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 § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 3, 4 and 8 are rejected under 35 U.S.C. 112(a), because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims. Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Claim 1 recites the support layer contains an additive A other than cellulose acetate wherein the additive A has a molecular weight of 500 or more or an average molecular weight of 500 or more if more than one additive A is present but the specification provides enabling disclosure only for two types of additive A materials, i.e., saccharides and polyesters, and no other additive A materials are envisaged. The breadth of present claim 1 wherein any additive A with a molecular weight of 500 or more is not adequately enabled in the present application. Claim 1 thus encompasses a scope that constitutes an undue amount of experimentation in terms of the suitable additive A materials that would be suitable in the present invention. If the scope of claim 1 was amended to recite a Markush group of claim 2, this rejection would be overcome.
Upon applying the Wands factors to claim 1, undue experimentation would be required:
(A) The breadth of the claims. The claims are broad in terms of the suitable materials for additive A having a molecular weight of 500 or more. It is noted that the number of possible additives having a molecular weight of 500 or more is virtually limitless.
(B) The nature of the invention; (C) The state of the prior art; and (D) The level of one of ordinary skill. The suitable additive A materials would not be readily arrived at by one having ordinary skill in the art without significant guidance.
(E) The level of predictability in the art. To discover the full scope of the claimed invention with the limited guidance provided in the specification would require testing various types and suitable additive A materials without any clear or apparent predictability.
(F) The amount of direction provided by the inventor and (G) The existence of working examples. The disclosure in the specification is sufficient for certain types additive A materials, i.e., those set forth in the Markush group of claim 2, without any corresponding direction provided for selecting other suitable materials with the broader scope of any material having a molecular weight of 500 or more.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Based on the broadly claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable.
Additionally, with respect to claim 3, the above issues noted for additive A are additionally present for additive B for the same reasons as detailed above. The present application is only enabled for additive B materials selected from the materials listed in claims 5-7.
Claims 4 and 8 are included in this rejection because they dependent upon claim 3 and fail to resolve the above scope of enablement issue.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-8 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 1, lines 6 and 8, additive A is stated to have a molecular weight of 500 or more. The term “molecular weight” is unclear as to scope because it is not clear whether the molecular weight value is number-average molecular weight, weight-average molecular weight, a z-average molecular weight.
Claims 2-8 are rejected as indefinite due to their dependence upon a rejected claim 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Sakurazawa et al. (US Pub 2009/0286016).
Regarding claims 1 and 2, US ‘016 discloses a cover film for a polarizing plate comprising a cellulose acetate support and a polymer coating layer (Example 4, [0204]-[0209]). The cellulose acetate support comprises the following additives: 12 parts by mass of a polycondensate ester additive (P-34, molecular weight 800), 0.2 parts by mass of a first UV absorbent (UV-1, molecular weight 318), 0.4 parts by mass of a second UV absorbent (UV-2, molecular weight 351), 0.4 parts by mass of a third UV absorbent (UV-3, molecular weight 324), and 2 parts by mass of compound C (molecular weight 384) which results in an average molecular weight of 713 (Example 4, Sample 123).
Regarding claims 3 and 4, US ‘016 discloses in Example 4 that the cellulose acetate support is coated with a solution comprising a modified polyvinyl alcohol and glutaraldehyde (molecular weight 100.1), i.e., additive B. Example B satisfies Expression (X) of claim 4, since 713-100.1 ≥ 120.
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.
Claims 3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sakurazawa et al. (US Pub 2009/0286016) in view of Parizat et al. (US Pub 2018/0194913).
Regarding claims 3 and 5-7, US ‘016 does not disclose that the polymer layer contains an additive selected from the Markush groups of claims 5 or 6 or is a phthalic acid ester. US ‘913 discloses a similar invention wherein a cellulose acetate support is coated with a polymer layer includes a phthalic acid ester additive (claim 19, [0050]). US ‘913 discloses that such coating layers provide for improved long-term adhesion to surfaces of various substrates, such as glass, wood, ceramic, metal and plastic ([0001], [0019]). It would have been obvious to one of ordinary skill in the art to have prepared the cover film of US ‘016, wherein the polymer layer includes a phthalic additive, as taught in US ‘913, motivated by the desired to obtain a cover film having enhanced long-term adhesion properties.
Regarding claim 8, US ‘016 as modified by US ‘913 does not disclose the claimed Expression (Y) related to the ClogP relationship between additive A and additive B. However, since US ‘016 as modified by US ‘913 uses the same additives, i.e., polyester with a molecular weight of 500 or more (US ‘016, P-34) and a phthalic acid ester (US ‘913), the resulting cover film would satisfy claimed Expression (Y). Moreover, US ‘913 recognizes that the cellulose acetate support absorbs water which leads to deformation [0011]]; thus, the polymer coating layer used in US ‘913 provides a protective function to the cellulose acetate support [0001]. Accordingly, it would have been obvious to one of ordinary skill in the art to have used a coating layer having materials having a greater ClogP than the materials in the cellulose acetate support.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub 2014/0199502 and US Pub 2016/0187537 are cited to show the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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