DETAILED ACTION
Claim Status
Claim(s) 1-20 is/are pending.
Claim(s) 1-20 is/are rejected.
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 .
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 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.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim(s) 2-3, 5-6, 15-20 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for: (A) limited ranges of easy-adhesion layer (X) composition; and (B) limited ranges of easy-adhesion resin layer (X) formation conditions; does not reasonably provide enablement for: the entire encompassed compositional range of (A) easy-adhesion resin layer (X) as a whole; and the entire encompassed range of (B) easy-adhesion resin layer (X) formation conditions. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to which it pertains, or with which it is most nearly connected, to make the claimed laminated polyester films exhibiting:
the recited properties of claim 5:
(a) γh/γd ratio (claim 1); and
(b) average elastic modulus;
the recited properties of claim 6:
(a) γh/γd ratio (claim 1); and
(c) area of domain;
-------------------------------------------------
the recited properties of claim 2:
(d) advancing angle θa;
(e) retreating angle θr;
the recited properties of claim 3:
(d) advancing angle θa (claim 2);
(e) retreating angle θr (claim 2); and
(a) γh/γd ratio;
the recited properties of claim 15:
(d) advancing angle θa (claim 2);
(e) retreating angle θr (claim 2); and
(f) dispersive force γd;
the recited properties of claim 16:
(d) advancing angle θa (claim 2);
(e) retreating angle θr (claim 2); and
(c) area of domain;
over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
PNG
media_image1.png
18
19
media_image1.png
Greyscale
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(B) The nature of the invention;
(C) The state of the prior art;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(D) The level of one of ordinary skill;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(E) The level of predictability in the art;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(F) The amount of direction provided by the inventor;
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(G) The existence of working examples; and
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wands factor (A), the claims are relatively broad -- for example, but not limited to:
• Claims 2-3, 5-6, 15-16, 18-20 contain no limitations on the composition of easy-adhesion resin layer (X) as a whole;
• Claim 17 contains no requirements on the minimum amount(s) of polyester resin, oxazoline compound and/or carbodiimide compound in the composition of easy-adhesion resin layer (X) as a whole.
• The claims do not contain any restrictions on the type(s) and amount(s) of other components (e.g., other polymeric components such as non-polyester or non-acrylic resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc. -- in particular, other components which can significantly alter the hydrogen bonding and dispersive forces of a resin layer) which can be present in easy-adhesion resin layer (X) as a whole.
• The majority of the claims do not contain any restrictions on the formation conditions for easy-adhesion resin layer (X).
With respect to Wands factor (B), Applicant states that prior art films do not exhibit sufficient adhesion and also experience problems with layer uniformity and lack of defects.
With respect to Wands factors (C)-(E), the prior art does not specifically disclose or teach the production of polyester-containing films which exhibit the recited combinations of above physical properties (a)-(f) (claims 2-3, 5-6, 15-16).
With respect to Wands factors (F)-(G), the disclosure as originally filed only discloses very limited ranges of (A) easy-adhesion resin layer (X) compositions; which result in films which exhibit the recited combinations of above physical properties (a)-(f) (claims 2-3, 5-6, 15-16), wherein easy-adhesion resin layer (X) is formed under specific processing conditions.
With respect to Wands factor (H), the working Examples in the Specification provide evidence that: (a) the composition; and (b) the formation conditions; of the easy-adhesion layer (X), can materially (and possibly unpredictably) affect the recited physical properties (a)-(f) (claims 2-3, 5-6, 15-16). Therefore, it is the Examiner’s position that undue experimentation would be required to produce the claimed laminated polyester films exhibiting the recited combinations of above physical properties (a)-(f) (claims 2-3, 5-6, 15-16) commensurate to the full scope with the present claims -- for example, but not limited to:
----------------------------------------------
• the composition of easy-adhesion resin layer (X) as a whole -- The disclosure as originally filed only discloses producing laminated polyester films which exhibit the recited combinations of above physical properties (a)-(f) (claims 2-3, 5-6, 15-16), using easy-adhesion resin layer (X) compositions which only contain:
(i) 100 parts of a very limited range of Binder resin (A) (i.e., a single type of polyester resin or a single type of acrylic resin);
(ii) very limited type(s) and amount(s) of Reactive compound(s) (B), wherein the Reactive compound(s) (B) are:
• 30 parts of a single type of carbodiimide compound; and/or
• 30 parts of a single type of oxazoline compound;
• optionally 5-10 parts of a single type of melamine compound.
However, claims 2-3, 5-6, 15-16, 18-20 contain no limitations with respect to the composition of the easy-adhesion resin layer (X) as a whole, while claim 17 do not contain any requirements on the minimum amount(s) of polyester resin, oxazoline compound and/or carbodiimide compound in the composition of easy-adhesion resin layer (X) as a whole.
The Examiner has reason to believe at least one or more of the recited physical properties (a)-(f) (claims 2-3, 5-6, 15-16) of easy-adhesion resin layer (X) would be materially affected by the type of Binder resin (A) and the Reactive compound(s) (B) used, as evidenced by the working and comparative Examples in the Specification (e.g., Comparative Example 1 which utilizes an additional Binder resin (A) and an additional Reactive compounds (B) fails to meet at least one or more of the recited physical properties (a)-(f) (claims 2-3, 5-6, 15-16); Comparative Example 2 which utilizes different Binder resins (A) and no Reactive compounds (B) fails to meet at least one or more of the recited physical properties (a)-(f) (claims 2-3, 5-6, 15-16); Comparative Example 4 which utilizes only melamine compound as Reactive compound (B) fails to meet at least one or more of the recited physical properties (a)-(f) (claims 2-3, 5-6, 15-16); etc.).
The Examiner also has reason to believe at least one or more of the recited physical properties (a)-(f) (claims 2-3, 5-6, 15-16) of easy-adhesion resin layer (X) would be materially affected by presence of non-trivial amounts of other components in addition to or in place of the Binder resin (A) and Reactive compound(s) (B) used in the working Examples (e.g., other polymers; other non-polymeric compounds or additives; etc.) in easy-adhesion resin layer (X), particularly in view of Comparative Examples 1-2, 4 in the Specification.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce a laminated polyester film which exhibits the recited combinations of above physical properties (a)-(f) (claims 2-3, 5-6, 15-16), without undue experimentation using easy-adhesion resin layer (X) compositions which are materially different from those utilized in the working Examples in the Specification -- for example:
(1) using urethane-based resin compositions; epoxy-based resin compositions; polyolefin-based resin compositions; etc.;
and/or
(2) containing non-trivial amounts of one or more other component(s) (e.g., other polymeric components such as non-polyester or non-acrylic resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc. -- in particular, other components which can significantly alter the hydrogen bonding and/or dispersive forces of a resin layer);
-- particularly in view of the working and comparative Examples in the specification.
----------------------------------------------
• the formation conditions of easy-adhesion resin layer (X) -- The disclosure as originally filed only discloses producing laminated polyester films which exhibit the recited combinations of above physical properties (a)-(f) (claims 2-3, 5-6, 15-16), using a very limited range of easy-adhesion resin layer (X) compositions which are subjected to a limited range of easy-adhesion resin layer (X) formation conditions (e.g., maximum processing temperatures between 180-240 °C).
However, Comparative Example 3 provides evidence that changes in the easy-adhesion resin layer (X) formation conditions (i.e., drying conditions or maximum processing temperatures) causes the easy-adhesion resin layer (X) to fail to satisfy at least one or more of physical properties (a)-(f) (claims 2-3, 5-6, 15-16).
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce a laminated polyester film which exhibits the recited combinations of above physical properties (a)-(f) (claims 2-3, 5-6, 15-16), without undue experimentation using easy-adhesion resin layer (X) formation conditions which are different from those utilized in the working Examples in the Specification, particularly in view of Comparative Example 3 in the specification.
----------------------------------------------
In view of the above, it is the Examiner’s position that the disclosure as originally filed does not enable one of ordinary skill in the art to make laminated polyester film which exhibits the recited combinations of above physical properties (a)-(f) (claims 2-3, 5-6, 15-16), over the entire scope of the present claims without undue experimentation, particularly in view of the working Examples and Comparative Examples in the specification which indicate that the physical properties (a)-(f) (claims 2-3, 5-6, 15-16) can be materially -- perhaps unpredictably -- affected by: (a) differences in composition in the easy-adhesion resin layer (X) as a whole; and (b) differences in the formation conditions of the easy-adhesion resin layer (X).
Claim Rejections - 35 USC § 103 (AIA )
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 7-12, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2017-149005 (OTA-JP ‘005).
OTA-JP ‘005 discloses a laminated polyester film comprising:
• a polyester film substrate;
• a resin layer (X) which provides adhesion (corresponding to the recited “easy-adhesion resin layer (X)”) to PVA (i.e., polyvinyl alcohol)-based materials, wherein:
(i) examples of resin layer (X) exhibit hydrogen bonding force γh values of 6-7 mN/m and dispersive force γd values of 28-29 mN/m, resulting in γh/γd ratio of 0.24 (Inventive Example 5);
(ii) the resin layer (X) preferably comprises:
• an oxazoline-containing acrylic resin (A);
• one or more additives (e.g., polyester resins, carbodiimide compounds, etc.);
(iii) the resin layer (X) is formed by applying a curable coating composition for resin layer (X) to a polyester film, following by subjecting the coated polyester film to 150-250 °C to produce a cured resin layer (X):
• a PVA-containing coating layer (e.g., formed from a water-based PVA-containing coating composition; etc.) (corresponding to the recited “processed layer (Y)”);
The laminated polyester film can exhibit low haze values of less than 1%. (entire document, e.g., paragraph 0028, 0030, 0041, 0046, 0059-0061, 0077, etc. ; Table 2 ; etc.)
Regarding claims 1, 7-8, 11, 14, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the laminated polyester films of OTA-JP ‘005 with a resin layer (X) (corresponding to the recited “easy-adhesion resin layer (X)”) with a γh/γd ratio of 0.250 or less as substrates for PVA-containing functional coatings in order to improve adhesion between the PVA-containing functional coating and the polyester film substrate.
Regarding claim 9, one of ordinary skill in the art would have selected the average surface roughness Ra or the ten-point average roughness Rz of at least one surface of the laminated polyester film of OTA-JP ‘005 in order to optimize film-handing properties for specific applications, while also avoiding excessive roughness which might cause defects in subsequently applied layers.
Regarding claim 10, one of ordinary skill in the art would have utilized recycled polyester materials and/or biomass-based polyester materials to form the polyester film substrate of OTA-JP ‘005 whenever feasible in order to reduce landfill waste and/or to minimize usage of non-renewable petroleum-based feedstocks.
Regarding claim 12, since the PVA-containing coating layer (corresponding to the recited “processed layer (Y)”) in the laminated polyester film of OTA-JP ‘005 can be formed from a water-based PVA-containing coating composition, the PVA-containing coating layer (corresponding to the recited “processed layer (Y)”) in the laminated polyester film of OTA-JP ‘005 can retain a measurable amount of water (as represented by the recited “a water content ratio of 50 wt ppm or more”) during and/or after: (i) the application of the water-based coating composition forming the PVA-coating coating layer; (ii) the partial or complete drying of the water-based coating composition forming the PVA-coating coating layer; and/or (iii) the curing of the dried PVA-coating coating layer.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2017-149005 (OTA-JP ‘005).
as applied to claims 1, 7-12, 14 above,
and further in view of ISHIKAWA ET AL (US 6,815,021).
ISHIKAWA ET AL ‘021 discloses that it is well known in the art to form printed ink-bearing layers on polyester film substrates, wherein the printed ink-bearing layer is formed by applying a water-based polyvinyl alcohol (PVA)-based ink-receiving layer exhibiting adhesion to inks, wherein the ink-receiving layer optionally contains a dispersing agent (corresponding to the recited “dispersant (D)”), wherein the ink-receiving layer is subsequently printed with ink. (line 37-40, col. 2; line 25-44, col. 3; line 43-65, col. 5; line 1-15, col. 15; etc.)
Regarding claims 11-13, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the laminated polyester films of OTA-JP ‘005 as substrates for known PVA-containing ink-receiving layers coatings containing dispersing agents (corresponding to the recited “dispersant (D)”) (as disclosed in ISHIKAWA ET AL ‘021) in order to produce printed laminated polyester films with printing ink-containing image-receiving layers with excellent delamination resistance.
Claim(s) 1, 4, 7, 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2001-191673 (NISHIMURA-JP ‘673).
NISHIMURA-JP ‘673 discloses a coated polyester film comprising:
• a polyester film substrate;
• a urethane copolymer resin layer which provides adhesion (corresponding to the recited “easy-adhesion resin layer (X)”) to adhesives (e.g., an acrylic-based emulsion adhesive), wherein:
(i) the urethane copolymer resin layer has:
• hydrogen bonding force γsh of 7 mN/m < ysh < 9 mN/m;
• dispersion force γsd values of 42 ≥ γsd ≥ 36 mN/m,
wherein examples of the urethane copolymer resin layer exhibit γsh/γsd ratios of 0.18-0.20 (Inventive Examples 1-4);
(ii) the urethane copolymer resin layer has an average surface roughness Ra of 0.01-0.10 microns (10-100 nm);
• an adhesive layer (e.g., an acrylic-based emulsion-type adhesive; etc.) (corresponding to the recited “processed layer (Y)”);
(entire document, e.g., paragraph 0005, 0015, 0017, 0023, 0026, 0031, 0036, etc.; Table 1; etc.)
Regarding claims 1, 4, 9, 11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the coated polyester films of NISHIMURA-JP ‘673 with a urethane copolymer resin layer (corresponding to the recited “easy-adhesion resin layer (X)”) with a γh/γd ratio of less than 0.2 as substrates for mounting adhesive coatings in order to produce photograph-mounting articles with excellent intercomponent adhesion.
Regarding claim 7, one of ordinary skill in the art would have utilized high transparency materials for the polyester film substrate, the urethane copolymer resin layer, and the adhesive layer in NISHIMURA-JP ‘673 in order to produce highly transparent (as represented by a low haze of 2% or less) photograph-mounting articles.
Regarding claim 10, one of ordinary skill in the art would have utilized recycled polyester materials and/or biomass-based polyester materials to form the polyester film substrate of NISHIMURA-JP ‘673 whenever feasible in order to reduce landfill waste and/or to minimize usage of non-renewable petroleum-based feedstocks.
Regarding claim 12, since: (i) the adhesive layer in NISHIMURA-JP ‘673 can be an acrylic-based emulsion-type adhesive; and (ii) emulsion-type compositions typical contain water; the adhesive layer (corresponding to the recited “processed layer (Y)”) in the coated films in NISHIMURA-JP ‘673 can retain a measurable amount of water (as represented by the recited “a water content ratio of 50 wt ppm or more”) during and/or after: (i) the application of a water-containing adhesive composition forming the adhesive layer; and/or (ii) the partial or complete drying of the water-containing adhesive composition forming the adhesive layer.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2001-191673 (NISHIMURA-JP ‘673),
as applied to claims 1, 4, 7, 9-12 above,
and further in view of AMANO ET AL (US 2014/0342152).
AMANO ET AL ‘152 discloses that it is well known in the art to incorporate known additives such as dispersing agents (corresponding to the recited “dispersant (D)”) in water-dispersible removable acrylic-based adhesive composition suitable for application to polyester films, wherein the polyester films can be surface-treated to improve adhesion. (paragraph 0008, 0016, 0135, 0149-0151, 0165-0166, etc.)
Regarding claims 11-13, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the coated polyester films of NISHIMURA-JP ‘673 as substrates for known water-based removable acrylic-based adhesive compositions containing dispersing agents (corresponding to the recited “dispersant (D)”) (as disclosed in AMANO ET AL ‘152) in order to produce cleanly removable photograph-mounting articles.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2017-149005 (OTA-JP ‘005), as applied to claim 1 above,
or
• JP 2001-191673 (NISHIMURA-JP ‘673), as applied to claim 1 above,
and further in view of SAKELLARIDES ET AL (US 2013/0011631).
SAKELLARIDES ET AL ‘631 disclose that it is well known in the art to utilized bio-based polyester resins (corresponding to the recited “polyester base material contains at least one of materials derived from biomass”) to form polyester film substrates suitable for further processing (e.g., lamination, coating, adhesion-promoting treatment, etc.) in order to minimize usage of less environmentally friendly petroleum-based polyester resins. (paragraph 0002, 0011-0012, 0016, 0020, 0038-0045, etc.)
Regarding claim 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known biomass-based polyester materials (as disclosed in SAKELLARIDES ET AL ‘631) to form the polyester film substrate of OTA-JP ‘005 or NISHIMURA-JP ‘673 whenever feasible in order to reduce landfill waste and/or to minimize usage of non-renewable petroleum-based feedstocks.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
TAKAHASHI ET AL (US 2009/0311448) and IWATA (US 2002/0005886) disclose printable layers containing dispersing agents.
JP 2012-011658 and JP 2005-135586 and JP 06-255056 and JP 2002-110449 disclose laminated polyester films with resin layers with specified dispersive force and/or hydrogen bonding force values.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
February 7, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787