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 Rejections - 35 USC § 112
Claims 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, this claim recites “a surface-protective film, comprising: a base material; and an adhesion layer laminated on the based material, wherein an absolute value of a maximum valley depth (Sv) of a surface of the adhesion layer on an opposite side to the base material is 500 nm or less, ….” It is noted that the specification of the claimed invention describes in paragraph 11, that the absolute value of the maximum valley depth (Sv) of the surface 3a is typically 5 nm or more. However, claim 1 does not define the lower limit of the absolute value of the maximum valley depth. Thus, the lower limit of the absolute value of the maximum valley depth cannot be clearly determined from the recitation of claim 1, rendering claim 1 indefinite. In addition, in view of paragraphs 16-17, 76 and Table 1 of the specification, it can be reasonably inferred that the type of the base material utilized would affect the optical detection observed through the surface-protective film. However, it is unclear what exactly constitutes the claimed type of the base material, rendering the claimed invention too broadly defined to be supported by the specification. Clarification is required.
Regarding claim 3, it is understood from claim 1 that the surface-protective film is formed by laminating an adhesive layer on a base material, meaning that one surface of the surface-protective film is the adhesive layer and the other surface is the base material. However, claim 3 recites that the surface-protective film is subjected to microscopic observation. It is unclear whether the adhesive layer-side or the base material-side of the surface-protective film is oriented toward the objective lens of the microscope during such observation. Clarification is required.
Claims not specifically mentioned above are rejected by virtue of their dependency on a rejected claim.
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(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al (TW 201936835) in view of Katami et al (TW202144174).
Regarding claims 1 and 5-6, as far as the claim is understood, Ogawa et al discloses, in paragraph 1 of the specification, that the invention relates to a surface-protective film having an adhesive layer on a film substrate, and an optical member to which the surface-protective film is affixed. It is noted that Ogawa et al discloses, in paragraphs 103 and 104 and Table 1 of the specification, that the surface-protective film of Example 10 comprises a base film (COP, "Zeonor Film ZF-16," manufactured by Zeon Corporation, Japan; corresponding to the claimed base material, and when the base material is subjected to microscopic observation, the number of defects each having a maximum Feret diameter of 10 µm or more being less than 3 in an observation region measuring 100 µm by 100 µm, and the base material having a tear strength of 1 N/mm or more) and an adhesive layer (acrylic polymer A; corresponding to the claimed adhesive layer containing a (meth)acrylic adhesive); that an acrylic adhesive solution was applied to the non-lubricated side of a particle-free polyester film which has a nanoparticle-containing lubrication layer on one side, and heated at 130°C for 2 minutes to form an adhesive layer having a thickness of 10 um; that the release-treated surface of a separator (a polyester film, having a thickness of 25 µm and with one side treated by silicone release) was affixed to the surface of the adhesive layer to obtain a surface-protective film provided with the separator (corresponding to the claimed adhesive layer laminated on the base material). It is noted that Ogawa et al discloses, in claim 4, a surface-protective film according to claim 1 or 2, wherein the adhesive layer contains at least one selected from the group consisting of: acrylic adhesives, urethane adhesives and silicone adhesives (corresponding to the claimed adhesive species). Ogawa et al differs from the claimed invention in that Ogawa et al does not disclose that the absolute value of a maximum valley depth (Sv) of the surface of an adhesion layer opposite to the base material is 500 nm or less. However, it is noted that Katami et al discloses, in paragraph 1, that the invention relates to a laminate. It is further noted that Katami et al discloses, in claim 1 and claim 3, a laminate (including a structure corresponding to the claimed adhesive layer laminated on the base material) having a transparent member, an adhesive layer (corresponding to the claimed adhesive layer), and a decorative film (corresponding to the claimed base material) placed in this order; and that the adhesive layer surface has a maximum height Rz of 600 nm or less. It is further noted that Katami et al discloses, in paragraphs 152, 153 and 156 of the specification, that the adhesive layer preferably has an adhesive face whose maximum height Rz is limited to up to a prescribed value; that by having an adhesive face designed to have a low maximum height Rz, high surface smoothness can be obtained without or with reduced optical distortion; that the adhesive face of the adhesive layer has a maximum height Rz of more preferably about 500 nm or less; and that the maximum height Rz of the adhesive face of the adhesive layer can be adjusted through the surface properties of a release film layered on the adhesive face prior to use, peel strength of the release film to the adhesive layer, and thickness of the adhesive layer. Since the maximum height Rz (and Sz. when extended to a surface) is the sum of a maximum peak height Rp (Sp) and a maximum valley depth Rv (Sv), it can be understood that the Rv (Sv) for the face of the adhesive layer disclosed in Katami et al is 500 nm or less. This corresponds to the claimed absolute value of the maximum valley depth (Sv) of the surface of the adhesive layer opposite to the base material being 500 nm or less. Since Ogawa et al and Katami et al relate to the technical field of a laminate and have commonality in forming a laminate using an adhesive layer and a base material, and since Katami et al teaches that the Rv (Sv) of the surface of the adhesive layer is 500 nm or less, those skilled in the art would be motivated to apply the teaching of the Rv (Sv) of the adhesive-layer surface being 500 nm or less of Katami et al to the surface-protective film disclosed in Ogawa et al, and determine a preferable Sv range through optimization experiments according to practical application or needs. Thus, those skilled in the art would be motivated to combine the technical disclosures of Ogawa et al and Katami et al and such does not provide any unexpected effects.
Regarding claim 2, the limitations therein are disclosed in paragraph 155 of Katami et al.
Regarding claims 3-4, the feature of removing foreign matter of about 1 to 10 µm from the adhesive layer of a surface-protective film is well known in the art and such feature would have been an obvious design choice to one of ordinary skill in the art depending on the needs of particular application and involving only routine skill in the art.
Regarding claim 7, the limitations therein are disclosed in claim 5 of Ogawa et al.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN K PYO whose telephone number is (571)272-2445. The examiner can normally be reached 9:00-5:30 PM.
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/KEVIN K PYO/Primary Examiner, Art Unit 2878
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