DETAILED ACTION
Claim Status
Claim(s) 1-2, 4-21 is/are pending.
Claim(s) 1-2, 4-21 is/are rejected.
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 .
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 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.
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.
Claim(s) 1-2, 4-21 is/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.
Regarding claim 1, the disclosure as originally filed provides support for “the ion-conducting antistatic agent is selected from the group consisting of quaternary ammonium salts, a dodecylbenzenesulfonic acid sodium salt”. However, the disclosure as originally filed does not provide support for “combinations thereof” of quaternary ammonium salts and dodecylbenzenesulfonic acid sodium salt and furthermore does not provide support for “combinations thereof” of cationic antistatic agents and anionic antistatic agents.
Regarding claim 1, the disclosure as original filed provides support for a sulfonated copolyester containing terephthalate units, isophthalate units, 5-sulfoisophthalate units, and glycol units which are: (i) ethylene glycol units and neopentyl glycol units; or (ii) ethylene glycol units and diethylene glycol units. However, the disclosure as originally filed does not provide support for: (1) “sulfo-isophthalate units” in general; or (2) “aliphatic diol units” in general. At best, the disclosure as originally filed provides support for sulfonated copolyesters containing terephthalate units, isophthalate units, 5-sulfoisophthalate units, and glycol units which are: (i) ethylene glycol units and branched glycol units (as listed in US Published Application 2023/0392049, paragraph 0093); or (ii) ethylene glycol units and other glycol units selected from “Diethylene glycol, propylene glycol, butanediol, hexanediol, or 1,4-cyclohexanedimethanol”.
Regarding claim 1, the disclosure as originally filed provides support for “the inert particles are silica particles, melamine particles”. However, the disclosure as originally filed does not provide support for “combinations thereof” of silica particles and melamine particles, and furthermore does not provide support for “combinations thereof” of inorganic particles and organic particles.
Regarding claim 1, the disclosure as originally filed provides support for “the additional polyester film” being a “polyester film (E5001, produced by Toyobo Co., Ltd.; thickness: 50 μm)”, but does not provide support for “an additional polyester film is a polyethylene terephthalate film having a thickness of 50 um... and a heat shrinkage in the machine
direction of 1.1% and in the transverse direction of 0.3% measured according to JIS C-2318.” The TOYOBOESTER documentation provided by Applicant in the Response filed 12/09/2025 has a date of 11/23/2025, In order to provide adequate support for the “the additional polyester” with the 11 physical properties presently recited in claim 1, Applicant needs to provide documentation for Toyobo polyester film E5001 (50 micron) with an established date which is the same as or pre-dates the effective filing date of the present application (i.e., at least 09/22/2021). Alternatively, Applicant could provide documentary evidence (e.g., technical brochures, patent documents, research articles, etc.) with a publication (or effective) date on or before 09/22/2021 which establishes that E5001 by Toyobo is an untreated or uncoated PET film with a surface specific resistance; etc.
Claims 2, 4-21 are dependent on one or more of the above claims and therefore incorporate the above-described new matter.
However, it must be noted that even if a claim limitation is adequately supported by the disclosure as originally filed, this does not mean that said claim limitation adequately addresses the present rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding scope of enablement) in the previous Office Action mailed 08/12/2025.
Claim(s) 1-2, 4-21 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for: (A) limited ranges of “readily adhesive layer” compositions; and (B) limited ranges of “additional polyester film” compositions; does not reasonably provide enablement for the entire recited compositional range of: (A) “readily adhesive layer” compositions as a whole. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to which it pertains, or with which it is most nearly connected, to make the claimed “readily adhesive” polyester film exhibiting:
(a) the surface specific resistance of a surface of an “additional polyester film” (after contact with the “readily adhesive layer” at 50ºC for 3 days) (claim 1);
(b) optionally the following additional properties (claim 2):
(b1) the surface specific resistance of the readily adhesive layer (after contact with “an additional polyester film” at 60ºC at humidity of 90% for 3 days); and
(b2) the surface specific resistance of a surface of “an additional polyester film” (after contact with the “readily adhesive layer” at 60ºC at humidity of 90% for 2 days);
over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
PNG
media_image1.png
18
19
media_image1.png
Greyscale
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) The nature of the invention;
(C) The state of the prior art;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) The level of one of ordinary skill;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) The level of predictability in the art;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(F) The amount of direction provided by the inventor;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(G) The existence of working examples; and
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A) the claims are relatively broad -- for example, but not limited to:
• the claims contains relatively broad limitations regarding the type of sulfonated polyester resin in the “readily adhesive layer” as a whole; etc.
With respect to Wand factor (B), Applicant states that prior art films are difficult to produce polyester films which do not transfer of components (e.g., antistatic agents, etc.) of a “readily adhesive layer” to other film surfaces, especially after exposure to elevated temperatures of 50ºC and higher for several days.
With respect to Wand factors (C)-(E), the prior art does not specifically disclose or teach the production of polyester films with a “readily adhesive layer” exhibiting the above property (a) (claim 1), and optionally the additional properties (b) (claim 2).
With respect to Wand factors (F)-(G), the disclosure as originally filed only discloses limited ranges of: (A) limited ranges of “readily adhesive layer” compositions; and (B) limited ranges of “additional polyester film” compositions; which result in a “readily adhesive” polyester film exhibiting the above property (a) (claim 1), and optionally the additional properties (b) (claim 2).
With respect to Wand factor (H), in view of the evidence in the specification indicating that the above property (a) (claim 1), and optionally the additional properties (b) (claim 2), can be significantly impacted by the presence (or absence) of the three recited components (i.e., ion-conducting antistatic agent; polyester resin; polycarbonate urethane resin) in the “readily adhesive layer” as a whole; it is the Examiner’s position that undue experimentation would be required to produce a “readily adhesive” polyester film exhibiting the above property (a) (claim 1), and optionally the additional properties (b) (claim 2); which are encompassed by the present claims, but are materially different from those used in the working Examples in the specification -- for example, but not limited to:
----------------------------------------------
• the type of sulfonated copolyester in the “readily adhesive layer” as a whole -- The disclosure as originally filed only discloses producing “readily adhesive” polyester films exhibiting the above property (a) (claim 1), and optionally the additional properties (b) (claim 2); using “readily adhesive layer” compositions containing about 24-64 wt% of a limited range of sulfonated copolyesters containing:
• terephthalate units;
• isophthalate units;
• 5-sulfoisophthalate units; and
• glycol units which are:
(i) ethylene glycol units and neopentyl glycol units;
or
(ii) ethylene glycol units and diethylene glycol units.
The Examiner has reason to believe the above property (a) (claim 1), and optionally the additional properties (b) (claim 2), of a “readily adhesive” polyester film would be materially affected by the type of sulfonated copolyester in the “readily adhesive layer” as a whole, since it is well known in the art that choice of diol(s) can significantly impact the structural, mechanical, and thermal properties of polyesters (e.g., the molecular structure of the diol can substantially influence the molecular flexibility, crystallinity, intermolecular interactions of the polyester; etc.).
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce a “readily adhesive” polyester film exhibiting the recited “readily adhesive” polyester films exhibiting the above property (a) (claim 1), and optionally the additional properties (b) (claim 2), using “readily adhesive layer” compositions containing sulfonated copolyesters which are different from those used in the inventive Examples in the specification without undue experimentation -- for example, but not limited to:
• sulfonated copolyesters containing glycol units derived from: (a) ethylene glycol; and (b) other types of branched glycols (e.g., branched propanediols with one or more branches containing 2 or more carbon atoms (such as 2-methyl-2-n-hexyl-1,3-propanediol; 2-ethyl-2-n-butyl-1,3-propanediol; 2-ethyl-2-n-hexyl-1,3-propanediol; 2,2-di-n-butyl-1,3-propanediol; 2-n-butyl-2-propyl-1,3-propanediol; and 2,2-di-n-hexyl-1,3-propanediol; branched butanediols; branched hexanediols: branched octanediols; etc.);
• sulfonated copolyesters containing glycol units derived from: (a) ethylene glycol; and (b) other types of glycols (e.g., butanediol; hexanediol; 1,4-cyclohexanedimethanol; etc.);
• sulfonated copolyesters containing glycol units which derived entirely from: (a) ethylene glycol;
• sulfonated copolyesters which do not contain any glycol units derived from ethylene glycol; etc.
----------------------------------------------
In view of the above, it is the Examiner’s position that the disclosure as originally filed does not enable one of ordinary skill in the art to make “readily adhesive” polyester films exhibiting the above property (a) (claim 1), and optionally the additional properties (b) (claim 2), over the entire scope of the present claims -- in particular, the (A) the composition of the “readily adhesive layer”, and (B) the composition of the “additional polyester film” -- without undue experimentation, in view of the Examples in the Specification which indicate that the composition of the “readily adhesive layer” materially affects the above property (a) (claim 1), and optionally the additional properties (b) (claim 2).
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.
The rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, (regarding indefiniteness) in the previous Office Action mailed 08/12/2025 has been withdrawn in view of the Claim Amendments filed 12/09/2025.
Claim Rejections - 35 USC § 103 (AIA )
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 rejections under 35 U.S.C. 103 based on WO 2022/176744 (MATSUMURA-WO ‘744) in the previous Office Action mailed 08/12/2025 has been withdrawn in view of the 35 U.S.C. 102(b)(2)(C) statement in Applicant’s response filed 12/09/2025.
MATSUMURA-WO ‘744 does not qualify as prior art under 35 U.S.C 102(a)(1) or 35 U.S.C. 102(a)(2) in view of the 35 U.S.C. 102(b)(2)(C) statement filed 12/09/2025.
Response to Arguments
Applicant’s arguments filed 12/09/2025 have been considered but are moot in view of the new grounds of rejection necessitated by the Claim Amendments filed 12/09/20205.
Conclusion
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 Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
March 27, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights