Prosecution Insights
Last updated: April 19, 2026
Application No. 18/713,469

SURFACE PROTECTING FILM

Non-Final OA §103
Filed
May 24, 2024
Examiner
ZHANG, MICHAEL N
Art Unit
1781
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Toray Advanced Film Co., Ltd.
OA Round
1 (Non-Final)
54%
Grant Probability
Moderate
1-2
OA Rounds
3y 4m
To Grant
79%
With Interview

Examiner Intelligence

Grants 54% of resolved cases
54%
Career Allow Rate
212 granted / 396 resolved
-11.5% vs TC avg
Strong +26% interview lift
Without
With
+25.9%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
58 currently pending
Career history
454
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
57.1%
+17.1% vs TC avg
§102
8.2%
-31.8% vs TC avg
§112
27.3%
-12.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 396 resolved cases

Office Action

§103
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 . Claim Objections Claim 1 is objected to because of the following informalities: The “1.” at the end of Claim 1 is a typographical error. Appropriate correction is required. 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. Claim 1 are rejected under 35 U.S.C. 103 as being unpatentable over Furuichi (JP 2012-011735 A) in view of Matsumoto et al. (US 2014/0335310 A1). Regarding Claim 1, Furuichi teaches a surface protection film (Title) comprising a backing (back face) layer, an intermediate layer, and an adhesive layer (Paragraph 0020. Furuichi teaches the adhesive layer can comprise a polyethylene-based resin (Paragraph 0022), the intermediate layer can comprise a polyethylene-based resin (Paragraph 0029), and the back face layer can comprise polyethylene-based and/or polypropylene-based resins. (Paragraph 0037). Furuichi teaches the surface of the back face layer has a roughness Ra of 0.2 to 0.5 microns (Paragraph 0044) and roughness Rz of 2 to 5 microns. (Paragraph 0044). Furuichi teaches the surface of the adhesive layer has a rough Ra of 0.2 micron or less and a roughness Rz of 2 micron or less. (Paragraph 0046). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Furuichi does not teach the surface of the back layer as periodic protrusion height of 9 microns or less. Matsumoto teaches a surface protection film (Title) having a backing layer and an adhesive layer. (Claim 1 of Matsumoto), where the backing layer surface should not have any protrusions having a height of 5 microns or greater. (Claim 16-17 of Matsumoto; Paragraph 0063). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Matsumoto teaches this ensures no dents will formed in the film, when the film is rolled up for storage. (Paragraph 0063). Thus, it would have been obvious to one with ordinary skill in the art to ensure the periodic height in Furuichi is less than the claimed range, as taught by Matsumoto, to ensure no dents are formed when the film is stored. Furuichi does not specifically teach the maximum fisheye height of 1.5 microns or less. Matsumoto teaches removing all fish eyes on the film’s surfaces, thereby having a fisheye height of 0 microns or approaching 0 microns. (Paragraph 0004). Matsumoto teaches removing all fish eyes ensures no smudge and scratches will form on the adherend when the film is applied. (Paragraph 0004, 0065). Thus, it would have been obvious to one with ordinary skill in the art to remove all fisheyes or to get the maximum fisheye height as close to zero in Furuichi, as taught by Matsumoto, in order to reduce smudges and scratches to an adherend when applying the surface protection film. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ZHANG whose telephone number is (571)270-0358. The examiner can normally be reached Monday through Friday: 9:30am-3:30pm, 8:30PM-10:30PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Michael Zhang/Primary Examiner, Art Unit 1781
Read full office action

Prosecution Timeline

May 24, 2024
Application Filed
Mar 05, 2026
Non-Final Rejection — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
54%
Grant Probability
79%
With Interview (+25.9%)
3y 4m
Median Time to Grant
Low
PTA Risk
Based on 396 resolved cases by this examiner. Grant probability derived from career allow rate.

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