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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on 11/20/2025 is acknowledged.
Claims 15-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/20/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 7 is objected to because of the following informalities:
In claim 7, the phrase “at least one oxide layer, at least one mask layer” is objected to grammatically as this is the end of the list. The objection can be overcome by changing the phrase to “at least one oxide layer, and at least one mask layer” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 2, 4, 5, 8, 11, and 14 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.
In claim 2, the phrase that “at least 40% to 100% of the topcoat comprises a binder” renders the claim indefinite as it is unclear how one determines when the binder is present at 40 to 100%, e.g. area, volume, mass or some other measurement method. For purposes of examination if the topcoat is made from a mixed composition including a binder, the binder will be considered present in 100% of the topcoat.
In claims 4, 5 and 8, the phrase “the dried layer” lacks antecedent basis in each of the claims as it is unclear if these are talking about the same dried layer or different layers. The rejection can be overcome by deleting “of the dried layer” in each of the claims, which is how the claims will be interpreted.
In claim 5, the phrase “has an application weight” from 0.001 microns to 0.080 microns renders the claim indefinite as a thickness is not an application weight. The rejection can be overcome by changing the phrase to “has a layer thickness” which is how the claim will be interpreted.
In claim 11, the phrase that the main constituent in the carrier film “is more than 97%” renders the claim indefinite as it is unclear how one determines when the main constituent is present at 97%, e.g. volume, mass or some other measurement method and what is this amount based upon, i.e. relative to what.
In claim 14, the limitations of “the smallest detachment force within or between two or more layers of the transfer ply” renders the claim indefinite. The term “smallest” is comparative but if only two layers are present in the transfer ply, then there are not at least two detachment forces to have one be considered the “smallest”. Additionally, it is unclear if the claim is requiring two or more layers of the transfer ply or is making the situation conditional when those layers are present. For purposes of examination, the Examiner will be treating this as conditional, when two or more layers are present.
Claims 3, 6 and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In each of claims 3, 6 and 12, these claims contain limitations that read on all possible scenarios for the topcoat, detachment layer and carrier film, respectively; therefore, this means claims 3, 6 and 12 do not further limit the claims from which depend.
As examples, the topcoat of claim 3 can be transparent, semi-transparent or opaque, which reads on all possible topcoat scenarios, the detachment layer of claim 6 can be transparent, translucent or opaque, which reads on all possible topcoat scenarios, and the carrier film of claim 12 can be colorless or colored, which reads on all possible topcoat scenarios.
Claim Rejections - 35 USC § 102
Claims 1-4, 6, 7 and 10-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishii et al. (WO 2020/166474), wherein AU 2020223598 is the Australian national stage application and will used as a translation.
With regard to claims 1, 3, 4, 6, 10, 12 and 14, the embodiment (1) of a release film having a decorative layer thereon that is alkali-soluble reads on applicants’ transfer film [0016]. The decorative layer reads on applicants’ transfer ply and alkali-soluble topcoat and the release film can be a polyethylene terephthalate film, which reads on applicants’ carrier film made 100% of PET as a main constituent, that has been surface-treated with a release agent, which reads on applicants’ detachment layer [0053] and [0081]. The release agent will necessarily be transparent, translucent or opaque as that is all possible options. The decorative layer can have dyes, which reads on it being a dyed layer, and can be 0.1 to 15 microns in thickness and in one example is 2 microns, which teaches the topcoat thickness of claim 4 [0039], [0040] and [0081]. The release film can have a thickness of 20 to 100 microns, which reads on the carrier film thickness claimed, and the release film will necessarily be colored or colorless as that is all possible options [0054]. Given the fact that this embodiment only has one layer in the transfer ply, this will teach the embodiment of claim 14 when there are not multiple layers in the transfer ply.
With regard to claim 2, Ishii et al. also teach that in the embodiment where the decorative layer is dissolved by an alkaline solution, the decorative layer has a resin having an acidic group having an acid number of 150 mg KOH/g or more [0043]-[0045]. Since the whole decorative layer is made from the same mixture of components, then the entire volume of the decorative layer will comprise the resin having an acidic group; hence, this reads on 100% of the topcoat comprising a binder. Given the fact that the structure and materials of the prior are the same as claimed and preferentially disclosed, the decorative ink made form a resin compound having an acidic group will inherently be at least 50% soluble in an alkaline washing liquid with a pH greater than 8.5.
With regard to claim 7, there can be another embodiment (3) of a release film having a surface protective layer, a decorative layer and an adhesive layer thereon [0016]. In this embodiment, the release film, which reads on applicants’ carrier film, has been surface-treated with a release agent, which reads on applicants’ detachment layer [0053]. The surface protective layer is alkali-soluble and reads on applicants’ alkali-soluble topcoat, and the adhesive layer reads on applicants’ at least one primer layer or adhesion-promoter layer [0016].
With regard to claim 13, the release agent can be silicone-based compound [0053]. Given the fact that the structure and materials of the prior are the same as claimed and preferentially disclosed, the release agent will inherently have the detachment force claimed.
Claim Rejections - 35 USC § 103
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. (WO 2020/166474).
Ishii et al. teach all of the limitations of claim 7 above. They also teach in an example that the adhesive layer is coated at 2 g/m2 [0081]; however, they do not specifically teach the thickness of the adhesive layer.
It is known that at a density of 1 g/cm3 a coat weight of 1 g/m2 would have a thickness of 1 micron. It would have been obvious to one having ordinary skill in the art to have made the thickness of the adhesive layer any amount, including from 0.1 to 5 microns or 0.1 to 0.5 microns as claimed, such that the layer had the proper amount of adhesiveness, while not being so thick as to waste materials.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. (WO 2020/166474) in view of Ortmann (WO 2021/213856) of which US 2023/0202151 is the US national stage equivalent and will be used as a translation.
Ishii et al. teach all of the limitations of claim 1 above; however, they do not specifically teach the thickness of the release agent composition on the release film.
Ortmann teaches a detachment layer for a transfer product, wherein the detachment layer reads on the release agent layer of Ishii et al. [0196] and [0197]. The detachment layer can have a thickness of from 0.05 to 0.3 microns, which overlaps with the thickness claimed [0199].
Since Ishii et al. and Ortmann are both drawn to transfer films for use in stamping processes on containers, it would have been obvious to one having ordinary skill in the art to have made the thickness of the release agent layer of Ishii et al. the same as that taught in Ortmann, including making the thickness from 0.05 to 0.08 microns as claimed as it would be prima facie obvious to make the thickness any amount within the overlapping ranges of the prior art.
It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm (variable one work-at-home day).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785