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 Rejections - 35 USC § 102
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klingeberg et al (US 2018/0030315).
Regarding claim 1, Klingeberg discloses a release liner for use on PSA (abstract) comprising a POL layer system comprising one or more layers (abstract, 0017); at least one PER layer, i.e. PEL layer, (abstract) and an adhesive layer, i.e. anchoring layer, (0087) wherein the anchoring layer connects PEL layer to the POL layer system (0088), wherein each layer of the POL layer system has at least 50% by weight of one or more polyolefin based on a total weight of the layer of the POL layer system (0071), wherein layer of the POL layer system comprises polypropylene (0072), wherein PEL layer comprises at least 80% by weight of polyethylene based on total weight of the PEL layer (0083) and further wherein the anchoring layer comprises ethylene vinyl acetate, i.e. polyolefin copolymer (0089).
Klingeberg discloses coextrusion of layers (0087). Alternatively, although Klingeberg does not disclose coextrusion, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Klingeberg meets the requirements of the claimed release liner, Klingeberg clearly meets the requirements of the present claims.
Regarding claim 2, Klingeberg discloses the release liner of claim 1, wherein the polyethylene of PEL layer is LDPE (0084).
Regarding claim 3, Klingeberg discloses the release liner of claim 1, wherein the LDPE has a density of less than 0.925 g/cc (0086).
Regarding claim 4, Klingeberg discloses the release liner of claim 1, wherein the PEL layer has a layer thickness of 10 to 45 microns (0084).
Regarding claim 5, Klingeberg discloses the release liner of claim 1, wherein the POL layer system comprising PPK layer comprising at least 75% by weight of polypropylene based on a total weight of the PPK layer (0072).
Regarding claim 6, Klingeberg discloses the release liner of claim 1, wherein the POL layer system containing PPK layer, i.e. POL system consists of a PPK layer, comprising at least 60% by weight of polypropylene based on a total weight of the PPK layer (0072).
Regarding claim 7, Klingeberg discloses the release line of claim 1, wherein the POL layer system comprises a PPK layer and a POK layer, the POK layer directly following the PPK layer and comprising at least 25% by weight of polyethylene and at least 20% by weight of polyethylene based on a total weight of the POK layer and further wherein the PPK layer comprising at least 60% by weight of polypropylene based on a total weight of the PPK layer (0073-0075).
Regarding claim 8, Klingeberg discloses the release line of claim 1, further comprising at least one silicone release layer, wherein the at least one silicone layer serves as the outermost layer of the release layer (abstract, 0029).
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.
Claim(s) 11 and 13-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klingeberg et al (US 2018/0030315) in view of Hoya et al. (US 2009/0314429).
Regarding claim 11 and 22, Klingeberg discloses a release liner for use on PSA (abstract) comprising a POL layer system comprising one or more layers (abstract, 0017); at least one PER layer, i.e. PEL layer, (abstract) and an adhesive layer, i.e. anchoring layer, (0087) wherein the anchoring layer connects PEL layer to the POL layer system (0088), wherein each layer of the POL layer system has at least 50% by weight of one or more polyolefin based on a total weight of the layer of the POL layer system (0071), wherein layer of the POL layer system comprises polypropylene (0072), wherein PEL layer comprises at least 80% by weight of polyethylene based on total weight of the PEL layer (0083) or POK layer comprises at least 35% by weight of polyethylene (0075), i.e. PEL layer comprising 80% by weight of polyethylene. Klingeberg fails to disclose the anchoring layer comprises ethylene propylene block copolymer and its thickness.
Hoya discloses a film comprising ethylene propylene block copolymer to obtain good tack strength and adhesive strength (0071-0074).
It would have been obvious to one of ordinary skill in the art to use the block copolymer of Hoya in the anchoring layer of Klingeberg to obtain good tack strength and adhesive strength.
Since the instant specification is silent to unexpected results, the specific thickness of the anchoring layer is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of individual layers including anchoring layer, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of the anchoring layer in Klingeberg in view of Hoya to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 13, Klingeberg in view of Hoya discloses the release liner of claim 11, wherein the polyethylene of PEL layer is LDPE (0084).
Regarding claim 14, Klingeberg in view of Hoya discloses the release liner of claim 11, wherein the LDPE has a density of less than 0.925 g/cc (0086).
Regarding claim 15, Klingeberg in view of Hoya discloses the release liner of claim 11, wherein the PEL layer has a layer thickness of 10 to 45 microns (0084).
Regarding claim 16, Klingeberg in view of Hoya discloses the release liner of claim 11, wherein the POL layer system comprising PPK layer comprising at least 75% by weight of polypropylene based on a total weight of the PPK layer (0072), wherein POK layer comprises a first and second POK layer disposed on top and bottom surface of the PPK layer (0072, 0082) wherein Klingeberg discloses adhesive layer is used to bond layers together but fails to disclose first and second adhesive layers between PEL layer and PPK layer. However, it would have been obvious to one of ordinary skill in the art to use the adhesive between each layers of Klingeberg to obtain proper adhesiveness between layers.
Regarding claim 17, Klingeberg in view of Hoya discloses the release liner of claim 11, but fails to disclose the first and second PEL layers and the first and second anchoring layers has the same thickness.
Since the instant specification is silent to unexpected results, the specific thickness of the anchoring layer is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of individual layers, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of each layers in Klingeberg in view of Hoya to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 18, Klingeberg in view of Hoya discloses the release liner of claim 11, wherein the POL layer system consists of a first and second POK layer disposed on a top and bottom surface of a PPK layer (0082) wherein each POK comprises at least 30% by weight of polyethylene and at least 20% by weight of polypropylene based on a total weight of each POK layer (0075) and the PPK layer comprises at least 75% by weight of polypropylene (0072), wherein the PEL layer disposed on a surface of POK layer (0088) and the anchoring layer connects the PEL layer to the POK layer (0088).
Regarding claim 19, Klingeberg in view of Hoya discloses the release liner of claim 11, wherein the both POK layers have thickness of 10 to 30 microns (0082) therefore when first POK layer has a thickness of 30 microns and the second POK layer has a thickness of 10 microns, it meets the present claim.
Regarding claim 20, Klingeberg in view of Hoya discloses the release line of claim 11, further comprising at least one silicone release layer, wherein the at least one silicone layer serves as the outermost layer of the release layer (abstract, 0029).
Regarding claim 21, Klingeberg in view of Hoya discloses the release liner of claim 11, wherein Klingeberg discloses coextrusion of layers (0087).
Alternatively, although Klingeberg in view of Hoya does not disclose coextrusion, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Klingeberg in view of Hoya meets the requirements of the claimed release liner, Klingeberg in view of Hoya clearly meets the requirements of the present claims.
Claim(s) 11-21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klingeberg et al (US 2018/0030315) in view of Lee et al. (US 2017/0197348).
Regarding claims 11-12 and 22, Klingeberg discloses a release liner for use on PSA (abstract) comprising a POL layer system comprising one or more layers (abstract, 0017); at least one PER layer, i.e. PEL layer, (abstract) and an adhesive layer, i.e. anchoring layer, (0087) wherein the anchoring layer connects PEL layer to the POL layer system (0088), wherein each layer of the POL layer system has at least 50% by weight of one or more polyolefin based on a total weight of the layer of the POL layer system (0071), wherein layer of the POL layer system comprises polypropylene (0072), wherein PEL layer comprises at least 80% by weight of polyethylene based on total weight of the PEL layer (0083). Klingeberg discloses the anchoring layer comprises ethylene vinyl acetate, i.e. polyolefin copolymer (0089) but fails to disclose ethylene propylene block copolymer and its thickness.
Lee discloses multilayer film comprising adhesive layer discloses equivalent and interchangeability of using ethylene propylene block copolymer and ethylene vinyl acetate (0089). Given that the adhesive of Lee does not disclose any other components in the adhesive, it is clear that the adhesive of Lee comprising 100% of ethylene propylene block copolymer or ethylene vinyl acetate.
Given that Lee discloses the equivalence and interchangeability of using ethylene propylene block copolymer as presently claimed with using ethylene vinyl acetate as disclosed by Klingeberg, it would have been obvious to one of ordinary skill in the art to use ethylene propylene block copolymer in the adhesive of Klingeberg to meet end users requirements.
Since the instant specification is silent to unexpected results, the specific thickness of the anchoring layer is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of individual layers including anchoring layer, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of the anchoring layer in Klingeberg in view of Hoya to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 13, Klingeberg in view of Lee discloses the release liner of claim 11, wherein the polyethylene of PEL layer is LDPE (0084).
Regarding claim 14, Klingeberg in view of Lee discloses the release liner of claim 11, wherein the LDPE has a density of less than 0.925 g/cc (0086).
Regarding claim 15, Klingeberg in view of Lee discloses the release liner of claim 11, wherein the PEL layer has a layer thickness of 10 to 45 microns (0084).
Regarding claim 16, Klingeberg in view of Lee discloses the release liner of claim 11, wherein the POL layer system comprising PPK layer comprising at least 75% by weight of polypropylene based on a total weight of the PPK layer (0072), wherein POK layer comprises a first and second POK layer disposed on top and bottom surface of the PPK layer (0072, 0082) wherein Klingeberg discloses adhesive layer is used to bond layers together but fails to disclose first and second adhesive layers between PEL layer and PPK layer. However, it would have been obvious to one of ordinary skill in the art to use the adhesive between each layers of Klingeberg to obtain proper adhesiveness between layers.
Regarding claim 17, Klingeberg in view of Lee discloses the release liner of claim 11, but fails to disclose the first and second PEL layers and the first and second anchoring layers has the same thickness.
Since the instant specification is silent to unexpected results, the specific thickness of the anchoring layer is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of individual layers, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of each layers in Klingeberg in view of Hoya to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 18, Klingeberg in view of Lee discloses the release liner of claim 11, wherein the POL layer system consists of a first and second POK layer disposed on a top and bottom surface of a PPK layer (0082) wherein each POK comprises at least 30% by weight of polyethylene and at least 20% by weight of polypropylene based on a total weight of each POK layer (0075) and the PPK layer comprises at least 75% by weight of polypropylene (0072), wherein the PEL layer disposed on a surface of POK layer (0088) and the anchoring layer connects the PEL layer to the POK layer (0088).
Regarding claim 19, Klingeberg in view of Lee discloses the release liner of claim 11, wherein the both POK layers have thickness of 10 to 30 microns (0082) therefore when first POK layer has a thickness of 30 microns and the second POK layer has a thickness of 10 microns, it meets the present claim.
Regarding claim 20, Klingeberg in view of Lee discloses the release line of claim 11, further comprising at least one silicone release layer, wherein the at least one silicone layer serves as the outermost layer of the release layer (abstract, 0029).
Regarding claim 21, Klingeberg in view of Lee discloses the release liner of claim 11, wherein Klingeberg discloses coextrusion of layers (0087).
Alternatively, although Klingeberg in view of Lee does not disclose coextrusion, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Klingeberg in view of Lee meets the requirements of the claimed release liner, Klingeberg in view of Lee clearly meets the requirements of the present claims.
Response to Arguments
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive.
Applicant argues that Klingeberg discloses ethylene vinyl acetate which is not a polyolefin copolymer and points to paragraph 0056 in the specification and argues that ethylene propylene block copolymer is an example of a polyolefin copolymer. However, it is noted that ethylene vinyl acetate is a copolymer of polyolefin. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. ethylene propylene block copolymer is an example of a polyolefin copolymer) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Klingeberg discloses polyurethane based adhesive in the examples. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant argues that Klingerberg’s release liners were formed via lamination not coextrusion. Although Klingeberg does not disclose coextrusion, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that Klingeberg meets the requirements of the claimed release liner, Klingeberg clearly meets the requirements of the present claims. Further, it is noted that while paragraph 0096 may teach coextrusion led to lower bond strength value, paragraph 0087of Klingeberg does disclose coextrusion of layers.
Applicant points to 0096 of Klingerberg argues that Klingeberg touts lamination over coextrusion because coextrusion has led to lower bond strength. However, it is noted that paragraph 0096 of Klingerberg discloses lamination over coextrusion for PPK or POK to the PER not for POL layer system comprising a layer and PEL layer as presently claimed.
Applicant argues that Hoya is non-analogous art and not reasonably pertinent to the problem that the anchoring layer of the release liner of claim 11 addresses. However, applicants’ are reminded that according to MPEP 2141.01 (a), a reference may be relied on as a basis for rejection of an applicants’ invention if it is “reasonably pertinent to the particular problem with which the inventor is concerned.” A reasonably pertinent reference is further described as one which “even though it may be in a different field of endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Hoya is, therefore, a reasonably pertinent reference, because it teaches a film comprising ethylene propylene block copolymer to obtain good tack strength and adhesive strength, which is a function especially pertinent to the invention at hand.
Applicant argues that the adhesive of Hoya is designed for end user adhesion to provide surface protection not as an internal anchoring layer in a liner. However, it is noted that the adhesive of Hoya is used between a substrate made of polypropylene or polyethylene (0096) and an article made of synthetic resin (0110), therefore it is clear that a person ordinary skill in the art would be motivated to use such adhesive composition in a film or liner made of multiple resin layers.
Applicant points to 0096 of Klingerberg argues that Klingeberg touts lamination over coextrusion because coextrusion has led to lower bond strength. However, it is noted that there is nothing in claim 11 that includes that the liner is coextruded. Further, it is noted that while paragraph 0096 may teach coextrusion led to lower bond strength value, paragraph 0087of Klingeberg does disclose coextrusion of layers.
Applicant argues that Lee does not disclose ethylene propylene block copolymer. However, it is noted that as Lee discloses PE-OBC which is polyethylene-olefin block copolymer or PP-OBC which is polypropylene-olefin block copolymer wherein olefin includes propylene and/or ethylene and therefore it is clear that Lee does disclose ethylene propylene block copolymer as presently claimed.
Applicant argues that Klingeberg utilizes lamination teaching that coextrusion leads to poor bonding. However, it is noted that claim 11 is drawn to a product claim not a process. Further, it is noted that Klingeberg does disclose in paragraph 0096 that coextrusion is possible.
Regarding newly added claim 21, applicant argues that Klingeberg teaches away from claim 21. However, it is noted that while paragraph 0096 may teach coextrusion led to lower bond strength value, paragraph 0087of Klingeberg does disclose coextrusion of layers. Therefore, it is examiner’s position that Klingeberg does not teach away from coextrusion.
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787