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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: Lacquer coated adhesive film.
The disclosure is objected to because it fails to show figures 1-3 as described in the specification at pages 5-6. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 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.
In claim 1, the phrase “in particular” renders the claim indefinite because it is unclear whether the limitation following the phrase is part of the claimed invention. See MPEP § 2173.05(d).
In claim 2, “the particles” has no antecedent basis (note that “pigments” is recited in claim 1). In addition, the term “preferably” renders the claim indefinite because it is unclear whether the limitation following the term is part of the claimed invention. See MPEP § 2173.05(d).
Claim 3 suffers the same deficiency of claim 2 with regards to the term “preferably”.
In claim 5, “the inorganic pigments” has no antecedent basis (Note that “inorganic pigments” is recited in claim 4).
Claim 6 suffers the same deficiency of claim 2 with regards to the term “preferably”.
Other claims are deemed indefinite in view of their dependence on claim 1.
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.
Claims 1-5 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over ONO (US-4822670).
Claim 1: Ono teaches an adhesive sheet comprising a substrate and a lacquer coating, i.e. primer resin layer containing pigments with an average diameter larger than the layer thickness of the lacquer film (Ono, col. 2, lines 13-22; col. 3, lines 56-59 and 65-69; and col. 4, lines 42-46). The substrate includes a plastic material (Ono, col. 3, lines 46-52). As Ono teaches substrate being paper or plastic material as equivalent, it would have been obvious as matter of choice to select plastic material.
Claim 2: Ono teaches the diameter of the pigments be from 5 to 100 mm (col. 4, lines 43-46) which overlaps the claimed ranges of 2.0 - 12 µm and 4-6 µm.
Claim 3: Ono teaches the binder be present from 80 to 70 wt% and thus the content of the pigment becomes 20 to 30 wt% (col. 2, lines 62-68) which is within the claimed ranges of 1-50% and 10-30%..
Claims 4-5: Ono teaches the pigments be organic or inorganic pigments (col. 3, lines 105-19 and col. 4, lines 57-60) wherein the inorganic pigments are selected from white pigments (i.e. zinc oxide, titanium dioxide and silica), minerals (i.e. calcium carbonate and clay), metal effect pigments (i.e. lead carbonate, magnesium oxide).
Claims 7-8: The lacquer coating is a primer layer which is an adhesion promoter comprising ethylene-acrylic acid copolymer (Ono, paragraph bridging col. 3 and 4).
Claim 9: Ono teaches the plastic substrate comprising polypropylene, polyethylene, polycarbonate, polyvinyl chloride and polyvinylidene fluoride.
Claim 10: Ono teaches the plastic substrate comprises polyester which encompasses polyethylene terephthalate (PET) which is the most used polyester substrate in the art.
Claim 11: Ono teaches the lacquer coating be coated on both sides of the substrate, i.e. “at least on one side of a substrate” (col. 2, lines 13-16).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOA (Holly) LE whose telephone number is (571)272-1511. The examiner can normally be reached Monday to Friday, 10:00 am to 7:00 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, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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HOA (Holly) LE
Primary Examiner
Art Unit 1788
/HOA (Holly) LE/Primary Examiner, Art Unit 1788
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