DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
NEW REJECTIONS: NECESSITATED BY AMENDMENT
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 26 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 26 is broader than the other independent claims since it does not require the limitation “wherein the in-line primer coating layer is substantially free of acrylic coating material wherein the substantially free acrylic coating material comprises less than 5% of the acrylic coating material”.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 1-2, 4-5, 7-15, 17-21, 23 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over US 20230070878 A1 (Paolilli et al.) in view of US 2016/0376465 ( Wang et al.).
Re claims 1, 8 and 11, Paolilli teaches the claimed invention in Fig. 1 and 2 and associated text as shown below
PNG
media_image1.png
455
835
media_image1.png
Greyscale
(same as Applicant’s instant invention shown below Figs. 1 and 2).
PNG
media_image2.png
671
427
media_image2.png
Greyscale
(spec).
What happens when is conditional limitations furthered by process limitations in a product claim - Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
See Abstract, [10], [31]. [53], [55] and [91]. The reference is anticipatory.
Re claim 2, see [32] and [71-72].
Re claims 5, 7, 11-14 and 17, see [103] and Table 1 – crosslinker is MAH-g-PP.
Re claim 9, see [17].
Re claims 15 and 18, see [78].
Re claims 10 and 19, see exact material and index range [15].
Re claim 20, see [27].
Re claim 21, see exact material and range [28].
Re claim 23, see exact material and range [28].
Re claim 14, Paolilli teaches a coating print receptive layer of MAH-g-PO, but not that it s the primer layer [100-101]; however, it would have been obvious to one having ordinary skill in the art to have modified the primer layer and include the print receptive materials for improving adhesion as set forth in [101].
Further Re claim 1, that acrylic is 5% or less, [7] teaches acrylic has an adverse optical properties and Paolili doesn’t require it in every embodiment, thus it would have been obvious to one having ordinary skill in the art to have modified the composite and exclude acrylic to avoid adverse optical properties.
Further re claim 1 less than 5% acrylic and the claimed adhesion promoter (claim 26), Paollil is silent to.
Wang discloses in [25-26], [31] Examples 10, 14, no acrylic as it is optional and not required (0% overlaps applicant’s claimed range of claim 1) and a non-reactive adhesion promoter, the same ADVANTIS for promoting adhesion to polyolefin surfaces; thus it would have been obvious to one having ordinary skill in the art to have modified the composite and include the claimed promoter to adhere to polyolefin surfaces.In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of wt% of acrylic for it is not a necessary material to achieve adhesion to a surface taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Response to Applicant’s Arguments
Applicant’s declaration and arguments are convincing to the 102 rejection; however, the 103 in combination is still relied upon. Note further: the declaration does not overcome such rejection since the data in the declaration as well as the present specification is not commensurate in scope with the scope of claim 26 since claim 26 does not require the limitation “wherein the in-line primer coating layer is substantially free of acrylic coating material wherein the substantially free acrylic coating material comprises less than 5% of the acrylic coating material”. Further, the data is not commensurate in scope with the scope of the present claims given that none of the examples use a non-reactive adhesion promoter.
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 TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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.
TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787