DETAILED ACTION
Claim Status
Claim(s) 1-23 is/are pending.
Claim(s) 1-23 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) 1-23 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 1:
(a) γh/γd ratio (claim 1);
the recited properties of claim 4:
(a) γh/γd ratio (claim 1);
(f) dispersive force γd;
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 23:
(a) γh/γd ratio (claim 1); and
(g) narrowed γh/γd ratio (claim 23);
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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]
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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;
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(B) The nature of the invention;
(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
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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, 15-16, 18-20 contain no limitations on the composition of easy-adhesion resin layer (X) as a whole;
• Claims 1, 4-14, 23 contain minimal limitations on the composition of easy-adhesion resin layer (X) as a whole;
• Claims 8, 17 contain 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.
• Claims 1-20, 23 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.
• Claims 1-13, 15-19, 21-23 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)-(g) (claims 1-6, 15-16, 23).
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)-(g) (claims 1-6, 15-16, 23), wherein easy-adhesion resin layer (X) is formed under specific processing (e.g., maximum processing temperature) 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)-(g) (claims 1-6, 15-16, 23). 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)-(g) (claims 1-6, 15-16, 23) commensurate to the full scope with the present claims -- for example, but not limited to:
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• 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)-(g) (claims 1-6, 15-16, 23), 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, 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.
Similarly, claims 1, 4-14, 23 contain minimal limitations with respect to the composition of the easy-adhesion resin layer (X) as a whole, as long as any non-zero amount of a reactive carbodiimide compound is present.
Claim 17 contain no limitations 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, as long as at least two of the recited compounds are present in any non-zero amount.
Claims 21-22 utilize the phrase “derived from” with respect to the composition of the sulfonated copolyester and the acrylic resin. In the absence of any explicit definition or language excluding the presence of other components, the phrase “derived from” is deemed equivalent to the open term “comprising”, which permits the presence of any types of other derived structural units as long as the recited derived structural units are present in any non-zero amount. For example, the required derived structural units can constitute a low (e.g., less than 50 mol%) or even a very low (e.g., less than 10 mol%) of the sulfonated polyester or acrylic resin.
The Examiner has reason to believe at least one or more of the recited physical properties (a)-(g) (claims 1-6, 15-16, 23) 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 -- for example, but not limited to:
• 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)-(g) (claims 1-6, 15-16, 23);
• 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)-(g) (claims 1-6, 15-16, 23);
• 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)-(g) (claims 1-6, 15-16, 23);
• Inventive Example 5 which contains an additional 5 parts melamine (compared to Inventive Example 2) fails to meet at recited physical property (g) (claim 23);
• Inventive Example 13 which contains larger amounts and/or larger sizes of silica particles (compared to Inventive Example 1, 10, 12) fails to meet recited physical property (g) (claim 23); etc.
The Examiner also has reason to believe at least one or more of the recited physical properties (a)-(g) (claims 1-6, 15-16, 23) 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)-(g) (claims 1-6, 15-16, 23), 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.
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• 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)-(g) (claims 1-6, 15-16, 23), 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, both the Inventive and Comparative Examples in the specification provide objective evidence that changes in the easy-adhesion resin layer (X) formation conditions (i.e., maximum processing temperatures) materially affects at least one or more of physical properties (a)-(g) (claims 1-6, 15-16, 23) -- for example, but not limited to:
• Comparative Example 3 (maximum processing temperature of 150 °C) fails to satisfy physical properties (a), (d), and (g) (claims 1-2, 23), compared to Inventive Example 1 (maximum processing temperature of 240 °C);
• Inventive Example 3 (maximum processing temperature of 180 °C) fails to satisfy physical properties (a) and (g) (claims 1, 23), compared to Inventive Example 1 (maximum processing temperature of 240 °C);
• Inventive Example 15 (maximum processing temperature of 210 °C) fails to satisfy physical properties (a) and (g) (claim 1, 23), compared to Inventive Example 1 (maximum processing temperature of 240 °C); etc.
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)-(g) (claims 1-6, 15-16, 23), without undue experimentation using easy-adhesion resin layer (X) formation conditions (i.e., maximum processing temperature) which are higher or lower than the 240 °C utilized in Inventive Examples 1-2, 4-14, 16-17 in the Specification (with respect to claim 1) or Inventive Examples 1-2, 4, 6-12, 14, 16-17 in the Specification (with respect to claim 23) from those utilized in the working Examples in the Specification, particularly in view of Comparative Example 3 and inventive Examples 3, 15 in the specification.
For example, Applicant has not provided adequate guidance regarding what type(s) of modifications are needed (e.g., to the composition of easy-adhesion layer (X), etc.) to produce laminated films satisfying property (a) (claim 1) or properties (d)-(e) (claim 2) or property (g) (claim 23) using a maximum processing temperature of 190-200 °C.
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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)-(g) (claims 1-6, 15-16, 23), 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)-(g) (claims 1-6, 15-16, 23) 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.
The rejections under 35 U.S.C. 103 based on JP 2017-149005 (OTA-JP ‘005) have been withdrawn in view of the Claim Amendments filed 04/28/2026.
Claim(s) 1, 4, 7-14 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as discussed above. Alternatively, claims 1, 4, 7-14 are subject to the following rejections under 35 U.S.C. 103.
Claim(s) 1, 4, 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2001-191673 (NISHIMURA-JP ‘673),
in view of MASUDA ET AL (US 2011/0051245).
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 illustrative γsh/γsd ratios of 0.18-0.20 (Inventive Examples 1-4);
(ii) the urethane copolymer resin layer optionally contains additives;
(iii) 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.)
MASUDA ET AL ‘245 discloses that it is well known in the art to incorporate additives such as one or more crosslinking agents (e.g., carbodiimide-based compounds, oxazoline-based compounds, etc. or mixtures thereof) in adhesion-promoting coatings (e.g., containing polyester binders, polyacrylate binders, polyurethane binders, etc.) for polyester films in order to improve various coating layer properties (e.g., heat resistance, adhesion property, solvent resistance, anti-blocking property, etc.). (paragraph 0040-0041, etc.)_
Regarding claims 1, 4, 8-9, 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.
Further regarding claims 1, 8, one of ordinary skill in the art would have incorporated effective amounts of known crosslinking agents (e.g., carbodiimide-based compounds, as suggested in MASUDA ET AL ‘235 (corresponding to the recited “one or more reactive compounds (B) comprising a carbodiimide compound”), optionally in combination with other known crosslinking agents, such as oxazoline-based compounds, etc.) in the adhesion-promoting resin layers (corresponding to the recited “easy-adhesion resin layer (X)”) of NISHIMURA-JP ‘673 in order to modify or improve various performance properties (e.g., heat resistance, adhesion property, solvent resistance, moisture resistance, anti-blocking property, etc.).
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 9, one of ordinary skill in the art would have selected the surface topography (as represented by Ra and Rz) of the coated film of NISHIMURA-JP 673 in order to obtain the optimum balance of film handling characteristics, antiblocking properties, and avoidance of defect and/or undesirable surface irregularities in subsequently applied coatings for specific applications.
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), in view of MASUDA ET AL (US 2011/0051245),
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 2001-191673 (NISHIMURA-JP ‘673), in view of MASUDA ET AL (US 2011/0051245),
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.
* * *
Claim(s) 1, 8, 10-11, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• CN 110312602 A (MATSUO-CN ‘602),
MATSUO-CN ‘620 discloses a coated polyester film comprising:
• a polyester film substrate (e.g., comprising film scraps and/or recycled plastic bottle materials);
• a coating layer (A) (corresponding to the recited “easy-adhesion resin layer (X)”) comprising:
(i) an adhesive component (e.g., polyester resin, acrylic resin, etc.);
(ii) one or more reactive crosslinking agent(s) (e.g., carbodiimide-based, oxazoline-based, etc.);
wherein examples of the coating layer (A) can exhibit:
• hydrogen bonding force γsh values of 0.2-1.4 mJ/m2;
• dispersion force γsd values of 18.1-21.2 mJ/m2,
resulting in illustrative γsh/γsd ratios of 0.045 (Inventive Example 1) or less;
(iii) the coating layer (A) is typically cured at temperatures of 180 °C or less;
• an additional layer (e.g., a ceramic green sheet layer, etc.) (corresponding to the recited “processed layer (Y)”);
(entire document, e.g., paragraph 0050-0056, 0063-0064, , etc.; Table 3; etc.)
Regarding claims 1, 8, 10-11, 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 coated polyester films of MATSUO-CN ‘620 with a coating layer (A) (corresponding to the recited “easy-adhesion resin layer (X)”) with a γh/γd ratio of less than 0.2 as a support for subsequently applied additional layers or coatings.
Further regarding claim 1, one of ordinary skill in the art would have incorporated effective amounts of known crosslinking agents (e.g., carbodiimide-based compounds) (corresponding to the recited “one or more reactive compounds (B) comprising a carbodiimide compound”) in the coating layer (A) (corresponding to the recited “easy-adhesion resin layer (X)”) of MATSUO-CN ‘620 in order to modify or improve various performance properties (e.g., heat resistance, adhesion property, solvent resistance, moisture resistance, anti-blocking property, etc.).
Further regarding claim 1, since the coating layer (A) is intended to be subsequently coated by an additional layer, wherein said additional layer is retained on said coating layer (A) (however temporarily), coating layer (A) is required to exhibit at least some degree of adhesion to said additional layer, thereby exhibiting some degree of adhesive characteristic (corresponding to the recited “easy-adhesion resin layer (X)”).
Response to Arguments
Applicant's arguments filed 04/28/2026 have been fully considered but they are not persuasive.
(A) Applicant argues that “Regarding the alleged lack of enablement for the composition of the laminated polyester film as a whole, Applicant respectfully submits that the Office has not established a prima facie case of lack of enablement at least because of the following reasons. First, the Office Action does not include a construction of each of Claims 2-3, 5-6, and 15-
20, per MPEP § 2164.04.” However, contrary to Applicant’s assertion, the present rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, clearly set forth the specific combinations of physical property limitations (a)-(g) associated with each of claims 1-6, 15-16, 23 and the subsequent portions of the rejection clearly references those previously listed physical properties (a)-(g).
(B) Applicant argues that “the Office Action does not include a basis for questioning Applicant's enablement provided for the claimed invention, per MPEP § 2164.04. For example, all of Applicant's examples (i.e., Examples 1-17) of the application meet the limitation recited in claim 2, "wherein an advancing angle θa of water in the easy-adhesion layer (X) is 75.0° or more and 110.0° or less, and a receding angle θr of water is 5.0° or more and 40.0° or less", whereas none of the comparative examples (i.e., Comparative Examples 1-4) meets the limitation.
However, as discussed in detail in the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action, the Inventive Examples 1-17 utilize a very limited range of easy-adhesion layer (X) compositions, while the substantial majority of the present claims contain substantial majority of the present claims contain no or minimal limitations on: (1) the composition of easy-adhesion resin layer (X) as a whole; and/or (2) the maximum processing temperature.
The basis for the present rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action is not a lack of enablement per se (i.e., the specification does enable one of ordinary skill in the art to make a laminated film satisfying physical property (a) (claim 1) or at least one of properties (d)-(e) (claim 2). Instead, the basis for the present rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action is the insufficient scope of enablement provided by the disclosure as originally filed (i.e., that the disclosure as originally filed 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 the present claims without undue experimentation -- i.e., while the disclosure as originally filed is enabling for: (1) a limited range of easy-adhesion layer (X) compositions as a whole; and (2) a single maximum processing temperature value; the specification does not reasonably provide adequate enablement for the entire scope of the present claims (as represented by: (1) the entire easy-adhesion layer (X) compositions as a whole; and (2) the entire range of maximum processing temperatures; which are encompassed by the present claims).
(C) Applicant argues that “the Office Action does not include a reasonable basis for doubting statements in Applicant's specification, per MPEP § 2164.04. For example, Applicant's specification contains a teaching of the manner and process of making and using Applicant's claimed invention in terms which correspond in scope to those used in describing and defining the subject matter claimed.”
However, contrary to Applicant’s assertions, the guidance provided by the Specification is not reasonably commensurate with the scope of the present claims -- in particular, with respect to: (1) the composition of easy-adhesion resin layer (X) as a whole; and (2) the maximum processing temperature -- in view of the Inventive Examples and Comparative Examples in the specification, which provide objective evidence that physical property (a) (claim 1) or at least one of properties (d)-(e) (claim 2) is materially (and potentially, unpredictably) affected by factors (1) and (2) as described above. In other words, Applicant’s own Specification provide objective evidence that relatively minor deviations in factors (1) and (2) above can cause a coated film to fail to satisfy physical property (a) (claim 1) or at least one of properties (d)-(e) (claim 2).
As discussed in detail above, a substantial majority of the present claims contain no or minimal limitations on the composition of easy-adhesion resin layer (X) as a whole. 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 various recited combinations of above physical properties (a)-(g) (claims 1-6, 15-16, 23), without undue experimentation using easy-adhesion resin layer (X) compositions which are materially different from those utilized in the Inventive Examples 1-2, 4-14, 16-17 in the Specification (with respect to claim 1) or Inventive Examples 1-2, 4, 6-12, 14, 16-17 in the Specification (with respect to claim 23), as explained in detail in the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, in the present Office Action.
(D) Applicant’s arguments regarding the rejections under 35 U.S.C. 103 based on JP 2017-149005 (OTA-JP ‘005) have been fully considered and are persuasive in view of the Claim Amendments filed 04/28/2026.
(E) Applicant’s arguments regarding the rejections under 35 U.S.C. 103 based on JP 2001-191673 (NISHIMURA-JP ‘673) -- in particular, the requirement of carbodiimide compounds in claim 1 and newly presented claims 21-24 -- are moot in view of the new grounds of rejection necessitated by the Claim Amendments filed 04/28/2026.
(F) Applicant argues that “evidence of record indicates that the γh/γd ratio of NISHIMURA-JP '673's coating layer would most likely not meet the limitation of as-
amended Claim 1.” However, γh/γd calculated from Table 1 in NISHIMURA-JP '673 range from 0.18-0.20, which meant the limitations of claim 1. Applicant has not provided objective evidence that the coated films of NISHIMURA-JP '673 are wholly incapable of exhibiting γh/γd ratios of 0.200 or less when containing minor or very low amounts of a conventional additive (e.g., a crosslinking agent such as a carbodiimide-based compound, as suggested by MASUDA ET AL ‘254), particularly when the ranges of γh and γd values disclosed in NISHIMURA-JP ‘673 allow for γh/γd ratios as low as 0.167.
(G) Applicant argues that “in the examples of NISHIMURA-JP '673, the coating is processed at a drying temperature of 130 °C (see Example 1 of NISHIMURA-JP '673). As shown in Comparative Example 3 of the present specification, when the drying temperature of the coating composition is 130 °C, γh/γd does not satisfy the limitation of as-amended Claim 1.” However, as discussed in detail above, the substantial majority of the present claims: (i) contain no or minimal limitations on the composition of easy-adhesion layer (X) as a whole; and (ii) contain no limitations on the maximum processing temperature of the coated film. Therefore, the fact that NISHIMURA-JP '673 uses different processing temperatures does not obviate the fact that NISHIMURA-JP '673 at least broadly teaches or at least reasonably suggests coated films with low γh/γd ratios of 0.200 or less.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KAWASAKI ET AL (US 2012/0189832) disclose coatings for polyester films containing carbodiimide-based crosslinkers.
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.
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July 22, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787
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