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 arguments, see the claim amendments and the remarks filed 11/13/2025, with respect to the rejection of claims 4-6 under 35 U.S.C. 112(b) as set forth in paragraph 3 of the action mailed 8/18/2025, have been fully considered and are persuasive. The rejection of claims 4-6 has been withdrawn.
Rejections
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 Rejections - 35 USC § 103
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Muroi et al. (JP 2000010489 A) in view of Kashiwakura et al. (US 2021/0406747 A1). The Examiner notes that citations from the Muroi reference were taken from a machine translation, which was included with the previous action.
Regarding claims 1-3, Muroi teaches a polyester base film (base material layer), a coating layer on one side of the base film that can be peeled off (detachment coat layer) and a polyester pressure-sensitive adhesive layer (PSA layer, PSA label) on the other side of the base film (para 0005, 0009), which teaches the presently claimed ordered layered structure. Muroi also teaches that the coat layer comprises a water-based polyester resin (i.e., aqueous) (para 0010).
Muroi is silent to the water-based polyester resin comprising the presently claimed acid value and glass transition temperature (Tg) (current claim 1), the presently claimed number-average molecular weight (Mn) (current claim 2), and a carboxyl group (current claim 3).
However, Kashiwakura teaches an aqueous polyester coating composition comprising a polyester base resin comprising a carboxyl group, an acid value of 10 to 70 mgKOH/g and a Tg of not lower than 35 ℃ (abstract), which said carboxyl groups (crosslinking points) and acid value provides a balance of adequate curability, workability and coating adhesion (para 0016, 0019) and which said Tg range provides a balance of workability and resin motility (para 0023).
Kashiwakura also teaches that the polyester base resin has a Mn of 3,000 to 50,000, which overlaps that presently claimed, towards a balance of workability and stability (para 0039). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the water-based polyester resin with the presently claimed carboxyl group and acid value, the Tg value and the Mn based on the balance of curability, workability, coating adhesion and resin motility required of the prior art’s intended application as in the present invention.
Allowable Subject Matter
Claims 4-6 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Muroi/Kashiwakura teach the presently claimed invention as recited in at least current claim 1 set forth above, but are silent to the disclosed PSA layer/polyester base film/coating layer laminate further comprising an alkali-insoluble coat layer.
Claims 4-6 are 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.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 11/13/2025, with respect to the rejection of claims 1-3 over Muroi et al. in view of Kashiwakura et al. under 35 U.S.C. 103 as set forth in paragraph 6 of the action mailed 8/18/2025, have been fully considered but they are not persuasive.
In regards to the Applicant’s position that there is no motivation for the combination of Murio and Kashiwakura (as per MPEP 2143.01), the Examiner respectfully submits that the disclosed inventions in each of the cited references are centered around a polyester resin and its import in the inclusion of the respective inventions. Indeed, the water-based polyester resin of the coating layer of Murio comprises the polyester, while the compositions of Kashiwakura disclose the acid values (via carboxyl group functionality) of the polyesters towards adjusting the crosslinking density (see para 0019-0022).
Thus, the disclosure of Kashiwakura commends itself towards remedying the deficiency of Murio in regards the acid value presently claimed to provide the balance of adequate curability (i.e., crosslinking) in addition to properties such as the workability and coating adhesion as would instruct and motivate the skilled artisan via Kashiwakura. The Examiner also submits that coating adhesion considerations of Kashiwakura would further commend (i.e. motivate) itself to peel properties such as a coating layer peeled off from an adherend in an alkaline washing step regardless of whether the application, and methodology of use, of Murio is not identical to that of Kashiwakura. It is moreover significant to note that the “workability” of a coating (i.e. coating properties; see para 0015 of Kashiwakura) would find relevance to the application of the coating layer to the polyester base film of Murio.
The "test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference... Rather, the test is what
the combined teachings of the references would have suggested to those of ordinary skill
in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that
"combining the teachings of references does not involve an ability to combine their
specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Indeed, the Examiner notes that all the endeavors contemplated in the Kashiwakura invention (e.g., flavor-sorption and whitening resistance) may not be relevant to those of Murio, but Kashiwakura does provide instruction to the skilled artisan as noted above towards providing the polyesters comprising the coating layer of Murio with the presently claimed acid value. Similarly, Kashiwakura demonstrates a relevant consideration of the Tg values of the polyesters comprising the coating layer of Murio towards workability. The Examiner is unable to locate any mention of alkali resistance in the disclosure of Kashiwakura.
Continuing with the In re Keller and In re Nievelt discussion, and in response to the Applicant’s allegations that the modifications cited in Kashiwakura would require identical curing conditions (b-hydroxyalkylamide and baking temperatures) and identical resultant properties (dense, water resistance), the Applicant’s attention is respectfully directed to the prior art rejection set forth above and the Examiner’s current response to the Applicant’s arguments. Indeed, the Examiner respectfully reminds the Applicant that the entirety of the secondary reference need not be incorporated into remedying the deficiencies of the primary reference. One skilled in the art would be motivated towards employing a coating layer comprising a polyester comprising the presently claimed acid as instructed via the Kashiwakura, and with the attendant advantages, without the necessity of substituting Kashiwakura’s invention, in its entirety, into the coating layer portion of Murio’s coating layer/base film/PSA laminate.
The Examiner respectfully disagrees with the Applicant’s assertions against the clarity of record with respect to the achieved result in Murio’s coating layer by employing a polyester comprising the presently claimed acid value, Tg and Mn as instructed by Kashiwakura, and as cited in the previous and current actions. The Examiner submits that the previous and current record demonstrate the relevance of Kashiwakura’s modifications to the functions of Muroi; specifically, in regards to workability and coating adhesion. Also, as noted, workability and coating adhesion is not limited in its teaches to water and retort solubility. Lastly, it is the Examiner’s position that the combination of Muroi and Kashiwakura do indeed provide the “clear and particular evidence” towards teaching or rendering obvious the presently claimed invention, and without any need to resort to impermissible hindsight. The Examiner notes that at no time was the instant disclosure sited towards any portion of the previous and current prior art rejections.
Conclusion
THIS ACTION IS MADE FINAL. 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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 1/20/2026