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
1. This action is in response to the amendment filed March 27, 2026.
Claim 1 and 9-10 were amended, rendering claims 1-11 pending, with claims 9-11 withdrawn as a non-elected invention.
Claim Rejections – 35 USC § 102(a)(1)
2. 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.
3. Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Narutomi (JP H05207909 A).
Narutomi discloses a thermoplastic elastic body (layer) comprising polyether block amide (paragraph 22) and primers used to heat bond the surfaces (paragraph 20), as in claim 1. In claim 1, the phrase, “for a display device” is an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Claim Rejections – 35 USC § 102(a)(1)
4. Claims 1, 5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by (JP 4903332 B2).
JP ‘332 discloses a layer of extruded elastic polyether block amide matrix (paragraph 94) and a pressure sensitive adhesive (primer) comprising a copolymer comprising acrylamide units with a substrate (paragraph 85), as in claim 1.
In claim 1, the phrase, “for a display device” is an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claim 5, JP ‘332 discloses a pressure sensitive adhesive (primer) comprising a copolymer comprising acrylamide units with a substrate (paragraph 85).
Concerning claim 8, JP ‘332 discloses a polymeric layer (polymeric base film) (paragraph 94).
Claim Rejections – 35 USC § 103
5. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
6. Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Narutomi (JP H05207909 A).
Narutomi discloses a thermoplastic elastic body (layer) comprising polyether block amide (paragraph 22) and primers used to heat bond the surfaces (paragraph 20).
Narutomi does not appear to explicitly teach the adhesive force between the base film and the elastic layer, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the laminate film is carried out using material (polyether-block-amide) and process conditions which are substantially identical to those disclosed by applicants. Therefore the laminate film discussed above would be expected to meet the claimed adhesive force, as in claim 2. In claim 2, the phrase, “laminate film is cut to a size of 5 cm in length and 1 cm in width and subjected to a 180° peel test at a speed of 300 mm/min at room temperature” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having an elastic layer comprising a polyether-block-amide and a primer layer. The reference suggests such a product because Narutomi discloses a thermoplastic elastic body (layer) comprising polyether block amide (paragraph 22) and primers used to heat bond the surfaces (paragraph 20).
Concerning claim 3, the phrase, “the laminate film is cut to a size of 12 cm in length and 4 cm in width and subjected to repeated folding at room temperature and a folding speed of 1 time/second while the base film is folded inward such that the radius of curvature is 1.5 R, the number of folding until interlayer delamination occurs is 100,000 times or more” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having an elastic layer comprising a polyether-block-amide and a primer layer. The reference suggests such a product because Narutomi discloses a thermoplastic elastic body (layer) comprising polyether block amide (paragraph 22) and primers used to heat bond the surfaces (paragraph 20).
Concerning claim 4, Narutomi discloses polyester elastomer can be used in the article of Narutomi (paragraph 22).
Claim Rejections – 35 USC § 103
7. Claims 2-3, 7 are rejected under 35 U.S.C. 103 as being unpatentable over (JP 4903332 B2).
JP ‘332 discloses a layer of extruded elastic polyether block amide matrix (paragraph 94) and a pressure sensitive adhesive (primer) comprising a copolymer of 96% isooctyl acrylate units and 4% acrylamide units with a substrate (paragraph 85).
JP ‘332 does not appear to explicitly teach the adhesive force between the base film and the elastic layer, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the laminate film is carried out using material (polyether-block-amide) and process conditions which are substantially identical to those disclosed by applicants. Therefore the laminate film discussed above would be expected to meet the claimed adhesive force, as in claim 2. In claim 2, the phrase, “laminate film is cut to a size of 5 cm in length and 1 cm in width and subjected to a 180° peel test at a speed of 300 mm/min at room temperature” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having an elastic layer comprising a polyether-block-amide and a primer layer. The reference suggests such a product because JP ‘332 discloses a layer of extruded elastic polyether block amide matrix (paragraph 94) and a pressure sensitive adhesive (primer) comprising a copolymer of 96% isooctyl acrylate units and 4% acrylamide units with a substrate (paragraph 85).
Concerning claim 3, the phrase, “the laminate film is cut to a size of 12 cm in length and 4 cm in width and subjected to repeated folding at room temperature and a folding speed of 1 time/second while the base film is folded inward such that the radius of curvature is 1.5 R, the number of folding until interlayer delamination occurs is 100,000 times or more” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having an elastic layer comprising a polyether-block-amide and a primer layer. The reference suggests such a product because JP ‘332 discloses a layer of extruded elastic polyether block amide matrix (paragraph 94) and a pressure sensitive adhesive (primer) comprising a copolymer of 96% isooctyl acrylate units and 4% acrylamide units with a substrate (paragraph 85).
Concerning claim 7, the phrase, “when the laminate film is stored for 96 hours at room temperature and 50% RH, the change in adhesive force calculated by the following Equation (1) is 35% or less: …to measure the load applied between the base film and the elastic layer” constitutes a ‘capable of’ limitation and that such a recitation that an element is ‘capable of’ performing a function is not a positive limitation but only requires the ability to so perform.
Claim Objections
8. Claim 6 is 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. The closest prior art does not teach or suggest the recited laminate film further including the primer layer comprises 100 parts by weight of a polyester acrylate; and 5 parts by weight to 40 parts by weight of an acrylamide-based compound. The closest prior art does not teach or suggest the recited laminate film further including
The prior art does not teach motivation or suggestion for modification to make the invention as instantly claimed.
Response to Arguments
9. Applicant’s argument of the rejection made under 35 U.S.C. 102(a)(1) as being anticipated by Narutomi (JP H05207909 A) has been considered; however, is unpersuasive. Applicant argues Narutomi does not disclose instant claim 1, as amended, as Narutomi does not disclose a laminate film for a display device. In response to Applicant’s argument, the phrase, “for a display device” is an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Applicant argues the rejection made under 35 U.S.C. 102(a)(1) as being anticipated by (JP 4903332 B2) has been considered; however, is unpersuasive. Applicant argues JP 4903332 B2 does not disclose instant claim 1, as amended, as Narutomi does not disclose a laminate film for a display device. In response to Applicant’s argument, the phrase, “for a display device” is an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Applicant’s arguments of the rejections made under 35 U.S.C. 103 as being unpatentable over Narutomi (JP H05207909 A) and (JP 4903332 B2) are maintained for reasons of record, as claim 1 has been maintained over both references.
Conclusion
10. 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/LAWRENCE D FERGUSON/Examiner, Art Unit 1781
Prosecution Insights