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 .
Response to Amendment
Applicant’s amendment to the claims filed December 19, 2025 has been entered. Claim 1 is currently amended. Claims 11 and 12 remain withdrawn from further consideration. Claim 13 is new. Claims 1-10 and 13 are under examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13 recites the second side of the film “excludes protrusions thereon”. However, claim 1 already contrasts the first and second side and specifies that the first side has “protrusions” and the second side “is smooth”. The recitation “smooth”, in context, is understood to mean that protrusions are excluded. It is further submitted that the recitation “smooth” cannot be reasonably understood in any other manner in this context. As such, claim 13 fails to further limit the scope of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6, 7, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Teutsch (US 6,309,200) in view of or in combination with either one of Ghiam et al. (US 6,040,046) or Barger (US 4,895,760).
Regarding claims 1-3 and 13, Teutsch teaches a method for manufacturing a masking film (col. 1, lines 40-48; col. 1, lines 64-col. 2, line 6; col. 2, lines 24 and 29-32 – textured thermoplastic film; col. 5, lines 18-24 – made of polyethylene or polypropylene; Teutsch produces a film substantially as disclosed with a plurality of random protrusions from the same claimed and disclosed thermoplastic materials. As such, the film taught by Teutsch would be capable of being used as a masking film.), the method comprising: forming a molten polymer web comprising at least one polymer, wherein the molten polymer web comprises a first side and a second side (Abstract; col. 1, line 64-col. 2, line 6; col. 2, lines 23-32; e.g. the extruded cast or blown film disclosed by Teutsch is extruded as a molten thermoplastic polymer web/film; such a web/film intrinsically has a first side and a second side); spraying a fluid on the first side of the molten polymer web to rapidly cool a random pattern of locations on the first side of the molten polymer web (col. 1, line 64-col. 2, line 6; col. 3, lines 16-48 – impinging jetted droplets of water on the surface of the molten film from the printer head, which reads on spraying a fluid as claimed); and cooling the molten polymer web to form the masking film (col. 3, lines 43-48; col. 4, lines 26-28), having first and second sides corresponding to the first and second side of the molten polymer web (note: nothing manipulative is required at this recited step and the cooled film of Teutsch at this point has a structure of a masking film), wherein the masking film comprises a plurality of protrusions on one side thereof corresponding to the random pattern of locations on the one side of the molten polymer web contacted by the fluid (col. 2, lines 35-37).
Teutsch does not explicitly teach the protrusions are formed only on the first side such that there are protrusions on the first side and the second side is smooth/excludes protrusions.
However, each of Ghiam et al. (col. 3, lines 15-25; col. 4, lines 37-67) and Barger (col. 4, lines 35-47; col. 5, lines 8-12) teach analogous methods for producing films with protrusions on the surface wherein only a first side is provided with protrusions and the other side is left smooth (i.e. without protrusions or added texture) to facilitate the film’s use as an effective and improved masking film.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Teutsch and either one of Ghiam et al. or Barger et al. and to have added protrusions only to the first side of the film of Teutsch, while leaving the second side of the film of Teutsch smooth (i.e. without protrusions), in the method of Teutsch, as suggested by either one of Ghiam et al. or Barger et al., for the purpose, as suggested by the references, of producing a film that is well-suited for use as an effective and improved masking film. Teutsch generally teaches an improved method for providing protrusions to a thermoplastic film by spraying a fluid on the molten polymer as claimed. The applicability of the Teutsch reference is broadly to texturized films with a variety of intended uses. Each of the secondary references provide additional teaching and specificity to suggest adding protrusions to only one side of an analogously produced film such that the films are more effectively utilized as a masking film. In the combination, the method of Teutsch is utilized to add protrusions to one side of the film, as suggested by the secondary references, to produce an improved and effective masking film.
The combination is also applicable and applied in the reverse direction. Starting with the basic methods of producing a masking film of Ghiam et al. (e.g. col. 3, lines 15-25; extruded film with a smooth side and a rough/embossed side that is roughened/embossed “via any suitable means”) or Barger et al. (e.g. “The one-sided, matte embossed film…can be manufactured via well-known cast or blown film processes.” col. 5, lines 8-12), the methods of producing the films of these references are modified by having the required protrusions added by the method of Teutsch. The reason or motivation to adopt the method of Teutsch to produce the films of Ghiam et al. or Barger is given by Teutsch (col. 1, lines 47-60 – ability for immediate changeover from one texture design to another with no lost downtime; no re-heating needed; reduced precision is needed to achieve the desired results; col. 2, lines 32-34 – no mold is needed and the method is non-contact).
In either direction, the combination of references teaches and suggests each and every limitation of the claimed invention.
As to claim 10, Teutsch teaches the method set forth above. After contacting the molten film with water, the water is vaporized and removed from the surface of the film (col. 3, lines 43-60). This dries the film to some extent. Further, remaining water will be removed from the surface through evaporation in the environment. This also will intrinsically dry the film.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Teutsch (US 6,309,200) in view of or in combination with either one of Ghiam et al. (US 6,040,046) or Barger (US 4,895,760), as applied to claims 1-3, 6, 7, 10 and 13 above, and further in view of Keis et al. (US 2022/0371914) and/or Drewes et al. (US 2011/0282288).
As to claim 4, the combination teaches the method set forth above. Teutsch also teaches the fluid is water (col. 3, lines 43-45). Teutsch does not teach the water is deionized water. However, each of Keis et al. (paragraph [0003] – use of deionized water in industrial facilities/processing plants helps reduce water scaling and energy usage in systems that use it) and Drewes et al. (paragraph [0058] – use of deionized water for extrusion cooling applications) teach analogous methods wherein the water selected for use is deionized water.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Teutsch with either or both of the secondary references and to have utilized deionized water as the water in the method of Teutsch, as suggested by the secondary references, for the purpose, as suggested by the references, of utilizing an art recognized suitable form of water that is known to reduce scaling/fouling. For example, utilizing deionized water in the combination will reduce potential plugging/blockage of the printhead nozzle apertures in the structure utilized by Teutsch as well as preventing scale build-up in upstream equipment that feeds the printhead.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Teutsch (US 6,309,200) in view of or in combination with either one of Ghiam et al. (US 6,040,046) or Barger (US 4,895,760), as applied to claims 1-3, 6, 7, 10 and 13 above, alone or further in view of Brandt (US 4,885,201).
As to claim 5, the combination teaches the method set forth above. Teutsch does not explicitly teach the fluid pressure as claimed. However, Teutsch suggests the amount of pressure applied to the surface of the extrusion is determined/optimized in order to achieve the desired texturing while not distorting the extruded article (col. 1, lines 40-63; “without applying under pressure to the surface of the extrusion”, “without distorting the extruded article”) and Brandt teaches an analogous method wherein the pressure is selected based on the material properties in order to ensure proper projections are achieved (col. 2, line 60-col. 3, line 4).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have optimized/determined the appropriate spray pressure in the method of Teutsch, as suggested by either one of Teutsch or Brandt, in order to achieve the desired texturing without applying undue pressure or distorting the extruded article. Each of Teutsch and Brandt suggest optimizing the application pressure as a variable the effects the results of the texturing. Such a variable is readily optimized as a routine expedient (see MPEP 2144.05 II A and B).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Teutsch (US 6,309,200) in view of or in combination with either one of Ghiam et al. (US 6,040,046) or Barger (US 4,895,760), as applied to claims 1-3, 6, 7, 10 and 13 above, alone or further in view of any one of Patel et al. (US 2012/0141732), Balakoff et al. (US 2004/0265540), or Middlesworth et al. (US 2017/0008211).
As to claim 8, the combination teaches the method set forth above. Further, Teutsch teaches the material may “include polyethylene (HDPE, LLDPE, etc.)”. This is understood to render low-density polyethylene prima facie obvious. In view of this teaching in Teutsch, it would have been prima facie obvious to have selected any conventional polyethylene, including LDPE, known to be suitable for cast forming a film. The general teaching of “polyethylene” and the “etc.” make clear that a range of polyethylenes are in view and one having ordinary skill in the art would have considered the selection of LDPE from this disclosure to be prima facie obvious. Alternatively, each of Patel (paragraph [0047]), Balakoff et al. (paragraphs [0036] and [0046]), and Middlesworth et al. (paragraphs [0033], [0036], [0103]) teach analogous methods of making cast films wherein the polyethylene is low-density polyethylene.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Teutsch with either one of the secondary references and to have utilized low-density polyethylene as the polyethylene of Teutsch, as suggested by the references, for the purpose of utilizing a polyethylene known to be suited for forming films having desired properties and that is readily processed.
As to claim 9, the combination teaches the method set forth above. It is submitted that the disclosure of the film being “extruded…onto a moving surface” (col. 2, lines 23-32) in the context of Teutsch reasonably suggests a conventional casting process wherein the material is applied to a cooled/chilled roll as claimed. As such, it would have been prima facie obvious in view of the teaching of Teutsch to have cooled the film as claimed in order to solidify the material and lock-in the textured surface. Alternatively, each of Patel (paragraph [0100]), Balakoff et al. (paragraph [0046]), Middlesworth et al. (Figures 5 and 6; paragraphs [0027]-[0031]) teach analogous methods wherein a cooling roller is utilized during the casting process to cool the film.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Teutsch with either one of the secondary references and to have contacted the opposite side of the film with a cooling roller as claimed during cooling the film of Teutsch, for the purpose, as suggested by the references, of effectively solidifying the cast extruded film in an art recognized suitable manner to reduce neck-in during casting and to lock in the texture through solidification of the polymer.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Teutsch (US 6,309,200) in view of or in combination with either one of Ghiam et al. (US 6,040,046) or Barger (US 4,895,760), as applied to claims 1-3, 6, 7, 10 and 13 above, alone or further in view of either one of Sakurai et al. (US 2019/0315017) or Maschino et al. (US 2017/0356110). Note: this is an alternative rejection of claim 10
As to claim 10, the combination teaches the method set forth above. Teutsch does not explicitly teach an additional drying step (e.g. through the use of additional drying equipment like an oven or hot air blower). However, Teutsch teaches application of water to the surface to form the texture and also teaches an additional step of applying water to the surface of the film (Figure 1 (72)). One having ordinary skill in the art would have found it prima facie obvious to have included additional drying steps/equipment, as needed, in the method of Teutsch, for the purpose of removing water from the surface of the film prior to packaging or use. Alternatively, each of Sakurai et al. (Figure 1 (3a) (3b) (3c) and (6a) (6b) (6c)) and Maschino et al. (Figure 4 (46) (47) (48)) teach analogous methods wherein a drying step is performed after adding water to the polymeric material.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Teutsch and either one of the secondary references and to have dried the film of Teutsch, as suggested by either one of the secondary references, for the purpose, as suggested by the references, of effectively removing the added water from the surface of the polymer prior to packaging, further processing, or further use.
Response to Arguments
Applicant’s arguments filed December 19, 2025 have been fully considered. As an initial matter, it is noted that the amendment to the claims has necessitated the new grounds of rejection. As such, the arguments are generally moot in view of the new grounds of rejection. However, certain arguments still need to be addressed.
Applicant argues against the Teutsch reference from the basis that Teutsch teaches and discloses an extruded items that “appears to be a structural element, such as might be used to create a window from or door frame, for example” (page 5 of the REMARKS), that “Teutsch is directed to creating an extruded element that maybe used as a window frame or as a door frame” (page 9 of the REMARKS), that “Teutsch would not be understood to be applicable to a polymer web and/or to the formation of a film” (page 9 of the REMARKS), and that “the creation of an extrusion would not be understood by those skilled in the art to be transferrable to the formation of a film” (page 9 of the REMARKS). These arguments are not persuasive. The arguments do not appear to consider that Teutsch explicitly teaches the method is also applicable to the production of films (col. 2, lines 20-35; col. 5, lines 19-24). As such, while Teutsch does teach profile extrusion may be utilized, the teaching of Teutsch is not limited to profile extrusions that produce items such as window or door frames as argued. This applicability of films is fairly taught by Teutsch and Teutsch clearly has texturized films also in view.
From this reasonable basis and teaching in Teutsch the amended claims are now rejected in view of secondary references that provide a specific teaching and suggestion to add protrusions to only one side of the film taught and suggested by Teutsch, while leaving the other side smooth, such that the film is suitably used as an improved masking film. The combination of Teutsch in view of secondary references is also set forth above in the reverse direction wherein the basic methods of producing the films of Ghiam et al. or Barger are modified by the method of Teutsch. Teutsch explicitly teaches texturizing a film by spraying a fluid on the molten polymer material and provides reasons to texturize the material in this manner as set forth above in the body of the rejection.
Whether the combination is understood to begin with the method of producing a texturized film of Teutsch and modifying it with either one of Ghiam et al. or Barger to only texturize one side of the film while leaving the other side smooth or whether the combination is understood to begin with either one of Ghiam et al. or Barger and making the texturized films of these references by texturizing in the spraying manner taught by Teutsch, each and every limitation of the claimed invention is taught and suggested by the combination of references.
As to the arguments that the other secondary references do not remedy the deficiencies of Teutsch, it is noted that either Teutsch or the combination of Teutsch in view of the newly applied secondary references, are not deficient as argued.
It is submitted that the claims would need to be further amended to overcome the prima facie case of obviousness. The examiner notes his availability to discuss the application via telephonic interview if the propriety/viability of the rejection remains unclear.
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 Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742