DETAILED ACTION
This is an Office action based on application number 18/955,030 filed 24 July 2026, which is a continuation of PCT/JP2023/017540 filed 10 May 2023, which claims priority to JP2022-083676 filed 23 May 2022. Claims 1 and 3-12 are pending. Claim 2 is canceled.
Amendments to the claims, filed 21 November 2024, have been entered into the above-identified application.
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 § 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 1, 3-6, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hackfort et al. (US Patent Application Publication No. US 2018/0345637 A1) in view of Nakada et al. (US Patent Application Publication No. US 2018/0311941 A1) (Nakada).
Regarding instant claims 1 and 8:
Hackfort discloses a multi-layer polymer film comprising a middle layer A and covering layers B and C arranged above and below the middle layer A, wherein the covering layers B and C comprising at least one polyhydroxyalkanoate (Claim 1).
Said layer A meets the claimed substrate layer
Said layers B and C meet the claimed resin layer (D).
Hackfort further discloses that the polyhydroxyalkanoate is inclusive of poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (Claim 5).
Hackfort further discloses that the film has a total thickness of 10-80 μm and covering layers B and C make up 10 to 70% of the thickness (paragraphs [0081-0084]). Given the total thickness of the film and percent thickness of the covering layers B and C, Hackfort discloses a thickness range for each of covering layers B and C that includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Hackfort further discloses that the polymer film comprises additional layers inclusive of adhesive layers arranged between the middle layer and a covering layer (paragraph [0102]).
Hackfort further discloses that layers A, B, and C comprise plasticizers (paragraph [0067]).
Hackfort does not explicitly disclose the specific bonding layer (B) and the amount thereof.
However, Nakada discloses a composition acrylic block copolymers that exhibit excellent adhesive properties with respect to adherends that a include plasticizer-containing polymer (paragraph [0002]).
Nakada further discloses that the acrylic block copolymer includes at least one polymer block (A) and at least one polymer block (B) (paragraph [0049]).
Nakada further discloses that the glass transition temperature (Tg) of the polymer block (A) is preferably 50 to 150° C (paragraph [0053]).
Nakada further discloses that the glass transition temperature (Tg) of the polymer block (B) is -70 to 30°C (paragraph [0067]).
Therefore, Nakada encompasses an embodiment wherein the block copolymer comprises polymer blocks having glass transition temperatures from 20 to below 90°C, wherein the entirety of the block copolymer must have a similar glass transition temperature.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the composition of Nakada in the adhesive layer of Hackfort. The motivation for doing so would have been that such a composition has excellent adhesive properties with respect to adherends that include plasticizer-containing polymers.
As to the coat weight of the adhesive, it is the Examiner’s position that it is within the ambit of one of ordinary skill in the art to optimize the amount of adhesive used in the multi-layer film to optimize the intended use of the adhesive layer (i.e., to bond middle layer A to covering layers B and C).
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). See MPEP § 2144.05(II).
Therefore, it would have been obvious to combine Nakada with Hackfort to obtain the invention as specified by the instant claims.
Regarding instant claim 3:
Nakada further discloses that the acrylic block copolymer may comprise other polymer blocks inclusive of those prepared from styrene (paragraph [0072]).
The disclosure of “may comprise” indicates that a styrene block is optional, i.e., present in amounts from 0 and greater, which includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 4:
Nakada further discloses that the polymer block (A) is composed of methyl methacrylate (paragraph [0050]).
Nakada further discloses that the content of the polymer block (A) in the acrylic block copolymer is 5 to 95 mass % (paragraph [0083]), which is construed to overlap or include the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 5:
Nakada further discloses that the acrylic polymer composition further comprises a tackifying resin in an amount of 1 to 100 parts by mass per 100 parts by mass of the acrylic block copolymer to impart adhesiveness (paragraph [0097]), which includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 6:
Nakada further discloses that the tackifying resin is selected from rosin-based resins, terpene-based resins, styrene-based resins, coumarone-indene-based resins (paragraph [0097]).
Regarding instant claims 9:
Hackfort further discloses that the covering layers B and C are produced by extrusion (paragraph [0104]). Such a disclosure implies a laminate production method wherein the covering layers B and C are extruded onto a middle layer A further comprising an adhesive layer to produce the disclosed multi-layer adhesive.
Regarding instant claim 10:
Hackfort further discloses that the polyhydroxyalkanoates having melting points in the range of from 100 to 190° C (paragraph [0041]). Hackfort further discloses exemplified embodiments wherein the melt temperature at the die openings is 163 °C and 133 °C (paragraph [0127 and 0140]). Therefore, Hackfort is construed to encompass embodiments wherein the resin temperature immediately after melt extrusion is in the range from the melting point to less than 165 °C as required by the claim.
Regarding instant claim 11:
The “thermal lamination” recited by the claim is an optional component of parent claim 9. Therefore, since Hackfort meets the positively recited extrusion lamination, Hackfort meets the optional limitations required by the instant claim.
Regarding instant claim 12:
Hackfort further discloses that molded parts are produced from the multi-layer polymer films (paragraph [0001]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hackfort in view of Nakada as applied to claims 1 and 7 above, and further in view of Ishiguro et al. (US Patent Application Publication No. US 2003/0175512 A1) (Ishiguro).
Regarding instant claim 7:
Hackfort in view of Nakada discloses the multi-layer polymer film comprising the tackifying resin-containing acrylic composition as cited in the rejection of claims 1 and 5, above.
Hackfort in view of Nakada does not explicitly disclose the claimed weight-average molecular weight of the tackifying resin.
However, Ishiguro discloses an acrylic pressure-sensitive adhesive composition comprising an acrylic polymer and a tackifier (paragraph [0018]).
Ishiguro further discloses that the tackifier has a weight-average molecular weight of 1000-6000 because when a tackifier has a weight-average molecular weight that is too high, the entire pressure-sensitive adhesive becomes hard, and the effect of a tackifier becomes less, which may cause cohesive failure (paragraph [0045]). The weight-average molecular weight of Ishiguro overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claim, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the tackifying resin of Hackfort in view of Nakada has the weight-average molecular weight described by Ishiguro. The motivation for doing so would have been to prevent cohesive failure of the adhesive.
Therefore, it would have been obvious to combine Ishiguro with Hackfort in view of Nakada to obtain the invention as specified by the instant claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 07/24/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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