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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “cleaning-liquid supplying mechanism” in claims 7-8 and 10; “removing mechanism” in claim 7; “unit configured to heat the cleaning liquid” in claim 8; and “unit configured to heat the coated film” in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
The limitation “cleaning-liquid supplying mechanism” recites the generic placeholder “mechanism” coupled with the functional modifier “to dispense” without reciting sufficient structure to perform the function claimed. This will be interpreted as: structure 12, shown in figure 1, and equivalents thereof.
The limitation “removing mechanism” recites the generic placeholder “mechanism” coupled with the functional modifier “to remove” without reciting sufficient structure to perform the function claimed. This will be interpreted as: structure 7, shown in figure 1, and equivalents thereof.
The limitation “unit configured to heat the cleaning liquid” recites the generic placeholder “unit” coupled with the functional modifier “to heat” without reciting sufficient structure to perform the function claimed. This will be interpreted as: a cartridge heater, described in the specification at paragraph 51, and equivalents thereof.
The limitation “unit configured to heat the coated film” recites the generic placeholder “unit” coupled with the functional modifier “to heat” without reciting sufficient structure to perform the function claimed. This will be interpreted as: structure 13, shown in figure 1, and equivalents thereof.
Claim Rejections - 35 USC § 103
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 5, 7-8, and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over NAGAI et al. (JP 2008/018649; citations to translations provided).
Regarding claims 1 and 7, NAGAI teaches a method of removing a water-soluble resin from a side of a base film comprising supplying a cleaning liquid from a cleaning-liquid supply system (two-fluid nozzle) as droplets (mist) to a surface of the coating film, retaining the droplets on the surface of the coating film, and removing the coating film containing the cleaning liquid from the base with a removing mechanism (paras. 17, 27-28, and 33). NAGAI does not disclose supplying cleaning liquid within a volumetric range of 1 cc or more and less than 200 cc per square meter. NAGAI teaches utilizing 200 or more cc per square meter in order to perform sufficient cleaning (para. 27). While NAGAI discloses a preferred range above that claimed, it would have been obvious to one of ordinary skill in the art that the same discloses that some resin would be removed within the range claimed, which meets the limitation as claimed. MPEP 2144.05 - Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 5, NAGAI teaches the cleaning liquid is water (para. 23).
Regarding claim 6, NAGAI teaches a droplet (mist) diameter of 20-500 microns (para. 29).
Regarding claim 8, KAWAZU does not teach a heating unit, but teaches heating the water to 60-100 degrees Celsius, such that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide a heating unit in order to heat the water as disclosed.
Regarding claim 10, NAGAI does not explicitly teach the water supply mechanism is a mechanism is a mechanism other than a steam injection. NAGAI teaches application of mist (para. 28), and does not disclose steam, such that it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a mist supplying device and not a steam injection device in order to perform the misting operation.
Regarding claim 11, NAGAI teaches application of mist (para. 28), and does not disclose steam.
Claim(s) 1-4, 7, 9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over KAWAZU et al. (JP 2004/169005; citations to translation provided) in view of NAGAI.
Regarding claims 1, 2, 4, and 7, KAWAZU teaches a method of removing a water-soluble curable silicone resin coating film from a side of a base film comprising supplying a cleaning liquid to the surface of the coating film and subsequently removing the coating film with the cleaning liquid from the coated film (p. 2, paras. 14-15; p. 3, para. 4). KAWAZU teaches applying the water as a high-pressure stream at a temperature of 60-100 degrees Celsius (p. 4; para. 2), and not as droplets. NAGAI teaches another method of removing a water-soluble film from a base film via application of water as a mist (droplets), and that it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a mist of NAGAI in place of the high-pressure spray in order to cause the water to strike the sheet evenly with a constant impact force (NAGAI; para. 28). NAGAI does not disclose supplying cleaning liquid within a volumetric range of 1 cc or more and less than 200 cc per square meter. NAGAI teaches utilizing 200 or more cc per square meter in order to perform sufficient cleaning (para. 27). While NAGAI discloses a preferred range above that claimed, it would have been obvious to one of ordinary skill in the art at the time of the invention that the same discloses that some resin would be removed within the range claimed, which meets the limitation as claimed. MPEP 2144.05 - Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 3, KAWAZU does not explicitly disclose that the film is heated above 40 degrees Celsius, but discloses that the water is supplied at a temperature of 60-100 degrees Celsius (p. 4., para. 2), wherein it would have been obvious to one of ordinary skill in the art at the time of the invention would raise the film to above 40 degrees Celsius via conductive heat transfer per the laws of thermodynamics.
Regarding claim 9, KAWAZU teaches heating the coated film in a tunnel oven (p. 5, para. 8).
Response to Arguments
Applicant's arguments filed 6/5/2025 have been fully considered but they are not persuasive.
Applicant argues that NAGAI teaches away from applying cleaning liquid from 1-200, not including 200, cc per square meter as claimed because NAGAI teaches that cleaning with less than 200 cc per square meter would not produce sufficient cleaning. This disclosure does not teach that no cleaning will occur if less than 200 cc per square meter is utilized. One of ordinary skill in the art at the time of the invention would understand this is a disclosure of using less than 200 cc per square meter, as presently claimed, but simply not sufficient to the purposes of NAGAI.
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 Nickolas R Harm whose telephone number is (571)270-7605. The examiner can normally be reached 10:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICKOLAS R HARM/Examiner, Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745