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 .
Election/Restrictions
Applicant's election with traverse of claims 1-11 in the reply filed on 02/05/2026 is acknowledged. The traversal is on the ground(s) that Ohara does not read on the corresponding technical feature of Groups I-III, and thus this technical feature forms a general inventive concept not shown in the prior art. Upon further consideration, Examiner agrees that Ohara does not read on the entirety of the corresponding technical feature. However, as shown in the rejection of claim 1 below, this technical feature is known in the prior art made of record in this action, specifically, Sente (US PG Pub 2023/0076958) in view of Erni (US PG Pub 2022/0167642), and thus cannot be a special technical feature under PCT Rule 13.2. Since Applicant’s inventions do not contribute a special technical feature when viewed over the prior art they do not have a single general inventive concept and so lack unity of invention. Therefore, the requirement is still deemed proper and is therefore made FINAL.
Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/05/2026.
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sente (US PG Pub 2023/0076958) in view of Erni (US PG Pub 2022/0167642).
Regarding claims 1and 10, Sente teaches a method for separation and recovery of a laminate (abstract), comprising:
a step for immersing a laminate (para. 0017) having at least a polyolefin base material layer (para. 0123) and a release layer (release primer layer with a binder resin per para. 0118; or ink layer per para. 0121; or adhesive layer per paras. 0112, 0115) in contact with the polyolefin base material layer (para. 0115 or 0121) in a release solution (e.g. cleaning agent of paras. 0017, 0048, and 0100) containing a surfactant having an HLB value of less than 12.5 (paras. 0053-0054), which partially overlaps the ranges of claims 1 and 10 rendering them obvious as explained below, and a defoamer having a low HLB value (para. 0098),
releasing the release layer (paras. 0026, 0094, 0106), and
recovering the polyolefin base material (para. 0043),
wherein the release layer is a layer containing a water-soluble resin (paras. 0112-0113, 0118, and 0151).
Regarding the recited HLB range for the surfactant, a prior art range which encompasses, partially overlaps, or touches the claimed range is sufficient to establish a prima facie case of obviousness, in the absence of any unexpected results. See MPEP § 2144.05.I and In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Sente does not explicitly teach the defoamer has an HLB value of 1 to 3.
However, Erni teaches that compounds with an HLB value of 1-3 are useful for defoaming (para. 0043).
The courts have held that selection of a known material on the basis of suitability for its intended use is obvious and within the capability of one of ordinary skill in the art. See MPEP § 2144.07, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Thus, in view of Erni’s teachings and the above considerations, it would have been obvious to one of ordinary skill in the art at the time of filing to use a defoamer compound having an HLB value of 1 to 3 in Sente’s method to predictably obtain suitable defoaming during immersion of the laminate in the release solution.
Regarding claim 2, Sente teaches the release layer includes at least one layer selected from the group consisting of a primer layer, a printing layer and an adhesive layer (release primer layer with a binder resin per para. 0118; or ink layer per para. 0121; or adhesive layer per paras. 0112, 0115).
Regarding claim 3, Sente teaches the defoamer is at least one selected from the group consisting of an emulsion type silicone compound, a self-emulsion type silicone compound, and a non-silicone compound (paras. 0098-0099).
Regarding claim 4, Sente is silent regarding the content of the defoamer based on the mass of the release solution.
However, Sente teaches that addition of defoamer to the release solution provides the effects of anti-foaming, thereby preventing foam flooding, and also promotes crushing of the base material into a desired size (paras. 0097-0098).
Therefore, the recitation of claim 4 merely represents optimization of a result-effective variable and would have been obvious to one of ordinary skill in the art. “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art,” and the presence of such a known result-effective variable would be one … motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980), KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and also MPEP § 2144.05.II.
Regarding claim 5, Sente teaches the release solution is a basic aqueous solution containing a basic compound (paras. 0045, 0118).
Regarding claim 6, Sente teaches the surfactant includes at least one surfactant selected from the group consisting of an anionic surfactant and a nonionic surfactant (para. 0046).
Regarding claim 7, Sente teaches the anionic surfactant includes at least one surfactant selected from the group consisting of a carboxylic acid-based anionic surfactant (para. 0057).
Regarding claim 8, Sente teaches the nonionic surfactant includes at least one surfactant selected from the group consisting of a fatty acid-based nonionic surfactant and an amine-based nonionic surfactant (para. 0047).
Regarding claim 9, Sente teaches the surfactant is an alkylene oxide adduct (paras. 0048-0051, 0053-0054).
Regarding claim 11, Sente teaches the content of the surfactant based on the mass of the release solution is 0.01 to 5 mass% (para. 0048), thus falling within the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIM R SMITH whose telephone number is (303)297-4318. The examiner can normally be reached Mon-Fri. 9-6 MST.
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/JIMMY R SMITH JR./Examiner, Art Unit 1745