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 .
Terminal Disclaimer
The terminal disclaimer filed on 20 August 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application No. 18/713,680 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claims 2 and 9-10 are objected to because of the following informalities:
Claim 2, line 2: “wherein the releasing primer composition containing a polyethyleneimine-based compound” should read “wherein the releasing primer composition containing the polyethyleneimine-based compound” because claim 1 (which claim 2 depends from) already recites “a polyethyleneimine-based compound”.
Claim 9, line 1: “the printed matter” should read “The printed matter”.
Claim 9, lines 3-4: “wherein the releasing primer composition containing a polyethyleneimine-based compound” should read “wherein the releasing primer composition containing the polyethyleneimine-based compound” because claim 7 (which claim 9 depends from) already recites “a polyethyleneimine-based compound”.
Claim 10, lines 6-7: “wherein the releasing primer composition containing a polyethyleneimine-based compound” should read “wherein the releasing primer composition containing the polyethyleneimine-based compound” because claim 10 already recites “a polyethyleneimine-based compound” in line 4.
Claim 10, lines 12-13: “a siloxane-modified polyethyleneimine compound. wherein the releasing primer composition…” should read “a siloxane-modified polyethyleneimine compound, wherein the releasing primer composition…”. Presently, there is a period (“.”) after “compound”, which should not be present since it is not the end of the claim.
Appropriate correction is required.
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.
Claims 2 and 10 are 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.
With respect to claim 2, the claim recites “a mixture containing a polyethyleneimine compound, and a glycidyl group-containing silane coupling agent, and/or isocyanate group-containing silane coupling agent” in lines 5-6. The scope of claim 2 is unclear because it is unclear the mixture is supposed to be one of a polyethyleneimine compound and at least one silane coupling agent selected from the group consisting of a glycidyl group-containing silane coupling agent and an isocyanate group-containing silane coupling agent, or if the mixture is supposed to be a mixture of either of the two silane coupling agents without requiring the polyethyleneimine compound. Clarification is respectfully requested. It is suggested that Applicant amend claim 2 to read “a mixture containing a polyethyleneimine compound and at least one silane coupling agent selected from the group consisting of a glycidyl group-containing silane coupling agent and an isocyanate group-containing silane coupling agent; and” in place of “a mixture containing a polyethyleneimine compound, and a glycidyl group-containing silane coupling agent, and/or isocyanate group-containing silane coupling agent; and”.
With respect to claim 10, the claim recites “A releasing primer composition… containing a polyethyleneimine-based compound with an amine value of 5.0 to 25.0 mmol/g and/or polybutadiene-based compound” in lines 1-5 before reciting “B. a mixture containing a polyethyleneimine compound… and C. a siloxane-modified polyethyleneimine compound. wherein the releasing primer composition contains components B and C” in lines 10-13. The scope of claim 10 is unclear because it is unclear if the releasing primer composition requires either the presence of a polyethyleneimine-based compound or a polybutadiene-based compound (due to the limitation “a polyethyleneimine-based compound… and/or a polybutadiene-based compound”) (i.e., the polyethyleneimine-based compound is not required), or if the releasing primer composition requires the polyethyleneimine-based compound (due to the limitation “the releasing primer composition contains components B and C”) and may optionally include a polybutadiene-based compound (due to the limitation “and/or a polybutadiene-based compound”). Clarification is respectfully requested. For the purposes of examination, claim 10 has been interpreted as if it requires either a polyethyleneimine-based compound or a polybutadiene-based compound.
With respect to claim 10, the claim recites “wherein the releasing primer composition containing a polyethyleneimine-based compound… contains one or more components of A to C below: A. a polyethyleneimine compound; B. a mixture containing a polyethyleneimine compound, and a glycidyl group-containing silane coupling agent, and/or isocyanate group-containing silane coupling agent; and C. a siloxane-modified polyethyleneimine compound. wherein the releasing primer composition contains components B and C” in lines 6-13. The scope of claim 10 is unclear because it is unclear how the releasing primer composition containing a polyethyleneimine-based compound contains one or more of components A to C (i.e., the composition can contain A, B, or C independently) while also requiring both components B and C. It is suggested that Applicant amend claim 10 to read “wherein the releasing primer composition containing a polyethyleneimine-base compound with an amine value of 5.0 to 25.0 mmol/g comprises: a mixture containing a polyethyleneimine compound and at least one silane coupling agent selected from the group consisting of a glycidyl group-containing silane coupling agent and an isocyanate group-containing silane coupling agent; and a siloxane-modified polyethyleneimine compound, wherein a number-averaged…” in place of “wherein the releasing primer composition containing a polyethyleneimine-based compound with an amine value of 5.0 to 25.0 mmol/g contains one or more components of A to C below: A. a polyethyleneimine compound; B. a mixture containing a polyethyleneimine compound, and a glycidyl group-containing silane coupling agent, and/or isocyanate group-containing silane coupling agent; and C. a siloxane modified polyethyleneimine compound. wherein the releasing primer composition contains components B and C, and wherein a number-averaged…”.
With respect to claim 10, the claim recites “a mixture containing a polyethyleneimine compound, and a glycidyl group-containing silane coupling agent, and/or isocyanate group-containing silane coupling agent” in lines 10-11. The scope of claim 10 is unclear because it is unclear if the mixture is supposed to be one of a polyethyleneimine compound and at least one silane coupling agent selected from the group consisting of a glycidyl group-containing silane coupling agent and an isocyanate group-containing silane coupling agent, or if the mixture is supposed to be a mixture of either of the two silane coupling agents without requiring the polyethyleneimine compound. Clarification is respectfully requested. It is suggested that Applicant amend claim 10 to read “a mixture containing a polyethyleneimine compound and at least one silane coupling agent selected from the group consisting of a glycidyl group-containing silane coupling agent and an isocyanate group-containing silane coupling agent; and” in place of “a mixture containing a polyethyleneimine compound, and a glycidyl group-containing silane coupling agent, and/or isocyanate group-containing silane coupling agent; and”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claims 1-4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Okumura (JP 2012-171153 A). The disclosure of Okumura is based off a machine translation of the reference included with this action.
With respect to claims 1 and 10, Okumura discloses a release sheet ([0001]) having a functional layer containing an acid-modified polybutadiene ([0006]). The acid-modified polybutadiene uses unsaturated carboxylic acids, where the content of the unsaturated carboxylic acid is 1-400 mg KOH/g ([0010]), corresponding to the claimed carboxyl group-containing polybutadiene compound.
While there may be no disclosure that the carboxyl group-containing polybutadiene compound of Okumura is a releasing primer adapted to forming a releasing primer for releasing a resin base material, during recycling of the resin base material, from a printed matter wherein the releasing primer is formed on the resin base material as an underlying layer of a printed layer, these limitations are merely claim preamble and intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use (i.e., being used as a releasing primer layer) recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure, which is a carboxyl group-containing polybutadiene compound identical to that set forth in the present claims, is capable of performing the recited purpose or intended use as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
In light of the overlap between the claimed composition and that taught by Okumura, it would have been obvious to one of ordinary skill in the art to use a composition that is both taught by Okumura and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 2, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
With respect to claim 3, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
With respect to claim 4, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
Claims 1-4, 6, 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kagawa (JP 2011-184083 A). The disclosure of Kagawa is based off a machine translation of the reference included with this action.
With respect to claims 1, 6, and 10, Kagawa discloses a packaging material (i.e., printed matter) comprising a first base material 2, adhesive layer 3, second base material 4, and sealant layer 5 ([0013], [0019]). An ink layer for adding a pattern can be laminated on the first base material 2 ([0020]). The second base material 4 includes paper ([0025]). The adhesive layer 3 is made from polybutadiene known under the trade name EL-451 ([0037]), which is identical to the polybutadiene used in the present invention and therefore is necessarily a hydroxyl group-containing or carboxyl group-containing polybutadiene compound (see instant specification, page 7, [0015]). While the EL-451 is used in an adhesive layer, given it is identical to the polybutadiene of the present invention, it would necessarily inherently function as a releasing primer composition adapted to forming a releasing primer layer for releasing a resin base material, during recycling of the resin base material, from a printed matter wherein the releasing primer layer is formed on the resin base material as an underlying layer of a printed layer, absent evidence to the contrary.
In light of the overlap between the claimed releasing primer composition and that taught by Kagawa, it would have been obvious to one of ordinary skill in the art to use a releasing primer composition that is both taught by Kagawa and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 2, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
With respect to claim 3, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
With respect to claim 4, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
With respect to claim 8, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
Claims 1-4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Akatsu et al. (JP 2002-137341 A, “Akatsu”). The disclosure of Akatsu is based off a machine translation of the reference included with this action.
With respect to claims 1 and 10, Akatsu discloses a laminate comprising a resin surface layer 11, resin base layer 10, primer layer 12, and adhesive layer 13, where the primer layer is a polybutadiene-based primer made from EL-451 ([0046], [0036]), which is identical to the polybutadiene used in the present invention and therefore is necessarily a hydroxyl group-containing or carboxyl group-containing polybutadiene compound (see instant specification, page 7, [0015]). Given that EL-451 is identical to the polybutadiene of the present invention, it would necessarily inherently function as a releasing primer composition adapted to forming a releasing primer layer for releasing a resin base material, during recycling of the resin base material, from a printed matter wherein the releasing primer layer is formed on the resin base material as an underlying layer of a printed layer, absent evidence to the contrary.
With respect to claim 2, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
With respect to claim 3, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
With respect to claim 4, given that this claim further limits an optional embodiment, this claim is considered met by the prior art.
Allowable Subject Matter
Claims 7 and 9 are allowed.
The following is an examiner’s statement of reasons for indicating allowable subject matter. Claims 7 and 9 contain allowable subject matter over the “closest” prior art Ichikawa et al. (JP 2004-123895 A, “Ichikawa”), Hisha et al. (US 2010/0119854 A1, “Hisha”), Tanaka et al. (JP 2016-132211 A, “Tanaka”), Okumura (JP 2012-171153 A), Kagawa (JP 2011-184083 A), and Akatsu et al. (JP 2002-137341 A, “Akatsu”). The disclosures of Ichikawa and Tanaka are based off machine translations of the references included with the action mailed 08 April 2026. The disclosures of Okumura, Kagawa, and Akatsu are based off machine translations of the references included with this action.
Ichikawa discloses mixing a silane coupling agent with polyethyleneimine (PEI) and applying it to a substrate in order to form a coating film ([0008]) (i.e., a primer layer made from a composition comprising PEI and a silane coupling agent). The PEI includes SP-018 ([0012]), which is identical to the PEI used in the present invention as having an amine value of 19.0 mmol/g (instant specification, page 61, [0127], Table 1). Butadiene compounds are included in the composition ([0013]). The silane coupling agent includes 3-glycidoxyethyltrimethoxysilane ([0017]) (i.e., a silane coupling agent having a glycidyl group).
However, Ichikawa does not disclose wherein the polybutadiene-based compound comprises a hydroxyl group-containing polybutadiene compound and/or a carboxyl group-containing polybutadiene compound, nor does Ichikawa disclose a printed matter comprising, on a resin base material, a releasing primer layer formed by the releasing primer composition, a paper layer formed on the releasing primer layer via an adhesive layer, and a printed layer formed on the paper layer. Instead, Ichikawa is silent with respect to the presence of a paper layer, nor does Ichikawa disclose the claimed layers in the claimed order.
Hisha discloses a primer composition comprising an ethyleneimine compound, a liquid oligomer, and a solvent (Abstract, [0013-0017], [0030]). The ethyleneimine includes polyethyleneimine ([0030]) having an amine value of 5-25 mmol/g ([0033]). The composition further includes an adhesion-imparting agent comprising γ-glycidoxypropyltrimethoxysilane ([0072]), corresponding to the claimed glycidyl-group containing silane coupling agent.
However, Hisha does not disclose a printed matter comprising, on a resin base material, a releasing primer layer formed by the releasing primer composition, a paper layer formed on the releasing primer layer via an adhesive layer, and a printed layer formed on the paper layer. Instead, Hisha is silent with respect to the presence of a paper layer, nor does Hisha disclose the claimed layers in the claimed order.
Tanaka discloses a release film having resin layers on both sides of a base material, where the base material is paper and the resin layer comprises polyethyleneimine (PEI) ([0014]). The PEI includes that known under the trade name P-1000, which is identical to that of the present specification as having an amine value of 18 mmol/g (instant specification, page 61, [0127], Table 1). A printing layer is on the release layer ([0084]). The resin layer on the bottom side of the paper base material corresponds to the claimed resin base material; the resin layer atop the paper base material corresponds to the claimed releasing primer layer; the printing layer corresponds to the claimed printed layer formed on the releasing primer layer.
However, Tanaka does not disclose a printed matter comprising, on a resin base material, a releasing primer layer formed by the releasing primer composition, a paper layer formed on the releasing primer layer via an adhesive layer, and a printed layer formed on the paper layer.
Okumura discloses a release sheet ([0001]) having a functional layer containing an acid-modified polybutadiene ([0006]). The acid-modified polybutadiene uses unsaturated carboxylic acids, where the content of the unsaturated carboxylic acid is 1-400 mg KOH/g ([0010]), corresponding to the claimed carboxyl group-containing polybutadiene compound.
However, Okumura does not disclose a printed matter comprising, on a resin base material, a releasing primer layer formed by the releasing primer composition, a paper layer formed on the releasing primer layer via an adhesive layer, and a printed layer formed on the paper layer.
Kagawa discloses a packaging material (i.e., printed matter) comprising a first base material 2, adhesive layer 3, second base material 4, and sealant layer 5 ([0013], [0019]). An ink layer for adding a pattern can be laminated on the first base material 2 ([0020]). The second base material 4 includes paper ([0025]). The adhesive layer 3 is made from polybutadiene known under the trade name EL-451 ([0037]), which is identical to the polybutadiene used in the present invention and therefore is necessarily a hydroxyl group-containing or carboxyl group-containing polybutadiene compound (see instant specification, page 7, [0015]). While the EL-451 is used in an adhesive layer, given it is identical to the polybutadiene of the present invention, it would necessarily inherently function as a releasing primer composition adapted to forming a releasing primer layer for releasing a resin base material, during recycling of the resin base material, from a printed matter wherein the releasing primer layer is formed on the resin base material as an underlying layer of a printed layer, absent evidence to the contrary.
However, Kagawa does not disclose a printed matter comprising, on a resin base material, a releasing primer layer formed by the releasing primer composition, a paper layer formed on the releasing primer layer via an adhesive layer, and a printed layer formed on the paper layer.
Akatsu discloses a laminate comprising a resin surface layer 11, resin base layer 10, primer layer 12, and adhesive layer 13, where the primer layer is a polybutadiene-based primer made from EL-451 ([0046], [0036]), which is identical to the polybutadiene used in the present invention and therefore is necessarily a hydroxyl group-containing or carboxyl group-containing polybutadiene compound (see instant specification, page 7, [0015]). Given that EL-451 is identical to the polybutadiene of the present invention, it would necessarily inherently function as a releasing primer composition adapted to forming a releasing primer layer for releasing a resin base material, during recycling of the resin base material, from a printed matter wherein the releasing primer layer is formed on the resin base material as an underlying layer of a printed layer, absent evidence to the contrary.
However, Akatsu does not disclose does not disclose a printed matter comprising, on a resin base material, a releasing primer layer formed by the releasing primer composition, a paper layer formed on the releasing primer layer via an adhesive layer, and a printed layer formed on the paper layer.
Thus, none of the references, either alone or in combination, disclose the invention of claims 7 or 9, and thus claims 7 and 9 contain allowable subject matter.
Response to Arguments
Due to the filing and acceptance of a terminal disclaimer which disclaims the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application No. 18/713,680, the non-statutory double patenting rejections of claims 1-6 and 8 are withdrawn.
Due to the amendment to claim 1, the 35 U.S.C. 103 rejections of claims 1-2 over Ichikawa, the 35 U.S.C. 103 rejections over Hisha, and the 35 U.S.C. 103 rejections of claims 1-2, 6, and 8 over Tanaka are withdrawn. This is because none of Ichikawa, Hisha, nor Tanaka disclose a polybutadiene-based compound comprising a hydroxyl group-containing polybutadiene compound and/or a carboxyl group-containing polybutadiene compound. However, claims 1-4, 6, 8, and 10 are newly rejected under 35 U.S.C. 103 for the reasons set forth above.
Applicant’s arguments with respect to claims 1-4 and 6-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E 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.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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