DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is a 371 of App. No. PCT/JP2022/046669, filed on 12/19/2022, which is entitled to and claims the benefit of priority of JP Patent App. Nos. 2021-207444 , filed 12/21/ 2021, 2021-207445 , filed 12/21/2021, and 2021-207446 , filed 12/21/2021. The preliminary amendment filed on 06/20/2024 is entered and acknowledged by the Examiner.
3. Applicant’s election of Group I, claims 1-6, 18-19 without traverse in the reply filed on 04/06/2026 is acknowledged.
4. Claims 1-19 are pending. Claims 1-6, 18-19 are under examination on the merits. Claims 7-17 are withdrawn to a non-elected invention from further consideration.
Information Disclosure Statement
5. The information disclosure statement submitted on 04/06/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Priority
7. Receipt is acknowledged of papers submitted on 06/20/2024 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1, 5 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Inada et al. (JP 2014-084360 A, machine translation, hereinafter “’360”) in view of Takushi Tsuchiya (JP 2021-017014 A, machine translation, hereinafter “’014”).
Regarding claim 1: ‘360 teaches a layered body (hard coating film) (Page 7/34, [0004]) in which a hard coating layer containing an ultraviolet curable resin that comprises a multifunctional acrylate IPDI-M305 is laminated, via an undercoat layer (easy adhesive layer) which is an ultraviolet curable resin containing silica particles (inorganic microparticles) and a multifunctional acrylate IPDI-M305, onto one face of a cycloolefin polymer (cycloolefin polymer-based film) having a thickness of 100 µm (Page 26/34, [0085]; Page 27/34, [0087]; Page27/34, [0090]; Page 28/34, [0096]; Page 29/34, [0099] to Page33/34, [0114], Example 1, Table 2). ‘360 teaches using an undercoat layer composition component in a hard coating layer composition (Page 28/34, [0096]), and indicates that the component comprises an ultraviolet absorber (Page 26/34, [0085]) and a pigment (Page 27/34, [0086]). ‘360 teaches the lower limit of the thickness of the undercoat layer is 0.1 µm (Page 27/34, [0090]), the hard coating layer has a thickness of 7 µm (Page32/34, [0108]), and a cross-cut tape release test (cross-cut residual film rate according to JIS-K5600-5-6) for the undercoat layer and hard coating layer, according to JIS-K5400, is 100% in both instances (Page 32/34, [0109]; Page 33/34, [0111]; and Page 33/34, [0114], Table 2). ‘360 teaches high UV resistance is achieved (Page 26/34, [0085]), and hence it is very likely that the undercoat layer and hard coating layer, after a light resistance test with ultraviolet irradiation, both exhibit values of 100% as the residual film rate of a cross-cut tape release test. ‘360 does not expressly teach the cycloolefin polymer-based film having a thickness of 50 µm or less.
However, ‘014 reaches a laminate film that has a hard coat layer provided on a cycloolefin polymer (COP)-containing base film via an easily-adhesive layer, in which curling is suppressed while ensuring adhesion even after a weather resistant test (Page 7/43, [0009]), wherein the cycloolefin polymer-based film having a thickness of 50 µm or less (Page 26/43, [0104], Example 1).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate production of base film thickness of a known material based on its suitability for its intended use is within the level ordinary skill in the art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 5: The disclosure of ‘360 in view of ‘014 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘’360 teaches an ultraviolet absorber and a light stabilizer can be blended for the purpose of enhancing UV resistance and weather resistance. Specific examples of suitable UV absorbers include hydroxyphenyltriazine-based UV absorbers such as 2-[4-[(2-hydroxy-3-dodecyloxypropyl) oxy]-2-hydroxyphenyl]-4, 6-bis(2, 4-dimethylphenyl)-135,- triazine, benzotriazole-based UV absorbers such as 2- (2H benzotriazole-2-yl)- 4, 6-bis(1-methyl-1-phenylethyl) phenol (Page 26/34, [0085]).
10. Claims 1-3, 5,18 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Inada et al. (JP 2014-084360 A, machine translation, hereinafter “’360”) in view of Iio et al. (JP 2018-132665 A, machine translation, hereinafter “’665”) .
Regarding claims 1-2: ‘360 teaches a layered body (hard coating film) (Page 7/34, [0004]) in which a hard coating layer containing an ultraviolet curable resin that comprises a multifunctional acrylate IPDI-M305 is laminated, via an undercoat layer (easy adhesive layer) which is an ultraviolet curable resin containing silica particles (inorganic microparticles) and a multifunctional acrylate IPDI-M305, onto one face of a cycloolefin polymer (cycloolefin polymer-based film) having a thickness of 100 µm (Page 26/34, [0085]; Page 27/34, [0087]; Page27/34, [0090]; Page 28/34, [0096]; Page 29/34, [0099] to Page33/34, [0114], Example 1, Table 2). ‘360 teaches using an undercoat layer composition component in a hard coating layer composition (Page 28/34, [0096]), and indicates that the component comprises an ultraviolet absorber (Page 26/34, [0085]) and a pigment (Page 27/34, [0086]). ‘360 teaches the lower limit of the thickness of the undercoat layer is 0.1 µm (Page 27/34, [0090]), the hard coating layer has a thickness of 7 µm (Page32/34, [0108]), and a cross-cut tape release test (cross-cut residual film rate according to JIS-K5600-5-6) for the undercoat layer and hard coating layer, according to JIS-K5400, is 100% in both instances (Page 32/34, [0109]; Page 33/34, [0111]; and Page 33/34, [0114], Table 2). ‘360 teaches high UV resistance is achieved (Page 26/34, [0085]), and hence it is very likely that the undercoat layer and hard coating layer, after a light resistance test with ultraviolet irradiation, both exhibit values of 100% as the residual film rate of a cross-cut tape release test. ‘360 does not expressly teach the cycloolefin polymer-based film having a thickness of 50 µm or less, wherein the hard coat film further satisfies the following condition (E), and a light reduction rate (%) at each wavelength, calculated from the formula 1 satisfies the following conditions (F) to (P) as set forth, wherein (E) a b* value is 7.0 or less.
However, ‘665 teaches a hard coat film excellent particularly in adhesion, durability, processability, visibility, etc., wherein the hard coat layer 3 containing an ionizing radiation curable resin is laminated on at least one surface of a cycloolefin film 1 having a thickness of 30 µm or less via an easily adhesive layer 2 containing a mixture of a polyolefin resin and a styrene acrylic resin, and the hard coat film satisfies the following conditions (A) and (B). (A) a b * value of 1.5 or less, and (B) a residual ratio of the hard coat layer of 90% or more, the residual ratio being measured by a cross-cut method in which the hard coat layer is irradiated with ultraviolet light having an irradiance of 500W/m2 and an exposure time of 100 hours at a temperature of 43 °C. and a relative humidity of 50% (Page 7/28, [0011]) with benefit of providing a hard coat film which uses a thin cycloolefin film having a thickness of 30 µm or less as a substrate and is excellent in hardness (surface hardness), adhesiveness, durability (particularly, light resistance, heat resistance, moist heat resistance, and the like), processability (curling characteristics), optical characteristics (haze, transparency, and the like), and visibility (b * value) (Page 6/28, [0010]).
In an analogous art of the hard coat film, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify by the cycloolefin polymer-based film thickness by ‘360, so as to include
the cycloolefin polymer-based film having a thickness of 50 µm or less, wherein the hard coat film further satisfies the following condition (E), and a light reduction rate (%) at each wavelength, calculated from the formula 1 satisfies the following conditions (F) to (P) as set forth, wherein (E) a b* value is 7.0 or less as taught by ‘665, and would have been motivated to do so with reasonable expectation that this would result in providing a hard coat film which uses a thin cycloolefin film having a thickness of 30 µm or less as a substrate and is excellent in hardness (surface hardness), adhesiveness, durability (particularly, light resistance, heat resistance, moist heat resistance, and the like), processability (curling characteristics), optical characteristics (haze, transparency, and the like), and visibility (b * value) as suggested by ‘665
(Page 6/28, [0010]).
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975).
Regarding claims 5,18: The disclosure of ‘360 in view of ‘665 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘’360 teaches an ultraviolet absorber and a light stabilizer can be blended for the purpose of enhancing UV resistance and weather resistance. Specific examples of suitable UV absorbers include hydroxyphenyltriazine-based UV absorbers such as 2-[4-[(2-hydroxy-3-dodecyloxypropyl) oxy]-2-hydroxyphenyl]-4, 6-bis(2, 4-dimethylphenyl)-135,- triazine, benzotriazole-based UV absorbers such as 2- (2H benzotriazole-2-yl)- 4, 6-bis(1-methyl-1-phenylethyl) phenol (Page 26/34, [0085]).
Regarding claim 3: The disclosure of ‘360 in view of ‘665 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘665 teaches a hard coat film excellent particularly in adhesion, durability, processability, visibility, etc., wherein the hard coat layer 3 containing an ionizing radiation curable resin is laminated on at least one surface of a cycloolefin film 1 having a thickness of 30 µm or less via an easily adhesive layer 2 containing a mixture of a polyolefin resin and a styrene acrylic resin, and the hard coat film satisfies the following conditions (A) and (B). (A) a b * value of 1.5 or less, and (B) a residual ratio of the hard coat layer of 90% or more, the residual ratio being measured by a cross-cut method in which the hard coat layer is irradiated with ultraviolet light having an irradiance of 500W/m2 and an exposure time of 100 hours at a temperature of 43 °C. and a relative humidity of 50% (Page 7/28, [0011]). ‘360 in view of ‘665 does not expressly teach an absolute value of a change rate (%) of light transmittance at each wavelength, calculated by the formula 2, satisfies the following conditions (Q) to (AA) as set forth.
However, since ‘360 in view of ‘665 teaches substantially identical Hard coat film as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. light transmittance, would be the same as claimed (i.e., an absolute value of a change rate (%) of light transmittance at each wavelength, calculated by the formula 2, satisfies the following conditions (Q) to (AA) as set forth). If there is any difference between the product of ‘360 in view of ‘665 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975).
11. Claims 4, 6 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Inada et al. (JP 2014-084360 A, machine translation, hereinafter “’360”) in view of Takushi Tsuchiya (JP 2021-017014 A, machine translation, hereinafter “’014”) as applied to claim 1 above, and further in view of Hayashi et al. (JP 2015-063615 A, machine translation, hereinafter “’615”).
Regarding claim 6: The disclosure of ‘360 in view of ‘014 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘360 teaches hydroxyphenyl triazine-based UV absorbers having a maximum absorption wavelength (λmax) of the ultraviolet absorbing agent is in a range from 350 nm to 380 nm (Page 26/34, [0085]). ‘360 in view of ‘014 does not expressly teach the dye is a cyanine dye, wherein, and a maximum absorption wavelength (λmax) of the dye is in a range from 395 nm to 415 nm.
However, ‘615 teaches a barrier molded article having scratch resistance and stretchability in addition to excellent acid resistance and chemical resistance while reducing an environmental load (Page 8/35, [0009]). ‘615 teaches from the viewpoint of design, the barrier layer 13 may contain a pigment such as phthalocyanine pigments having B-band (Soret band) which is a strong absorption in the UV region (~300–400 nm), arising from a π-π* transition in the macrocycle (Page 16/35, [0047]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate pigment or dye of a known material based on its suitability for its intended use is within the level ordinary skill in the art.
12. Claims 4,19 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Inada et al. (JP 2014-084360 A, machine translation, hereinafter “’360”) in view of in view of Iio et al. (JP 2018-132665 A, machine translation, hereinafter “’665”) as applied to claim 1 above, and further in view of Hayashi et al. (JP 2015-063615 A, machine translation, hereinafter “’615”).
Regarding claim 6: The disclosure of ‘360 in view of ‘665 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘360 teaches hydroxyphenyl triazine-based UV absorbers having a maximum absorption wavelength (λmax) of the ultraviolet absorbing agent is in a range from 350 nm to 380 nm (Page 26/34, [0085]). ‘360 in view of ‘014 does not expressly teach the dye is a cyanine dye, wherein, and a maximum absorption wavelength (λmax) of the dye is in a range from 395 nm to 415 nm.
However, ‘615 teaches a barrier molded article having scratch resistance and stretchability in addition to excellent acid resistance and chemical resistance while reducing an environmental load (Page 8/35, [0009]). ‘615 teaches from the viewpoint of design, the barrier layer 13 may contain a pigment such as phthalocyanine pigments having B-band (Soret band) which is a strong absorption in the UV region (~300–400 nm), arising from a π-π* transition in the macrocycle (Page 16/35, [0047]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate pigment or dye of a known material based on its suitability for its intended use is within the level ordinary skill in the art.
Examiner Information
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
08/11/2026
bijan.ahvazi@uspto.gov
Prosecution Insights