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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-5, drawn to a method.
Group II, claim(s) 6-8, drawn to an apparatus.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: the technical feature shared by the groups is cleaning liquid. This technical feature does not make a contribution over the prior art. See, for example, JP 2019209511 to Zeon Corp.
During a telephone conversation with Virginia Henrici on 09/28/2026 a provisional election was made without traverse to prosecute the invention of Invention I, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-8 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2019209511 to Zeon Corp. (“Zeon”, and note the attached translation).
Regarding claim 1, Zeon teaches a coating film removing method (para [0008], [0024], [0059], [0081] – [0086], claim 1, Fig. 10; translation, abstract, page 2, para beginning “The present invention was devised”, page 12, para beginning “As described above”, page 15, para beginning “[Fourth embodiment]” through para beginning “The method for producing”) for removing a coating film from a coated film including the coating film on at least one surface of a base film, the method comprising: without bringing a cleaning liquid into contact with the coating film, forming a scratch, a cut, or a hole in the coating film on a surface on a coating film side of the coated film, or forming the scratch, the cut, or the hole that reaches the coating film on a surface on a no coating film side of the coated film (translation, page 5, para beginning “As shown in FIG. 2”, note ref. ref. 200, incl. ref. 220 and 250, page 10, para beginning “FIG. 4 through para beginning “The rubbing”); then bringing a cleaning liquid into contact with the coating film (translation, page 15 para beginning “FIG. 10” through “para beginning “A liquid”); and then removing the coating film containing the cleaning liquid from the coated film (translation, page 15, para beginning “By using the separation”).
Regarding claim 2, Zeon discloses a method wherein, while the coated film is conveyed, the scratch is formed such that an angle (acute angle) formed by a longitudinal direction of the scratch and a conveyance direction is 60 degrees or less, or the cut is formed such that an angle (acute angle) formed by a longitudinal direction of the cut and the conveyance direction is 60 degrees or less (para [0008], translation, page 6, para beginning “The first rubbing direction”, page 22, para beginning “The manufacturing method of the resin film of Claim 7”).
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 (i.e., changing from AIA to pre-AIA ) 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 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 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019209511 to Zeon Corp. (“Zeon”, and note the attached translation) in view of JP 2004169005 to Toray Industries Inc. (“Toray”, and note the attached translation).
Regarding claim 3, Zeon does not explicitly teach the method wherein the coating film contains a water-soluble resin. However, the use of coatings containing water-soluble resins was known in the art (see, e.g. Toray at, inter alia, translation, page 3, para beginning “ It is important that the easily soluble resin layer” and “The easily soluble resin is preferably a water-soluble”), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the Zeon method as was known wherein the coating film contains a water-soluble resin, with a reasonable expectation of success, since it was known as effective for efficient film separation (note Zeon, translation, page 2, para beginning “The present invention was devised”).
Regarding claim 4, Zeon does not explicitly teach the method wherein the coating film contains a curable silicone resin. However, the use of coatings containing curable silicone resins was known in the art (see, e.g., Toray at, inter alia, translation, page 4, para beginning “The material constituting”), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the Zeon method as was known wherein the coating film contains a curable silicone resin, with a reasonable expectation of success, since it was known as effective for efficient film separation (note Zeon, translation, page 2, para beginning “The present invention was devised”).
Regarding claim 5, Zeon discloses a method wherein the cleaning liquid is water (Zeon, translation, page 15, para beginning “A liquid”, Toray, translation, page 6, para beginning “ It is also preferable”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC GOLIGHTLY whose telephone number is (571)270-3715. The examiner can normally be reached M-F: 10 am - 7 pm.
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, Kaj Olsen can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC W GOLIGHTLY/Primary Examiner, Art Unit 1714
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