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 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.
Claims 16 and 17 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. Claim 16 requires “wherein the X layer contains a polycarbonate resin as a main component having a weight average molecular weight of 8,000 g/mol or more” and claim 17 further limits this molecular weight to being 40,000 g/mol or more. However, there is insufficient support for these ranges such that applicant only appears to have support for weight average molecular weights of 8,000 and 40,000 g/mol as presented in the polycarbonates used in the examples (Instant Specification, PGPUB, Paragraphs [0163]-[0171]). Therefore, the claims are rejected for failing to comply with the written description requirement.
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 1-2 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura et al. (JP 2018-069552).
Regarding claim 1, Kitamura teaches a molding film having a layer mainly composed of a polycarbonate resin or an acrylic resin on at least one side of a polyester film (“X layer”), wherein the polyester film has a layer mainly composed of a crystalline thermoplastic resin A (hereafter referred to as layer A) and a layer mainly composed of a thermoplastic resin B different from layer A (hereafter referred to as layer B), and the molding film has a total of 250 or more layers of the layers A and B laminated alternately in the thickness direction (Paragraph [0006]).
Kitamura is silent with respect to the polycarbonate or acrylic resin layer on at least one side of the polyester film having a glass transition temperature satisfying formula (4).
However, one of ordinary skill in the art would recognize that a molding film which is formed from identical materials and are formed from identical methods as the claimed invention, must have identical properties as well such that a composition and its properties are inseparable. MPEP 2112.01(I): 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. MPEP 2112.01(II): "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 the instant case, the molding films require the x layer and the polyester films as required by claim 1. Furthermore, the specific materials for both of those layers are described in Paragraphs [0024]-[0029] as well as the examples in the Instant Specification (PGPUB). The methods of forming the molding films of claim 1 are additionally described in Paragraphs [0075]-[0085] as well as in the examples.
Kitamura teaches the molding films as described above with respect to claim 1. Kitamura further teaches both identical methods and materials for forming the polycarbonate or acrylic resin (“X layer”) and the polyester film (Materials: Paragraphs [0011]-[0023]; Methods: Paragraphs [0040]-[0052]). Additionally, Kitamura teaches identical materials and methods for the examples as applicant’s examples (Paragraphs [0064]-[0078]).
Therefore, one of ordinary skill in the art before the filing of the invention would recognize that the molding films of Kitamura, which are formed from identical materials and methods as applicant’s invention, would also have identical properties as applicant’s claimed invention, including, but not limited to the polycarbonate or acrylic resin layer on at least one side of the polyester film having a glass transition temperature satisfying formula (4).
Regarding claim 2, Kitamura teaches the molding film as discussed above with respect to claim 1. As discussed above with respect to claim 1, the molding films of Kitamura are identical to those of applicant’s invention, including identical materials, methods and properties. The properties would include “the molding films satisfying formulas 1 and 2.”
Regarding claim 5, Kitamura teaches the molding film as discussed above with respect to claim 1. As discussed above, the “X layer” is formed from a polycarbonate or acrylic resin.
Regarding claim 6, Kitamura teaches the molding film as discussed above with respect to claim 1. The molding film further has an average reflectance of 30% to 75% in the wavelength range of 400 to 700 nm (Paragraph [0006]).
Regarding claim 7, Kitamura teaches the molding films as discussed above with respect to claim 1. As discussed above, the polycarbonate or acrylic resin may be placed on at least one side of a polyester film, which would include having the layers on both sides.
Regarding claim 8, Kitamura teaches the molding films as discussed above with respect to claim 1. As discussed above with respect to claim 1, the molding films of Kitamura are identical to those of applicant’s invention, including identical materials, methods and properties. The properties would include the molding films having an average transmittance in a wavelength band of 800 to 900 nm being 70% or more.
Regarding claim 9, Kitamura teaches the molding film as discussed above with respect to claim 1. As discussed above, the thermoplastic resin A is a crystalline resin.
Regarding claim 10, Kitamura teaches the molding films as discussed above with respect to claim 1. As discussed above with respect to claim 2, the molding films of Kitamura are identical to those of applicant’s invention, including identical materials, methods and properties. Kitamura additionally does not require the adhesion layer (Paragraph [0006]; Example 2; Paragraph [0075]). Therefore, the properties include the polycarbonate or acrylic resin having an adhesion strength of 1.0 N/10 mm or more with the polyester film.
Regarding claim 11, Kitamura teaches the molding film as discussed above with respect to claim 1. The polycarbonate or acrylic resin layer may be adhered to the polyester resin film by means of an adhesive (Paragraph [0006]).
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura et al. (JP 2018-069552) as applied to claim 1 above, and further in view of Tokita et al. (US 2020/0247098).
Regarding claims 16-17, Kitamura teaches the molding film as discussed above with respect to claim 1.
Kitamura is silent with respect to the polycarbonate resin having a weight average molecular weight of 8,000 g/mol or more, as required by claim 16, and further 40,000 g/mol or more, as required by claim 17.
Tokita teaches a high hardness molding resin sheet which includes a high-hardness resin layer between a polycarbonate resin layer and a hard coat layer (Paragraph [0012]). The polycarbonate resin sheet is taught to have a weight average molecular weight of between 15,000 and 75,000 g/mol which provides sufficient shock resistance without requiring an excessive heat source in order to form the polycarbonate resin layer which could adversely affect heat stability (Paragraph [0056]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the polycarbonate of Kitamura to have a weight average molecular weight of between 15,000 and 75,000, which overlaps with the claimed ranges, in order to provide sufficient shock resistance without requiring an excessive heat source in order to form the polycarbonate resin layer which could adversely affect heat stability as taught by Tokita.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura et al. (JP 2018-069552).
Regarding claim 14, Kitamura teaches a molding film having a layer mainly composed of a polycarbonate resin or an acrylic resin on at least one side of a polyester film (“X layer”), wherein the polyester film has a layer mainly composed of a crystalline thermoplastic resin A (hereafter referred to as layer A) and a layer mainly composed of a thermoplastic resin B different from layer A (hereafter referred to as layer B), and the molding film has a total of 250 or more layers of the layers A and B laminated alternately in the thickness direction (Paragraph [0006]).
Kitamura is silent with respect to the polycarbonate or acrylic resin layer on at least one side of the polyester film having a glass transition temperature satisfying formula (4).
However, one of ordinary skill in the art would recognize that a molding film which is formed from identical materials and are formed from identical methods as the claimed invention, must have identical properties as well such that a composition and its properties are inseparable. MPEP 2112.01(I): 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. MPEP 2112.01(II): "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 the instant case, the molding films require the x layer and the polyester films as required by claim 1. Furthermore, the specific materials for both of those layers are described in Paragraphs [0024]-[0029] as well as the examples in the Instant Specification (PGPUB). The methods of forming the molding films of claim 1 are additionally described in Paragraphs [0075]-[0085] as well as in the examples.
Kitamura teaches the molding films as described above with respect to claim 1. Kitamura further teaches both identical methods and materials for forming the polycarbonate or acrylic resin (“X layer”) and the polyester film (Materials: Paragraphs [0011]-[0023]; Methods: Paragraphs [0040]-[0052]). Additionally, Kitamura teaches identical materials and methods for the examples as applicant’s examples (Paragraphs [0064]-[0078]).
Therefore, one of ordinary skill in the art before the filing of the invention would recognize that the molding films of Kitamura, which are formed from identical materials and methods as applicant’s invention, would also have identical properties as applicant’s claimed invention, including, but not limited to “the molding films satisfying formulas 1 and 2” and the polycarbonate or acrylic resin layer on at least one side of the polyester film having a glass transition temperature satisfying formula (4).
Regarding claim 15, Kitamura teaches the molding film as discussed above with respect to claim 1. As discussed above with respect to claim 14, the molding films of Kitamura are identical to those of applicant’s invention, including identical materials, methods and properties. The properties would include the molding films satisfying formula (2)’.
Response to Arguments
Applicant’s arguments, see page 7, filed 12/05/2025, with respect to the 35 U.S.C 112 rejection of claim 8 have been fully considered and are persuasive. The rejection of 09/23/2025 has been withdrawn.
Applicant's arguments filed 12/05/2025 have been fully considered but they are not persuasive.
On pages 7-13, applicant argues that Kitamura fails to teach each of the limitations of amended claim 1, which now requires the limitation previously presented in claim 4. Specifically, applicant argues that the most recent office action fails to meet the requirements of inherency and the films of Kitamura are not identical to applicant’s invention. For example, the molding film of the instant invention is taught to have the glass transition temperature of a polycarbonate resin film be adjusted by having higher molecular weights or by including other substituents in the skeleton of the polycarbonates. Furthermore, the examples of the instant application show that the properties are not always met and there is not guaranteed teaching that the films of Kitamura would teach the claimed properties.
It is firstly, noted that the claim merely requires a resin layer (X layer) on at least one surface of a polyester film and, as such, any resin material may be used to form the X layer. However, applicant’s arguments are directed towards a specific material (polycarbonate) and adjusting properties of that specific material (the molecular weight and structure of the polycarbonate). As such, applicant’s arguments are not commensurate in scope with what is required by the claim, which is broader than what applicant is arguing. Even further, the molecular weight of a polycarbonate used for the X layer is not required until presented in new claims 16 and 17, which are rejected further in view of Tokita.
Concerning the teachings of Kitamura, as noted in the rejection above, the molding films are taught to have identical structures with that of applicant’s claimed invention, being a polycarbonate resin on at least one surface of a polyester film. Even further, the examples of Kitamura and those of applicant’s invention are identical and one of ordinary skill in the art would have found it obvious that the identical structures would result in identical properties, or, at the very least, having overlapping ranges for the properties required by the instant claims.
Ultimately, the examiner contends that the rejection of claim 1 in view of Kitamura is proper such that applicant’s arguments are not commensurate in scope with what is required by the claim and Kitamura still teaches identical materials and methods as applicant’s invention.
The current rejection is made FINAL.
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 DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783