DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 1-11 are currently pending. Claim 11 has been withdrawn as being drawn to a non elected invention. Claims 1-10 are currently under examination. This office action is the first office action on the merits of the claims and is in response to the response filed on 12/15/2025.
Election/Restrictions
3. Applicant’s election of Group I claims in the reply filed on 12/15/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Priority
4. Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 02/09/2022. It is noted, however, that applicant has not filed a certified copy of the JP2022-018732 application as required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claim 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Concerning claim 1 the claim recites “in the case where the protective film is heated at 140 °C for 30 minutes, a rate of change of K(an absorption coefficient)/S(a scattering coefficient) at the maximal absorption wavelength is 10% or less” which renders the claim indefinite as it is not clear if the indications in parenthesis are the definitions of K and S or are examples of K and S. Moreover no indication is made as to what absorption or scattering coefficients are compared or how they are measured which will make a difference in the values which are determined. Applicants specification pg 22 paragraphs 0096 indicate an exemplary method which can be used to determine the value of K/S however this is specifically indicated to be an example of a method which can give K/S an not a definition of how K/S is determined. As such it is unclear what these values are and how they are determined and so the scope of the claimed subject matter is indefinite. As such this rejection would hold for claims 4-5 and 10.
Additionally the claim recites “the protective film has a maximal absorption wavelength in a wavelength range of 300 to 400 nm” which renders the claim indefinite as it is unclear what is being referred to. Does this mean that there is a wavelength that has a maximum absorption over all wavelengths and this maximum absorption wavelength must be present in the range of 300 to 400 nm? Does this refer to the wavelength of maximum absorption over the range of 300 to 400 nm? Applicants specification on pg 21 paragraph 0095 indicates that the protective film may have a plurality of specific maximal absorption wavelengths in the wavelength range of 300-400 nm. This creates further confusion as it is not clear how a there can be multiple maximal absorption wavelengths. Does this mean that the maximal absorption wavelength is just a local maximum? This rejection would hold for the maximal absorption wavelength in the wavelength range of 300 to 400 nm indicated in claim 6.
Concerning claim 6 the claim recites “wherein the polymer A has a group formed by removing one hydrogen atom from a nitrogen containing aromatic compound” which renders the claim indefinite as it is not clear if the nitrogen containing aromatic compound being referred to is a hypothetical chemical structure that is a nitrogen containing aromatic compound missing one hydrogen atom or if this is the recitation of a method step where part of the polymer A is formed by a process of removing one hydrogen atom from a nitrogen containing aromatic compound.
Claims 2-3, 7-8, and 9 are rejected as being dependent from a rejected base claim.
Claim Rejections - 35 USC § 102
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 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.
6. Claim(s) 1-6, 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaneko (US 2011/0045412A1).
Concerning claim 1-3, 8 Kaneko teaches a polymer j-12 which is made from a macromonomer , 4-vinyl pyridine and methacrylic acid (paragraph 0321 Table 1 J-12), which has an acid value of 65 mg KOH/g (paragraph 0322 table 2 J-12). This polymer is then used in a pigment dispersion (paragraph 0330 Table 3 example 18 X-22) which is used in a colored curable composition (paragraph 0338-0339) which is then made into a film on a glass substrate (paragraph 0343) which is cured (paragraph 0351 and then heat treated in an oven at 220 °C for 1 hour (paragraph 0353 and Table 4 example 49). This provides a film which is indicated to have light resistance (paragraph 0355) and so can be considered to be a protective film as it would be capable of protecting what it is coated on.
It should be noted that “for an electrode” in the claimed language is interpreted as intended use of the protective film and as the film would be capable of being applied to an electrode and as such would be considered to be a protective film for an electrode.
If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02.II.
Kaneko does not specifically teach the acid value of the protective film, that the protective film has a maximal absorption wavelength in a wavelength range of 300 to 400nm or that in a case where the protective film is heated at 140°C for 30 minutes a rate of change of K/S at the maximal absorption wavelength is 10% or less.
Kaneko as is stated above teaches the polymer having the claimed acid value group which is made form 10 wt% of methacrylic acid based on the monomers used (paragraph 0321 Table 1 example 10 J-12). This polymer is in turn indicated to be present in an amount of 18 parts out of 405 parts of the pigment dispersion though based on solids this is 18 parts of 63 parts (paragraph 0326). The pigment dispersion is indicated to be present in an amount of 600 parts out of 1541 parts (paragraph 0339) although 6 additional parts are indicated to be a polymer of 10% by mass of methacrylic acid (paragraph 0340-0341). This would correspond to 26.67 parts of the polymer which has a acid value of 65 mg KOH/g and 6 parts of the additional polymer having 10% by mass of methacrylic acid out of a total solids amount of approximately 141.333 parts. This would indicate that approximately 23.11 wt% of the coating composition is a polymer which includes a methacrylic acid group. If the additional polymer has an acid number that is the same as the polymer with an acid value of 65 mg KoH/g (since both are made from 10 wt% of methacrylic acid) this would indicate that the acid value of the coating composition would be 23.11 wt% of the pure polymer value of 65 mg KOH/g or approximately 15.025mg KOH/g. This indicates that in order to have the coating have an acid value outside the claimed range of less than 80 mgKOH/g or less. The acid value would have to be increase 5.32 times. However the polymer which has an acid value which is not known is present in an amount of 22.5 wt% of the polymer which has the acid value known. Given the small amount of polymer and that it has only 10 wt% of methacrylic acid unit present in the polymer which is the same amount as is present in the polymer having 65 mgKOH/g this polymer will not have the almost order of magnitude high acid value which is required in order to make the coating composition be outside the claimed range of 80 mgKOH/g or less.
As such the protective film of Kaneko will have the claimed acid value.
It should be noted that applicants examples of the exemplary polymers in applicants specification paragraph 0280 each include a acrylic acid monomer unit which has the same carboxylic acid group as which is present in Kaneko. Moreover methacrylic acid is gives as providing the preferred repeating unit in applicants specification paragraph 0052. Methacrylic acid gives a structure which corresponds to the claimed formula (a1) when X is a single bond and Ra is a methyl substituent.
The absorbance in the range of 300 to 400 nm is a measurement of the chemical groups which are present in the protective coating as absorbance in this range is a result of the presence of particular chemical groups which absorb light at particular frequencies.
As the same type of carboxylic acid monomer unit is present in the polymer of Kaneko as in applicants examples and carboxylic acid group would indicate that the protective film of Kaneko would have the claimed maximal absorption wavelength in the range of 300 to 400 nm.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP 2112.V.
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). See MPEP 2112.01.I.
"Products of identical chemical composition can not 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. See MPEP 2112.01.II.
The protective film of Koneko is indicated to under go a post bake heating in an oven at 220 °C for 1 hour (paragraph 0353). The rate of change of K/S at the maximal absorption wavelength is a measurement of the change of the amount of the chemical bonds are altered by the process of heating at 140 °C for 30 minutes. However the protective coating of Koneko has already undergone a hotter and longer heat treatment, and so any reaction that would occur because of the colder shorter heat treatment has already occurred, which would lead to little to no change in the K/S value after heat treatment. As such the protective film of Koneko would have the claimed property of the rate of change of K/S at the maximal absorption wavelength of 10% or less.
As such the protective film of Koneko would have the claimed properties and meet the claimed limitations.
Concerning claim 4-5 and 10 Koneko teaches the protective film according to claim 1, 3 and 8 as is stated above.
Koneko does not specifically teach the claimed K/S values of the protective coating.
However the K/S value is indicated to be a measurement of the relative reflectivity of the a sample in applicants specification paragraph 0096 with K/S=(1-R)2/2R where R is the relative reflectivity at the maximum absorption wavelength. As such the K/S value would result from the particular group and amount of the group which gives rise to the maximum absorption wavelength.
Koneko teaches that the protective coating includes polymers which have methacrylic acid groups, and teaches the claimed amounts of these groups as seen by the acid value of the protective coating which is within the claimed range.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP 2112.V.
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). See MPEP 2112.01.I.
"Products of identical chemical composition can not 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. See MPEP 2112.01.II.
As such the protective film of Koneko will have the claimed K/S values and so have the claimed ranges.
Concerning claim 6 Kaneko teaches a polymer j-12 which is made from a macromonomer , 4-vinyl pyridine and methacrylic acid (paragraph 0321 Table 1 J-12), which has an acid value of 65 mg KOH/g (paragraph 0322 table 2 J-12).
Vinyl pyridine has a pyridine group which is formed by removing a hydrogen atom from a nitrogen containing aromatic compound of pyridine.
Koneko does not specifically teach that the nitrogen containing aromatic compound has a maximal absorption wavelength in the range of 300 to 400 nm.
However pyridine group is known to have an absorption peak in this range because of the structure of the nitrogen containing aromatic ring.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP 2112.V.
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). See MPEP 2112.01.I.
"Products of identical chemical composition can not 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. See MPEP 2112.01.II.
As such the protective film of Koneko which has a polymer that includes a vinyl pyridine monomer would include the claimed nitrogen containing aromatic compound with a maximal absorption wavelength in the claimed range.
Concerning claim 9 Koneko teaches the protective film of claim 1 as is stated above.
Kaneko as is stated above teaches the polymer having the claimed acid value group which is made form 10 wt% of methacrylic acid based on the monomers used (paragraph 0321 Table 1 example 10 J-12). This polymer is in turn indicated to be present in an amount of 18 parts out of 405 parts of the pigment dispersion though based on solids this is 18 parts of 63 parts (paragraph 0326). The pigment dispersion is indicated to be present in an amount of 600 parts out of 1541 parts (paragraph 0339) although 6 additional parts are indicated to be a polymer of 10% by mass of methacrylic acid (paragraph 0340-0341). This would correspond to 26.67 parts of the polymer which has a acid value of 65 mg KOH/g and 6 parts of the additional polymer having 10% by mass of methacrylic acid out of a total solids amount of approximately 141.333 parts. This would indicate that approximately 23.11 wt% of the coating composition is a polymer which includes a methacrylic acid group. If the additional polymer has an acid number that is the same as the polymer with an acid value of 65 mg KoH/g (since both are made from 10 wt% of methacrylic acid) this would indicate that the acid value of the coating composition would be 23.11 wt% of the pure polymer value of 65 mg KOH/g or approximately 15.025mg KOH/g. If the additional polymer is considered to have a acid value of 0 mg KOH/g (which would not be true), then the 65 mgKOH/g polymer is present in an amount of approximately 18.87 wt%, and so the coating as a whole would be expected to have approximately 12.27 mg/KOH/g which is within the claimed range of 5 mgKOH/g or more.
As such the protective film of Koneko will have the claimed acid value and so teach the claimed limitations.
7. Claim(s) 1-5, 8, 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lohr (US 3,679,618).
Concerning claim 1-3, 8 Lohr teaches an electrocoating composition that comprises a polymer solution where the polymer is a copolymer of 18.7wt% styrene, 18.8 wt% methyl methacrylate/ 45 wt% ethyl hexyl acrylate, 10 wt% of hydroxypropyl methacrylate and 7.5 wt% of methacrylic acid which has anacid number of 55 (column 7 lines 25-45). 75 parts of polymer solids in solution are mixed with 2.475 g of potassium hydroxide in solution and with an aqueous dispersions containing 19.593g of poly tetrafluorethylene and is then coated on steel plates after which the plate is baked at 400°C for 20 minutes (column 7 lines 25-65). The methacrylic acid monomer provides a repeating unit having a n acid group and gives a structure which corresponds to the claimed formula (a1) when X is a single bond and Ra is a methyl substituent. The solution when applied as a coating is indicated to have a pH of about 8.2 (column 7 lines 45-55) which would indicate that the coating which is formed would have an acid value of 0 as it is fully neutralized in the solution when deposited. It should be noted that an acid value of 0 is within the claimed ranges of 80 mgKOH/g or less and as such the coating of Lohr would teach the claimed acid value.
It should be noted that “for an electrode” in the claimed language is interpreted as intended use of the protective film and as the coating film would be capable of being applied to an electrode and as such the film of Lohr would be considered to be a protective film for an electrode.
If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). See MPEP 2111.02.II.
Lohr does not particularly teach that the protective film has a maximal absorption wavelength in a wavelength range of 300 to 400nm or that in a case where the protective film is heated at 140°C for 30 minutes a rate of change of K/S at the maximal absorption wavelength is 10% or less.
It should be noted that applicants examples of the exemplary polymers in applicants specification paragraph 0280 each include a acrylic acid monomer unit which has the same carboxylic acid group as which is present in Kaneko. Moreover methacrylic acid is gives as providing the preferred repeating unit in applicants specification paragraph 0052. Methacrylic acid gives a structure which corresponds to the claimed formula (a1) when X is a single bond and Ra is a methyl substituent.
The absorbance in the range of 300 to 400 nm is a measurement of the chemical groups which are present in the protective coating as absorbance in this range is a result of the presence of particular chemical groups which absorb light at particular frequencies.
As the same type of carboxylic acid monomer unit is present in the polymer of Lohr as in applicants examples and carboxylic acid group would indicate that the protective film of Lohr would have the claimed maximal absorption wavelength in the range of 300 to 400 nm.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP 2112.V.
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). See MPEP 2112.01.I.
"Products of identical chemical composition can not 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. See MPEP 2112.01.II.
The coating film of Lohr is indicate to undergo a heating at 400°C for 20 minutes (column 7 lines 25-65). The rate of change of K/S at the maximal absorption wavelength is a measurement of the change of the amount of the chemical bonds are altered by the process of heating at 140 °C for 30 minutes. However the protective film of Lohr has already undergone a hotter and heat treatment of similar length, and so any reaction that would occur because of the colder shorter heat treatment has already occurred, which would lead to little to no change in the K/S value after heat treatment. As such the protective film of Lohr would have the claimed property of the rate of change of K/S at the maximal absorption wavelength of 10% or less.
As such the protective film of Lohr would have the claimed properties and meet the claimed limitations.
Concerning claim 4-5 and 10 Lohr teaches the protective film according to claim 1, 3 and 8 as is stated above.
Lohr does not specifically teach the claimed K/S values of the protective coating.
However the K/S value is indicated to be a measurement of the relative reflectivity of the a sample in applicants specification paragraph 0096 with K/S=(1-R)2/2R where R is the relative reflectivity at the maximum absorption wavelength. As such the K/S value would result from the particular group and amount of the group which gives rise to the maximum absorption wavelength.
Koneko teaches that the protective coating includes polymers which have methacrylic acid groups, and teaches the claimed amounts of these groups as seen by the acid value of the protective coating which is within the claimed range.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.I.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). See MPEP 2112.II.
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See MPEP 2112.V.
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). See MPEP 2112.01.I.
"Products of identical chemical composition can not 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. See MPEP 2112.01.II.
As such the protective film of Lohr will have the claimed K/S values and so have the claimed ranges.
Allowable Subject Matter
8. Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art teaches or fairly suggest the polymer having the group of the claimed formula Zb2.
Conclusion
9. Claims 1-10 are rejected. Claim 7 would be allowable over the prior art of record but is rejected over 112 issues.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L MILLER/ Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/ Supervisory Patent Examiner, Art Unit 1763
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