DETAILED ACTION
Response to Amendment
The amendment and response filed on December 17, 2025 has been entered. Claims 1-11 are pending.
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.
Claim 11 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In line 1, the term “the laminate” lacks antecedent basis. This rejection can be overcome by changing the claim referenced in line 1 back to claim 7, i.e., see preliminary amendment of July 21, 2023.
Claim Rejections - 35 USC § 102
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 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 1-5 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2017-165818. An English language machine translation of JP ‘818 is attached to this Office Action.
Regarding claims 1-3, JP ‘818 discloses a release liner comprising a substrate and a release layer. Example 1 of JP ‘818 discloses a release layer containing a an acrylic acid ester copolymer including an alkyl acrylate monomer present within the claimed amount (Table 1). The acrylic polymer can be linear or branched and can contain an alkyl group having more than 8 carbons (pg 4, line 15 et seq.). With respect to the limitation in claim 1, line 1, that states “for a silicone adhesive”, this limitation is intended use and is not given any patentable weight because it does not structurally define the release liner in any way.
Regarding claim 4, JP ‘818 discloses that the composition can further contain a photopolymerization initiator , such as benzophenone (pg 6, line 5), which is Applicant’s preferred radiation active material (spec, pg 8, line 2).
Regarding claim 5, JP ‘818 discloses the use of a paper substrate (pg 6).
Regarding claim 11, JP ‘818 disclose the use of the release liner with an adhesive tape (pg 7).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-165818.
JP ‘818 does not disclose using a white film as the substrate. However, JP ‘818 does state that the substrate is preferably a resin film, such as a PET (pg 6). It is well known in the art to provide white pigments, such as titanium dioxide, to resin films in order to impart desired coloration to the film. Accordingly, it would have been obvious to one of ordinary skill in the art to have used a white film as the substrate in the release liner of JP ‘818, motivated by the desire to obtain a liner having desired coloration.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 7-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. JP ‘818 teaches away from using the disclosed release liner with a silicone-based adhesive (pg 6).
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781