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 § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8, 10-13, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Weigel et al. (US 2012/0003448).
Regarding Claims 1 and 11, Weigel discloses an assembly comprising first polymeric film substrate 240, barrier layer 226 (corresponding to claimed layer (B)), barrier (second polymer) layer 228 (corresponding to claimed (C)), and pressure sensitive adhesive (PSA) layer 210 (corresponding to claimed layer (D)) (para 0019, 0063). The barrier layer 226 includes inorganic films deposited by atomic layer deposition and is transparent (para 0062). The barrier layer 228 is radiation curable (para 0074). The PSA is UV curable (para 0095). The assembly has at least 98% transmissive to visible light (para 0015) (i.e. assembly is transparent). Given that the assembly is transparent, each layer in the assembly would also necessarily be transparent.
In light of the overlap between the claimed film and that disclosed by Weigel, it would have been obvious to one of ordinary skill in the art to produce a film that is both disclosed by Weigel and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
While Weigel discloses the PSA (layer (D)) is UV curable (will be UV cured in the final product) there is no disclosure that the layer is thermally cured.
However, although Weigel does not disclose thermally curing, 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 Weigel meets the requirements of the claimed film, Weigel clearly meet the requirements of present claims.
Regarding Claim 2, Weigel discloses all the limitations of the present invention according to Claim 1 above. Weigel further discloses the barrier layer 226 has a thickness of 3-150 nm (para 0071).
Regarding Claims 3-4, Weigel discloses all the limitations of the present invention according to Claim 1 above. Weigel further discloses that tie layers can be placed between any of the polymer layers or inorganic barrier layers in order to improve smoothness (i.e. functions as a planarization layer), where the tie layer has a thickness of 50 nm or more (para 0073). Therefore, it would have been obvious to include a tie layer between barrier layer 226 and barrier layer 228 in order to improve smoothness and thereby arrive at the present invention.
Regarding Claim 5, Weigel discloses all the limitations of the present invention according to Claim 1 above. Weigel further discloses the barrier film 226 include metal oxides, metal nitrides, and metal oxynitrides (para 0070).
Regarding Claim 6, Weigel discloses all the limitations of the present invention according to Claim 1 above. Weigel further discloses that there can be polymer barrier layers in between inorganic barrier layers (para 0072) (i.e. BiBoBi).
Regarding Claim 7, Weigel discloses all the limitations of the present invention according to Claim 1 above. Weigel further discloses the layer 228 comprises radiation curable acrylates (para 0074), such as urethane acrylate and isobornyl acrylate (para 0067). According to the present specification, urethane acrylate is a suitable radiation-curable oligomeric acrylate-functional species as claimed (pg 13) and isobornyl acrylate is a suitable radiation-curable acrylate monomer (pg 15).
Regarding claim 8, Weigel discloses all the limitations of the present invention according to Claim 1 above. Given that Weigel discloses barrier layer 226 corresponding to claimed layer (B) and barrier layer 228 corresponding to claimed layer (C), the assembly has the structure [(B)-(C)]a where a=1.
Regrading Claim 10, Weigel discloses all the limitations of the present invention according to Claim 1 above. Weigel further discloses the PSA (layer (D)) comprises light stabilizers (para 0109).
Regarding Claim 12, Weigel discloses all the limitations of the present invention according to Claim 11 above. Weigel further discloses the substrate has a thickness of 0.05-1 mm, i.e. 50-1000 microns (para 0027), the barrier layer 226 has thickness of 3-150 nm, i.e. 0.003-0.15 micron (para 0071), the polymer barrier layer has thickness of, for example 725 nm, i.e. 0.725 microns (para 0175), and the PSA layer has thickness of 0.005-0.2 mm, i.e. 5-200 microns (para 0110). Therefore, it is calculated that the barrier assembly has a thickness of 55.73 (50+0.003+0.725+5) - 1200.87 (1000+0.15+0.725+200) microns
Regarding Claim 13, Weigel discloses all the limitations of the present invention according to Claim 11 above. Weigel further discloses the substrate includes polyethylene terephthalate (para 0025).
Regarding Claim 19, Weigel discloses all the limitations of the present invention according to Claim 1 above. Weigel further discloses the PSA layer has a thickness from 0.005 to 0.2 mm (5 to 200 microns) (para 0110).
Claims 9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Weigel as applied to claim 1 above, and further in view of Nakajima et al. (JP 2003/268052) and in view of the evidence of Netzsch Polymers (“PUR: Polyurethane”) and Millipore Sigma (“Thermal Transitions of Homopolymers: Glass Transition and Melting Point).
Regarding Claims 9 and 18, Weigel discloses all the limitations of the present invention according to Claim 1 above. Weigel does not disclose the UV curable pressure sensitive adhesive (PSA) layer 110 (corresponding to claimed layer (D)) comprises the materials as claimed in Claim 9 or having Tg as claimed in Claim 18.
Nakajima discloses a pressure sensitive adhesive composition that is active energy ray (i.e. ultraviolet) reactive resin composition (paras 0001, 0007) comprising copolymer polyester having Tg of up to 20 °C (para 0040), monofunctional (meth)acrylate monomer (para 0010), polyisocyanate curing agent (crosslinker) (para 0017), and polyurethane (para 0042). The monofunctional monomers include (meth)acrylates including those containing hydroxyl group such as hydroxyethyl methacrylate (para 0043) which as evidenced by Millipore Sigma has a glass transition of 57 °C (page 3, 2nd column). Upon curing the adhesive, the (meth)acylate monomers would necessarily form a hydroxyl-group containing poly(meth)acrylate. The adhesive has both adhesive strength and excellent adhesion (para 0009).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Weigel to incorporate the teaching of Nakajima and produce the assembly of Weigel using the adhesive of Nakajima as PSA layer 110. Doing so would provide adhesive strength and excellent adhesion.
Since the copolymer has Tg of up to 20 °C, the monofunctional monomer has Tg of 57 C, and polyurethane has Tg of 10 to 180 °C, according to the evidence of Netzsch Polymers, the PSA of Nakajima would have a Tg that necessarily overlaps that claimed.
Response to Arguments
In light of Applicant’s amendment filed 07/21/2025, the claim objection of record is withdrawn.
Applicant's arguments filed 07/21/2025 have been fully considered but they are not persuasive.
Applicant argues that Weigel discloses a pressure sensitive adhesive (PSA) that has a the properties of (1) aggressive and permanent tack, (2) adherence with no more than finger pressure, (3) sufficient ability to hold onto an adherend, and (4) sufficient cohesive strength to be cleanly removable from the adherend where the PSA oxygen and moisture barrier while in contrast, the claimed thermally-cured coating layers (D) are characterized by an excellent adhesion to the underneath transparent, radiation-cured (meth)acrylate layer (C) both before and after prolongated aging at elevated and lower temperature and under high humidity conditions, have a glass transition temperature of preferably more than 10° C but preferably less than 100° C, and have a final thickness in the range from 10 um to 100 um. Therefore, the thermally-cured coating layers (D) differ in properties and functionality compared to the PSA of Weigel.
However, with the exception of claim 9 and claim 18 (which are met using secondary references as set forth above), there is no requirement in the present claims regarding the components or glass transition of the thermally-cured coatings and therefore, the coating is not limited to specific properties as argued by applicant. Claims 1-8, 10-13, and 19 only broadly require a transparent thermally-cured coating. Weigel discloses a transparent UV-cured coating (adhesive) with thickness that overlaps that presently claimed. Although Weigel does not disclose thermally curing, 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. Applicant has not established a difference between the claimed product (thermally-curable coating) and the prior art.
Applicant argues that the thermally-cured coating layers (D) are not merely defined by a process step of thermal curing, but rather, they are defined by a property of being thermally curable. This term is defined in the present application as not involving radiation curing, but instead involving the reaction of a functional group of a binder with a functional group of a crosslinking agent, wherein both types of groups are reactive towards each other. This functionality is emphasized, polyurethane layers being formed as layer (D) by reaction of OH- functional binders with NCO functional crosslinking agents. Also, as described in the present application, layer (D) of the present application can constitute the outer coating and should for this reason not be sticky.
However, the present claims are drawn to a final product, i.e. thermally-cured coating, and the examiner’s position remains that the UV-cured coating of Weigel results in the same product as that claimed, absent evidence to the contrary. The UV-cured coating of Weigel also includes a crosslinking agent (para 0098). With respect to claim 9, Nakajima is used to teach a composition comprising hydroxy-functional (meth)acrylates, polyisocyanate, and polyurethane identical to that claimed which would necessarily result in the same product as claimed, absent evidence to the contrary. Additionally, nothing in the present claims requires layer (D) to be the outermost layer.
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 BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787