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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on 3/10/2026 is acknowledged.
Claims 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/10/2026.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 5-10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shimada et al. (WO 2018/168960). US 2020/0002491 is being used as an English equivalent to WO 2018/168960 since it is a national stage entry of the international application.
Regarding claims 1 and 3: Shimada et al. teach a method for producing a stretched film, the method comprising stretching a resin film at a stretching temperature, wherein: the resin film comprising an acrylic resin (A1) having a Tg of 125°C [0154] and 23 wt% of acrylic rubber particles (B2), and the stretching temperature is 152°C [0160-0163; Example 9; Table 1]. Shimada et al. teach that the total amount of monomers (21 parts of methyl methacrylate, 0.4 parts of allyl methacrylate, 32 parts of n-butyl acrylate, 7 parts of styrene, 0.8 parts of allyl methacrylate, 34 parts of methyl methacrylate, 3 parts of n-butyl acrylate, 3 parts of acrylonitrile) used for producing the acrylic rubber particles (B2) is 101.2 parts [0161-0163]. Among them, the amount of (meth)acrylate ester monomers (21 parts of methyl methacrylate, 0.4 parts of allyl methacrylate, 32 parts of n-butyl acrylate, 0.8 parts of allyl methacrylate, 34 parts of methyl methacrylate, 3 parts of acrylonitrile) is 91.2 parts. Therefore, the ratio of the amount of (meth)acrylate ester monomers used to the total amount of monomers used for producing the acrylic rubber particles (B2) is 90% by weight (= 91.2 parts / 101.2 parts). Therefore, in Example 9, the proportion of the acrylic acid ester monomer constituting the acrylic rubber particles (B2) with respect to the total amount of the monomer constituting the acrylic resin (A1) and the monomer constituting the acrylic rubber particles (B2) is 21% by weight (= 23% by weight of the acrylic rubber particles (B2) × 90% by weight of the (meth)acrylate ester monomer). It is noted that “acrylic ester monomer” is being interpreted to include (meth)acrylic ester monomers, because that is the common practice in the art to use acrylic to include both acrylic and (meth)acrylic, and the instant specification uses acrylic to include both acrylic and (meth)acrylic. The instant specification discloses that the “acrylic” resin may be a polymer composed mainly of alkyl methacrylate, and may be a homopolymer of alkyl methacrylate [0038].
Regarding claim 2: Shimada et al. teach, the amount of (meth)acrylate ester monomers (21 parts of methyl methacrylate, 0.4 parts of allyl methacrylate, 32 parts of n-butyl acrylate, 0.8 parts of allyl methacrylate, 34 parts of methyl methacrylate, 3 parts of acrylonitrile) is 91.2 parts. Therefore, the ratio of the amount of (meth)acrylate ester monomers used to the total amount of monomers used for producing the acrylic rubber particles (B2) is 90% by weight (= 91.2 parts / 101.2 parts) [0161-0163].
Regarding claim 5: Shimada et al. teach a core-shell particles with a soft core and a rigid shell layer, wherein the soft core layer is formed from 21 parts of methyl methacrylate (claimed (a2)) and 0.4 parts of allyl methacrylate (claimed polyfunctional monomer (a1)) [0160; Example 9]. The amount of claimed (a2), other than (a1) is 100 wt%.
Regarding claim 6: Shimada et al. teach a shell layer of 32 parts of n-butyl acrylate, 0.8 parts of allyl methacrylate, 34 parts of methyl methacrylate, and 3 parts of acrylonitrile [Example 9]. The amount of n-butyl acrylate is 32/69.8 = 46 wt%.
Regarding claim 7: Shimada et al. teach a core-shell particles with a soft core and a rigid shell layer, wherein the soft core layer is formed from 21 parts of methyl methacrylate (claimed (a2)) and 0.4 parts of allyl methacrylate (claimed polyfunctional monomer (a1)) [0160; Example 9]. Therefore, the amount of (a1) based on 100 parts by weight of (a2) is 1.9.
Regarding claim 8: Shimada et al. teach a particle size of 240 nm [0162; Examples].
Regarding claim 9: Shimada et al. teach a MIT fold number of 460 [Table 1].
Regarding claim 10: Since the film and method are the same as claimed, it will possess the claimed peel strength. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. Shimada et al. teach a peel strength of 1.0 N/cm or more [0054], with Example 9 having a peel strength of 1.17 N/cm.
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.
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimada et al. (WO 2018/168960). US 2020/0002491 is being used as an English equivalent to WO 2018/168960 since it is a national stage entry of the international application.
Shimada et al. teach that the total amount of monomers (21 parts of methyl methacrylate, 0.4 parts of allyl methacrylate, 32 parts of n-butyl acrylate, 7 parts of styrene, 0.8 parts of allyl methacrylate, 34 parts of methyl methacrylate, 3 parts of n-butyl acrylate, 3 parts of acrylonitrile) used for producing the acrylic rubber particles (B2) is 101.2 parts [0161-0163]. The total amount of n-butyl acrylate is 35 parts. 35/101.2 is 35 wt%. The rubber particles being 23 wt% of the composition, provides 8 wt% of n-butyl acrylate.
The amount of 8 wt% is close to the claimed amount of 10 wt%.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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