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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claim 7 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 2, 2025.
Applicant’s election without traverse of a benzene ring for component (A) and formula B1-1a for component (B) in the reply filed on December 2, 2025 is acknowledged. However, upon further consideration, the election of species requirement for both components (A) and (B) have been withdrawn. Thus, claims 1-6 are being examined herewith.
Information Disclosure Statement
The information disclosure statement filed December 27, 2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. The Notification of Reasons for Refusal in Japanese Patent Application No. 2020-556641 has not been translated into English. It has been placed in the application file, but the information referred to therein has not been considered.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 102 in FIG. 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “26 Cut groove” on page 52. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 4 and 5 are objected to because of the following informalities: Claim 4 recites “wherein the water-soluble resin (A) comprises a cellulose-based resin” but should instead recite --wherein the water-soluble resin (A) further comprises a cellulose-based resin-- for clarity purposes, based on pages 14-16 of the instant specification. Claim 5 recites “1% by mass or more and 60% by mass or less” but should instead recite --1% by mass to 60% by mass-- for clarity purposes. Appropriate correction is required.
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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karasaki et al. (U.S. 2019/0371669).
Karasaki et al. teaches in a protective film formation step, a protective film containing a water-soluble resin is formed by applying, to the front surface 1a of the substrate 1, a mixture containing the water-soluble resin and an organic solvent (first organic solvent) having a higher vapor pressure than water to form a coating film of the mixture, and drying the coating film at a temperature of 50°C or less [0045] wherein examples of the water-soluble resin include a water-soluble polyester, polystyrene sulfonic acid, polyacrylic acid, polymethacrylic acid, polyacrylamide, 2-acrylamide-2-methylpropane sulfonic acid, polyvinyl pyrrolidone, polyethylene oxide, an oxazol-based water-soluble polymer (e.g., oxazol-2-ethyl-4,5-dihydro-homopolymer), or salts (e.g., alkali metal salt, ammonium salt) thereof. Examples of the alkali metal salt include a lithium salt, a sodium salt, and a potassium salt. The water-soluble resin may be used alone or in combination of two or more. In view of the fact that the solution can be easily prepared using an organic solvent, and a wide selection of organic solvents is available, it is preferable to use a water-soluble polyester, polystyrene sulfonic acid, an oxazol-based water-soluble polymer, or salts thereof [0054] in which polystyrene sulfonic acid is equivalent to water-soluble resin (A1) of instant claims 1-3 when the aromatic ring is a benzene ring, specifically a polystyrene resin and sulfonic acid is the water-soluble group. Karasaki et al. also teaches as the first organic solvent, a water-soluble organic solvent is preferable because of the high affinity for the water-soluble resin. The mixture 26 may further contain water, and the use of a water-soluble organic solvent as the first organic solvent makes the mixture 26 less likely to undergo phase separation even when the mixture 26 contains water, so that it is possible to form a uniform film [0056] (claims 1 and 6). Karasaki et al. further teaches if necessary, the mixture 26 may further contain an additive. From the viewpoint of increasing etching properties during laser grooving, the mixture 26 may optionally contain a photosensitizer that absorbs the laser light irradiated in the laser grooving step [0062] in which the photosensitizer is equivalent to a light absorbing agent (B) of instant claim 1.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN104744987) in view of Moore (WO2020176457). Translation of ‘987 is attached.
Chen teaches the protective layer 14 is made of a solution. The solution includes a water-soluble resin, a water-soluble laser absorber, and a solvent. The water-soluble resin serves as a substrate for the protective layer 14. In an embodiment, the water-soluble resin includes, for example, polyvinyl alcohol, polyvinyl pyrrolidone (PVP), polyethylene glycol having five or more oxygen ethylene recurring units, polyoxyethylene, methyl cellulose, ethyl cellulose, hydroxypropyl cellulose, polyacrylic acid, polyvinyl alcohol-polyacrylic acid block polymer, polyvinyl alcohol-polyacrylate block polymer, polyglycerol, water-soluble resin may include the foregoing single material, or include two or more combinations. However, the present invention is not limited thereto, as long as the material can be dissolved in a solvent such as water, coated and dried to form a protective layer [page 3] (claims 1 and 4). Chen also teaches the solvent used in the solution for preparing the protective layer 14 may be in the form of a mixture of water and an organic solvent [page 4] (claim 6).
Chen does not teach the water-soluble resin has an aromatic ring and a water-soluble group.
However, Moore teaches a multi-functional composition, which exhibits minimum desirable characteristics for coating an inorganic substrate comprising (a) an ultraviolet absorbing compound that exhibits both thermal resistance and water solubility, where thermal resistance of the ultraviolet absorbing compound is defined as having a melting point >200 degrees centigrade; (b) at least one thermoplastic polymer resin that exhibits both thermal resistance and water solubility, where the thermal resistance of the thermoplastic water soluble polymer is defined as having a melt viscosity of >5,000 centipoise at 200 degrees centigrade; wherein component (a) is present in the amount of about 1 percent to about 70 percent by weight, and component (b) is present in an amount of about 30 percent to about 99 percent by weight, said percent of ultraviolet absorbing compound and said thermoplastic polymer are based upon the total weight of the solids taken as 100% by weight. Additional compounds may include a thermal resistant water soluble rinse aid. Such compounds include alkali salts of para-styrenesulfonate (p-styrenesulfonate), including, sodium, potassium, lithium, ammonium, and amino versions. Other compounds that act as rinse aids include polystyrenesulfonate of various homopolymers [pages 10-11] in which the preferred styrene sulfonate form for use in the present subject matter may be lithium styrene sulfonate (LISS). Use of LISS as the rinse aid in the thermal resistant water soluble coating is 5-20%, and preferred as 10-15%, being based upon the total weight of the solids being taken as % by weight [page 21] (claim 5) in which lithium styrenesulfonate is equivalent to water-soluble resin (A1) of instant claims 1-3 when the aromatic ring is a benzene ring, specifically a polystyrene resin and lithium sulfonate is the water-soluble group. Moore further teaches when adding styrene sulfonates to the film, thermal resistance is raised and water rinsability is favored [page 20].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Chen to include other known water-soluble resins such as lithium styrenesulfonate taught by Moore and arrive at the instant claims through routine experimentation of combining equally suitable components for the sought invention in order to increase thermal resistance and rinsability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. 2019/0371668.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA E MALLOY whose telephone number is (571)270-5849. The examiner can normally be reached 8:00-4:30 EST M-F.
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/Anna Malloy/ Examiner, Art Unit 1737
/MARK F. HUFF/ Supervisory Patent Examiner, Art Unit 1737