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 .
Election/Restrictions
Applicant’s election without traverse of claims 25-32 and 35-36 in the reply filed on 12/23/2025 is acknowledged.
Claims 16-24 and 33-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/23/2025.
Claim Objections
The following claim(s) are objected to because of these informalities:
In claim 25, line 6, “a plurality of peaks” should read “the plurality of peaks”.
Appropriate correction is required.
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.
Claima 25-32 and 35-36 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 pre-AIA the applicant regards as the invention.
Claim 25, line 11 recites "the surface of the thermoplastic polymer layer". This term is not previously used and does not have proper antecedent basis. For the purpose of examination, claim 25, line 11 reads on "a surface of the thermoplastic polymer layer". Dependent claims fall herewith.
Claim 25, line 16 recites "the surface of the release liner". This term is not previously used and does not have proper antecedent basis. For the purpose of examination, claim 25, line 16 reads on "a surface of the release liner". Dependent claims fall herewith.
Claim 25, line 17 recites "the surface on the side of the release layer". It is unclear which surface is being referenced since there are multiple layers recited earlier in the claim. For the purpose of examination, claim 25, line 17 reads on "the surface of the release liner on the side of the release layer". Dependent claims fall herewith.
Claim 25, line 18 recites "it has a plurality of pits". It is unclear which claim element is being referenced by “it”. For the purpose of examination, claim 25, line 18 reads on "the surface of the release liner on the side of the release layer ". Dependent claims fall herewith.
Claim 25, line 19 recites "the release liner surface". It is unclear which surface of the release liner is being referenced since the release liner has multiple surfaces. For the purpose of examination, claim 25, line 19 reads on "the surface of the release liner on the side of the release layer ". Dependent claims fall herewith.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 25 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20 and 21, respectively, of US Patent 11,879,081
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claims 25 and 30, claims 20 and 21, respectively, of the ‘081 patent recite each of the instant features or a corresponding feature of narrower scope, thus anticipating the features in these instant claims.
Claims 25 and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18 and 19, respectively, of US Patent 11,879,081 in view of Berens (WO 98/44391A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 25, claim 18 of the ‘081 patent recite each of the instant features or a corresponding feature of narrower scope, thus anticipating these features in instant claim 25, except for one feature as described below.
Instant claim 25 requires in step e) that the release layer is applied on the embossed thermoplastic polymer layer obtained in step d), whereas claim 18 of the ‘081 patent requires embossing the provided composite comprising the thermoplastic polymer layer and release layer applied to the polymer layer, as recited in step d) of claim 18.
However, embossing either before or after applying a release layer to a substrate are known alternatives in the prior art, as taught for example, by Berens (pg. 8, lines 11-16 and pg. 23, lines 29-31). Berens further teaches that embossing a substrate followed by coating a release overlayer is a known technique to module the degree of surface roughness (pg. 24, lines 1-2).
Furthermore, in the absence of an unexpected result, the courts have held that a change of sequence in the order of process steps is prima facie obvious. See MPEP § 2144.04.IV.C, Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959), and In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946).
In view of Berens’ teachings and/or the above considerations from the MPEP, it would have been obvious to one of ordinary skill in the art to modify claim 18 of the ‘081 patent to apply the release layer to the thermoplastic polymer layer after embossing the thermoplastic polymer layer to predictably obtain a suitable alternative process and/or to module the degree of surface roughness after the embossing.
Regarding claim 30, claim 19 of the ‘081 patent recites one of the alternative features of instant claim 30.
Allowable Subject Matter
Claims 25 and 30 were not found in a search of the prior art, but are not allowable for the reasons given above.
Claims 26-29, 31-32 and 35-36 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 all intervening claims.
Regarding claims 26-29, 31-32 and 35-36, the prior art of record does not teach, suggest, or render obvious a process for producing a release liner, comprising:
(d) embossing the thermoplastic polymer layer with the roll obtained in step (b) in order to form a network of ridges and to roughen the surface of the thermoplastic polymer layer on the side opposite to the carrier substrate at least between the ridges resulting in a plurality of pits; and
(e) applying a release layer on the thermoplastic polymer layer obtained in step (d) on the side opposite to the carrier substrate to obtain the release liner,
wherein, in the release liner resulting from step (e), the thermoplastic polymer layer and the release layer include a network of ridges which result in elevations of the surface of the release liner on the side of the release layer, and the surface of the release liner on the side of the release layer is roughened at least between the ridges, such that the surface of the release liner on the side of the release layer has a plurality of pits,
wherein the average number of pits per an area of 3.4 mm2 of the plan view of the release liner surface is at least 50 as determined with a confocal 3D laser scanning microscope at a magnification of 100, wherein only pits are counted, which extend at least to a level of 10.0 microns above the deepest point of the deepest pit within said area of 3.4 mm2, and with the proviso that pits having a joint cross-sectional area in the plan view of the release liner surface at the level of 10.0 microns above the deepest point of the deepest pit are counted as a single pit,
in combination with the other limitations in claim 25.
Berens (WO 9844391A1), Roque (US PG Pub 2009/0199952), and Calhoun (US Patent 5,897,930) are the closest prior art of record. None of these references teaches or renders obvious the combination of features listed above for claim 25.
Conclusion
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/JIMMY R SMITH JR./Examiner, Art Unit 1745