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 .
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 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites “wherein the laminate that includes the resin layer with the evaporated metal layer is a waste”. It is not clear what is being claimed. For examination purpose, the examiner is interpreting as the laminate that includes the resin layer with the evaporated metal layer made from waste material or recycle material.
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(s) 1-3, 5-8, 10-12 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Satoru, Kai (JP 2010-167736) in view of Bower et al. (US 2011/0274796).
Regarding claims 1, 7 and 28, Satoru discloses a laminate comprising a resin layer and vapor deposition metal thin film and metal thin film fragment is dispersed in the resin layer, i.e. a resin film material produced from a resin material that includes a laminate that includes a resin layer having an evaporated metal layer, the resin film material containing a metal in the evaporated metal layer in a form of particles, (0008, 0009, 0015, 0016), wherein the thickness of the resin film is 20 microns (0024), and wherein the metal particles are dispersed in the resin film material (0009) and the size of the metal particles is 0.1 to 10 mm (0008-0009). Therefore, it would have been obvious to one of ordinary skill in the art to choose particles, including those having a size of 0.1 mm or 100 microns, i.e. there are no particles present per cm2 within an area equivalent diameter of 200 microns or more.
Alternatively, Satoru discloses the size of the particles is selected in the viewpoint of cutting treatment, easy of handling and achieving a uniform mixed state (0021). Therefore, it would be obvious to have number of particles present per cm2 with area equivalent diameter of 200 microns or more, including that presently claimed, in order to produce an film with desired cutting treatment, ease of handling, and achieving a uniform mixed state.
Satoru does not disclose the resin film has a metal content of 0.01 to 0.3 mass%.
Bower discloses a metalized resin film comprising a resin layer having a vapor deposited metal layer wherein the resin film containing a metal in the vapor deposited metal layer in a form of particles, i.e. a resin film material produced from a resin material layer having an evaporated metal layer and the resin film containing a metal in the evaporated metal layer in a form of particles, (0016, 0021), wherein the metal particles are dispersed in the resin film (0007, 0022), wherein the metal is aluminum and the aluminum content is 0.05 to 1% to obtain moisture and gas barrier properties (0013).
It would have been obvious to one of ordinary skill in the art to use the metal content of Bower in the resin layer of Satoru to obtain desired moisture and gas barrier properties.
Regarding claim 2, Satoru in view of Bower discloses the resin film material according to claim 1 wherein Satoru discloses the size of the particles is selected in the viewpoint of cutting treatment, easy of handling and achieving a uniform mixed state (0021). Therefore, it would be obvious to have area equivalent diameter including that presently claimed in order to produce an film with desire cutting treatment, easy of handling and achieving a uniform mixed state.
Regarding claim 3, Satoru in view of Bower discloses the resin film material according to claim 1, wherein the resin is produced from a resin material and evaporated metal layer as explained above and polyethylene film layer (0016). Given that Satoru does not disclose any metal particles in the polyethylene film layer, it is clear that the polyethylene film layer of Satoru is a metal layer free resin layer.
Regarding claim 5, Satoru in view of Bower discloses the resin film material according to claim 1, wherein the laminate that includes the resin layer with evaporated metal layer includes polyethylene film layer, i.e. polyolefin layer, and a layer containing polyester or polyamide (0016).
Regarding claim 6, Satoru in view of Bower discloses the resin film material according to claim 1, wherein the proportion of the laminate that includes the resin layer with the evaporated metal layer in the resin material is 5 to 60% by weight (0020).
Regarding claim 8, Satoru discloses the resin film material according to claim 1, wherein the laminate that includes the resin layer with evaporated metal layer is made from a recycle material (0001).
Regarding claim 10, Satoru in view of Bower discloses the resin film material according to claim 1, but fails to specifically disclose the ratio of the average surface to surface distance of the metal particles relative to the average particle diameter of the metal is greater than 15.
Since the instant specification is silent to unexpected results, the specific ratio of the average surface to surface distance of the metal particles relative to the average particle diameter of the metal is not considered to confer patentability to the claims. As the cutting treatment, easy of handling and achieving a uniform mixed state are variables that can be modified, among others, by adjusting the ratio of the average surface to surface distance of the metal particles relative to the average particle diameter of the metal, the precise ratio would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed ratio cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the ratio of the average surface to surface distance of the metal particles relative to the average particle diameter of the meta in the resin film to obtain the desired cutting treatment, easy of handling and achieving a uniform mixed state (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 11, Satoru in view of Bower discloses the resin film material according to claim 1 wherein Satoru discloses a laminate structure comprising the resin film material of claim 1 and a resin layer (0016).
Regarding claim 12, Satoru in view of Bower discloses the resin film material according to claim 1, wherein the resin layer is made of an ethylene vinyl alcohol copolymer (0016).
Claim(s) 1-3, 5, 7-8, 10-11 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bower et al. (US 2011/0274796).
Regarding claims 1, 7 and 28, Bower discloses a metalized resin film comprising a resin layer having a vapor deposited metal layer wherein the resin film containing a metal in the vapor deposited metal layer in a form of particles, i.e. a resin film material produced from a resin material layer having an evaporated metal layer and the resin film containing a metal in the evaporated metal layer in a form of particles, (0016, 0021), wherein the metal particles are dispersed in the resin film (0007, 0022) and wherein the metal is aluminum and the aluminum content is 0.05 to 1% (0013).
It is noted that Bower is silent regarding the number metal particles with an area equivalent diameter of 200 microns or more present per cm2 of the resin material is 1 or less. Bower discloses that the aluminum particles affect the film surface of the side to be metalized so as to provide anchoring points to aluminum evaporated layer and barrier properties (0021).
Since the instant specification is silent to unexpected results, the specific size of metal particles is not considered to confer patentability to the claims. As the bonding and barrier properties are variable that can be modified, among others, by adjusting the size of the metal particles, the precise size would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the size of the metal particles in the resin film of Bower to obtain the desired bonding and barrier properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding the thickness of the resin film, since the instant specification is silent to unexpected results, the specific thickness of the is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of the resin layer, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of the resin layer in Bower to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Although Bower does not disclose laminate, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Bower meets the requirements of the claimed metalized resin film, Bower clearly meets the requirements of the present claims.
Regarding claim 2, Bower discloses the resin film material of claim 1 but is silent regarding the number metal particles with an area equivalent diameter of 100 microns or more present per cm2 of the resin material is 15 or less. Bower discloses that the aluminum particles affect the film surface of the side to be metalized so as to provide anchoring points to aluminum evaporated layer and barrier properties (0021).
Since the instant specification is silent to unexpected results, the specific size of metal particles is not considered to confer patentability to the claims. As the bonding and barrier properties are variable that can be modified, among others, by adjusting the size of the metal particles, the precise size would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the size of the metal particles in the resin film of Bower to obtain the desired bonding and barrier properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 3, Bower discloses the resin film of claim 1 wherein the metalized resin film comprising a resin layer having a vapor deposited metal layer and further comprising core layer of PET film (0022). Given that Bower does not disclose any metal layer adjacent to the core layer, it is clear that the core layer of Bower is a metal layer-free layer.
Although Bower does not disclose laminate, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Bower meets the requirements of the claimed metalized resin film, Bower clearly meets the requirements of the present claims.
Regarding claims 5 and 11, Bower discloses the resin film of claim 1 wherein the metalized resin film comprising a resin layer having a vapor deposited metal layer includes a polypropylene or HDPE, i.e. polyolefin, (0020 and further comprising core layer of PET film (0022).
Although Bower does not disclose laminate, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Bower meets the requirements of the claimed metalized resin film, Bower clearly meets the requirements of the present claims.
Regarding claim 6, Bower discloses the resin film of claim 1, wherein Bower is silent regarding the proportion of the resin layer with the evaporated metal layer in the resin material. However, Bower discloses that the metal layer provides moisture and gas barrier properties and also provides aesthetic decoration (0012).
It would have been obvious to one of ordinary skill in the art to use any proportion of metal layer in the resin material including that present claimed to obtain desired moisture and gas barrier properties and aesthetic decoration.
Regarding claim 8, Bower discloses the resin film of claim 1 wherein the resin film is made from waste material (0015).
Regarding claim 10, Bower discloses the resin film of claim 1, but fails to specifically disclose the ratio of the average surface to surface distance of the metal particles relative to the average particle diameter of the metal is greater than 15.
Since the instant specification is silent to unexpected results, the specific ratio is not considered to confer patentability to the claims. As the bonding and barrier properties are variable that can be modified, among others, by adjusting the ratio, the precise size would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the ratio in the resin film of Bower to obtain the desired bonding and barrier properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bower et al. (US 2011/0274796) in view of Satoru (JP 2010-167736).
Regarding claim 12, Bower discloses the resin film of claim 1, wherein Bower is silent regarding the resin layer is made of an ethylene vinyl alcohol copolymer.
Satoru discloses a laminate comprising a resin layer, vapor deposition metal thin film (0009, 0009, 0015, 0016) and an ethylene vinyl alcohol copolymer layer to obtain barrier properties (0016).
It would have been obvious to one of ordinary skill in the art to use the EVOH barrier layer in the laminate of Bower to further obtain barrier properties.
Response to Arguments
Applicant's arguments filed 02/10/2026 have been fully considered but they are not persuasive.
Regarding 112 rejection of claim 8, applicant argues that the meaning of the term “waste” is clear to a person of ordinary skill in the art. However, it is noted that the claim is still unclear. Examiner suggest that the claim to be amended as follow “the resin layer with the evaporated metal layer is made from waste material”.
Applicant argues that amended claim is not taught by Satoru and Bower. It is noted that the both rejections are being modified as explained above.
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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