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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-6 of copending Application No. 18/713,680 (reference application, hereinafter “’680”, cited as US 2025/0018682 A1). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
With respect to claim 1, ‘680 discloses a releasing primer composition for forming a releasing primer layer containing a polyethyleneimine-based compound with an amine value of 5.0 to 25.0 mmol/g and/or a polybutadiene-based compound (claim 1).
It is noted that claim 1 of ‘680 further requires a laminate comprising a resin base material, a releasing primer layer, a printed layer, a releasing primer layer, and a sealant layer, being stacked in this order, wherein the releasing primer layer releases the resin base material from the laminate in a recycling process, whereas the present claims do not require the presence of these layers. However, in light of the open-ended language of the present claims, nothing precludes the presence of these additional layers, and thus the more specific laminate comprising a releasing primer layer formed from the claimed releasing primer composition encompasses the present claims, and thus one of ordinary skill in the art would have arrived at the claimed invention.
With respect to claim 2, ‘680 discloses the polyethyleneimine-based compound with an amine value of 5.0 to 25.0 mmol/g is one or more component selected from a polyethyleneimine compound, a mixture containing a polyethyleneimine compound, a glycidyl group-containing silane coupling agent, and/or isocyanate group-containing silane coupling agent, and a siloxane-modified polyethyleneimine compound (claim 2).
With respect to claim 3, ‘680 discloses wherein the releasing primer composition contains a mixture containing a polyethyleneimine compound and a glycidyl group-containing silane coupling agent and/or isocyanate group-containing silane coupling agent; and a siloxane-modified polyethyleneimine compound, wherein a number average molecular weight of the polyethyleneimine compound and the siloxane-modified polyethyleneimine compound is 1,000 to 200,000 (claim 4).
With respect to claim 4, ‘680 discloses wherein the releasing primer composition contains a mixture containing a polyethyleneimine compound and a glycidyl group-containing silane coupling agent and/or an isocyanate group-containing silane coupling agent; and a siloxane-modified polyethyleneimine compound, wherein a mass average molecular weight of the polyethyleneimine compound and the siloxane-modified polyethyleneimine compound are 4,000 to 800,000 (claim 5).
With respect to claim 5, ‘680 discloses wherein the releasing primer composition contains the polybutadiene-based compound, wherein the polybutadiene-based compound is a hydroxyl group-containing polybutadiene compound and/or a carboxyl group-containing polybutadiene compound (claim 6).
With respect to claim 6, ‘680 discloses a laminate (i.e., a printed matter) comprising a resin base material, a releasing primer layer, and a printed layer stacked in this order (claim 1).
It is noted that claim 1 of ‘680 additionally requires another releasing primer layer formed on the printed layer, and a sealant layer atop the second releasing primer layer, whereas present claim 6 is silent with respect to these layers. However, given the open-ended language of the present claims, nothing precludes the presence of these additional layers, and thus the more specific laminate of ‘680 is encompassed by the printed matter of present claim 6, such that one of ordinary skill in the art would have arrived at the claimed invention.
With respect to claim 8, ‘680 discloses a laminate (i.e., a printed matter) comprising a resin base material, a releasing primer layer, and a printed layer stacked in this order (claim 1).
It is noted that claim 1 of ‘680 additionally requires another releasing primer layer formed on the printed layer, and a sealant layer atop the second releasing primer layer, whereas present claim 6 is silent with respect to these layers. However, given the open-ended language of the present claims, nothing precludes the presence of these additional layers, and thus the more specific laminate of ‘680 is encompassed by the printed matter of present claim 6, such that one of ordinary skill in the art would have arrived at the claimed invention.
The above nonstatutory double patenting rejections are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
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.
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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa et al. (JP 2004-123895 A, “Ichikawa”). The disclosure of Ishikawa is based off a machine translation of the reference included with this action.
With respect to claims 1-2, 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).
Regarding the composition being 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, while there may be disclosure from Ichikawa regarding the composition being adapted to forming a releasing primer layer as presently claimed, this is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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 intended use 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 is capable of performing the intended use. Given that Ichikawa discloses a composition as presently claimed, it is clear that the composition of Ichikawa would be capable of performing the intended use (i.e., being used to form 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) presently claimed 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 Ichikawa, it would have been obvious to one of ordinary skill in the art to use a composition that is both taught by Ichikawa and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Hisha et al. (US 2010/0119854 A1, “Hisha”).
With respect to claims 1-2, 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.
Regarding the composition being 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, while there may be disclosure from Hisha regarding the composition being adapted to forming a releasing primer layer as presently claimed, this is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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 intended use 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 is capable of performing the intended use. Given that Hisha discloses a composition as presently claimed, it is clear that the composition of Ichikawa would be capable of performing the intended use (i.e., being used to form 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) presently claimed 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 Hisha, it would have been obvious to one of ordinary skill in the art to use a composition that is both taught by Hisha and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 1-2, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (JP 2016-132211 A, “Tanaka”). The disclosure of Tanaka is based off a machine translation of the reference included with this action.
With respect to claims 1-2, 6, and 8, 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 ([0107]), 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.
Regarding the composition being 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, while there may be disclosure from Tanaka regarding the composition being adapted to forming a releasing primer layer as presently claimed, this is merely an intended use. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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 intended use 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 is capable of performing the intended use. Given that Tanaka discloses a composition as presently claimed, it is clear that the composition of Ichikawa would be capable of performing the intended use (i.e., being used to form 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) presently claimed 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 Tanaka, it would have been obvious to one of ordinary skill in the art to use a composition that is both taught by Tanaka and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Allowable Subject Matter
Claims 7 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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”), and Tanaka et al. (JP 2016-132211 A, “Tanaka”). The disclosures of Ichikawa and Tanaka 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 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.
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.
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-Friday 07:30-16:00 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