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 .
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 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.
Application Status
This is a first action on the merits. A preliminary amendment was filed on 12 May 2025 amending claims 3-5 and 7. Claims 1-7 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 23 December 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings received on 12 May 2025 are acceptable.
Specification
The specification is objected to for the following unclear text:
The values in Table 1 on p. 58 of the specification are jumbled together and are illegible.
The values in Table 2 on p. 60 of the specification are jumbled together and are illegible.
Some of the values in Table 3 on p. 62 of the specification are jumbled together and are illegible. Other values are shown outside of the table and it is unclear where they belong in the table.
The values in Table 5 on p. 64 of the specification are jumbled together and are illegible.
Some of the values in Table 6 on p. 65 of the specification are jumbled together and are illegible. Other values are shown outside of the table and it is unclear where they belong in the table.
The tables should be corrected to be legible without introducing new matter into the disclosure.
Claim Objections
Claim 5 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 5, the claim is awkwardly worded, as it states “… on a surface of the protective layer that is opposite side to the adhesive layer.” The Examiner suggests “…on a surface of the protective layer that is opposite from the side having the adhesive layer.”
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.
Claim 3 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 3, the reference to “the light resistance test” lacks sufficient antecedent basis as no such light resistance test is referred to in claim 1, upon which this claim depends. The Examiner suggests amending the claim to depend on claim 2 which provides proper antecedent basis for this term. See MPEP § 2173.05(e).
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021/065595 A1, or under 35 U.S.C. 103 as being unpatentable over WO 2021/065595 A1. Applicant’s provided translation of WO ‘595 was relied upon for analysis.
Regarding claim 1, WO ‘595 discloses a pressure-sensitive adhesive sheet comprising a surface protective layer A that includes an ultraviolet absorber 1, and an adhesive layer B that includes an ultraviolet absorber 2, see paragraph [0010]. The film layer A may be made of polyolefin resin, preferably polyethylene, see paragraphs [0060-0063].
While WO ‘595 does not specify the spring constant (value resulting from dividing a tensile load obtained when the film is elongated by 10% by an elongation obtained when the film is elongated by 10%) as claimed, WO ‘595 contains the same polyethylene component as disclosed in the present specification, and thus would be expected to have the same material properties including tensile modulus.
Accordingly, WO ‘595 either anticipates the present claim, or it would have been obvious to have formulated the adhesive sheet of WO ‘595 to arrive at a protective film that has the desired claimed properties.
Regarding claim 2, WO ‘595 discloses that the film undergoes a weathering test described at paragraph [0101] which includes being irradiated with UV light for 20 hours under conditions of a black panel temperature of 63 °C and an illuminance of 100 mW/cm2 (1000 W/m2) (note: see p. 35, [0101] of the original document for correct units), followed by a cycle of condensing for 4 hours, and then observing the film after 800 hours. No major changes were observed in appearance.
As WO ‘595 uses the same materials as claimed and undergoes a similar weathering test as recited in claim 2, it is expected that the adhesive film of the reference also meets the claimed maintenance factor property.
The Examiner notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). The Examiner notes that the prior art discloses a surface protective sheet having the same components as the protective film as claimed as described above. Therefore, one of ordinary skill in the art would expect the same or similar properties to arise. Accordingly, the Examiner believes the claimed properties are either anticipated or highly obvious.
Regarding claims 3-4, Both layers A and B include a triazine UV absorber, see [0027] and [0030], which is the same as the preferred UV absorber described in the present specification. Although WO ‘595 does not disclose a high temperature high humidity test as claimed, the reference uses the same materials for the protective layer and adhesive layer as described in the present invention, and as such is expected to meet the claimed yellowing degree property. See above discussion in regards to claim 2.
Regarding claim 5, WO ‘595 teaches that the surface protective layer may be formed of one or more layers, see paragraph [0044], and may be a cured product of ionizing radiation. Suitable ionizing radiation is electron beam radiation, see [0046].
Using a plurality of layers for the layer ‘A’ along with an adhesive layer ‘B’ has the layered structure of A1/A2/B which reads on the protective film including a surface layer (layer A1) opposite to the adhesive layer (layer B) which is formed of an electron beam curable resin.
Regarding claim 6, WO ‘595 also teaches using a primer layer between the surface protective layers ‘A’, see Example 1 at paragraph [0105].
Regarding claim 7, WO ‘595 teaches applying the protective film to an exterior component such as a gatepost, window frame, advertising tower, billboard, vehicle, or playground equipment, see [0002], reading on a structure comprising the protective film.
Claim Rejections - 35 USC § 103
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Igarashi (U.S. Pub. 2015/0218424).
Regarding claim 1, Igarashi discloses a surface protection sheet comprising a layer X (layer 12), intermediate layer 14, layer Y (layer 16), and a pressure-sensitive adhesive layer attached to either layer X or layer Y, preferably layer Y. See FIG. 1 and description at p. 2, [0025-0026]. The resin components of layers X and Y are preferably polyolefin materials such as polypropylene or polyethylene, see p. 3, [0031-0035]. Layer Y and layer X each read on the claimed protective layer and the adhesive layer reads on the claimed adhesive layer.
Igarashi further specifies the elastic modulus of layer X and layer Y (Ex and Ey, respectively), see abstract and p. 4, [0043] and [0044], and their thicknesses tx and ty, see p. 4, [0046-0048]. The product of these two (thickness x elastic modulus) is the spring constant which reads on the value obtained when dividing the tensile load at an elongation by the amount of elongation. For layer X, the product of tx and Ex is preferably 3×103 N/m or greater (3.0 N/mm or greater), which overlaps the claimed range of 3.0 N/mm or less. See p. 4, [0048]. The product of the minimum disclosed thickness 3 microns (see p. 4, [0046]) and minimum elastic modulus 400 MPa (p. 4, [0043]) is 1.2 N/mm which is also within the claimed range. Note: 3 microns is 0.003 mm and 400 MPa is 400 N/mm2; the product of these is 1.2 N/mm.
As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, layer X of Igarashi reads on the claimed surface layer formed opposite of the adhesive layer, when the adhesive layer is disposed on layer Y as is the preferred structure, see FIG. 1 and description at p. 2, [0025-0026]. The layer X may be formed of a polyolefin resin, see [0028-0029] which is capable of being cured by electron beam radiation.
Regarding claim 6, Igarashi discloses an intermediate layer between layers X and Y, see FIG. 1 and description at p. 2, [0025-0026]. This reads on the claimed primer layer.
Regarding claim 7, Igarashi teaches using the protective sheet on a steel plate or synthetic resin plate to protect the plate from receiving damages, see p. 1, [0005]. This reads on the structure including the protective film as claimed.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Igarashi (U.S. Pub. 2015/0218424) in view of Kase (U.S. Pub. 2015/0086782).
Regarding claims 2, 3, and 4, Igarashi is relied upon as described above to teach the protective film of claim 1. The adhesive film may include a UV absorber, see p. 7, [0073]. Igarashi does not specify the maintenance factor of tensile breaking stress or yellowing degree after the claimed test conditions.
Kase also describes a pressure-sensitive adhesive protective film suitable for an outdoor environment, see abstract. The film includes an acrylic pressure-sensitive adhesive layer and a polyolefin base layer which is preferably a polyethylene, see p. 2, [0011] and p. 2, [0012-0014]. The protective film includes a UV absorber such as a triazole UV absorber, see p. 1, [0009] and p. 4, [0054-0055] and the examples in Table 1 on p. 7. Triazole UV absorbers are among the disclosed UV absorbers in the present specification.
Although Kase does not teach the yellowing degree or maintenance factor values as claimed, Kase does teach including the same UV absorber as disclosed in the present specification, and also teaches performing a weathering test at a black panel temperature of 63 °C with 60 W/m2 irradiance for 500 hours with water spraying (and thus the relative humidity is presumed to be 100%), see p. 7, [0110-0111]. These test conditions are similar to, though not exactly those described in the claims. As such, the protective film which contains the same components of a polyolefin backing layer and adhesive having a triazole UV absorber are expected to necessarily possess the same or similar properties including yellowing degree and maintenance value as claimed.
The Examiner notes that the courts have held that where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, “the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Whether the rejection is based on ‘inherency’ under 35 USC 102, or ‘prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). The Examiner notes that the prior art discloses a surface protective sheet having the same components as the protective film as claimed as described above. Therefore, one of ordinary skill in the art would expect the same or similar properties to arise. Accordingly, the Examiner believes the claimed properties are either anticipated or highly obvious.
Igarashi and Kase are analogous as they each disclose adhesive protective films which include UV absorbers. It would have been obvious to have included the UV absorber of Kase as that of Igarashi to arrive at a film having the same components as disclosed to arrive at the claimed invention, as Kase teaches that such a film is suitable for exposure to an outdoor environment even after a weathering test.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Miyoshi (U.S. Pub, 2021/0266678) describes in paragraph [0170] that the spring constant is the value obtained by multiplying a material thickness by its modulus.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached on (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
