Purvis actually teaches away from the material of the claimed isolation layer. Accordingly, one of ordinary skill in the art would lack motivation to combine the teachings of Purvis with those of Igarashi to arrive at the claimed UV release tape.
However, applicants have provided no evidence (i.e. data) to show that copolymer of from about 75 to 98 phr PVC and from about 2 to 25 phr polyvinyl acetate of Purvis would exhibit poor barrier properties for isolation, and therefore cannot be used for the barrier layer (isolation layer) of Igarashi et al.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ning (CN105504583A) disclose PVC material comprising a PVC resin and 3-7 parts of thermal stabilizer (see Abstract). The thermal stabilizer comprises calcium stearate, calcium ricinoleate, zinc stearate and zin ricinoleate in the weight ratio of 0.5-1.5 : 1 : 0.5-1.5 : 0.8-1.2 that provides good thermal stability, light stability, transparency, tinting strength and good processing properties (see page 2, paragraphs 10-11). Accordingly, the ratio of calcium stearate to zinc stearate is 1:3 (0.5/1.5). It is noted that the disclosures of Ning are based on a machine translation of the reference which is included in this action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787