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 .
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 11 and 15 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.
Claim 11 recites “the colored dye”. There is a lack of antecedent basis for this limitation in the claim. The examiner respectfully submits that claim11 should depend from claim 10.
Claim 15 recites “the exterior cover”. There is a lack of antecedent basis for this limitation in the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The multilayer structure recited in claim 13 is encompassed by parent claim 12. As such, claim 13 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 4, 8, 9, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kliesch et al. (US 20080107879 A1) and as evidenced by Synonyms of term “pigment” from Cambridge Dictionary.
As to claim 1, Klieschi discloses a white coextruded, oriented polyester film (multilayer structure) comprising a base layer (B) that is white and comprises titanium dioxide (TiO2) pigments (white layer comprising TiO2) (abstract, 0002, 00012), and a first outer layer (A) (first pigment layer) comprising TiO2 and SiO2 (extender pigment) (0019, 0025, Example 1 at 0060, Example 5 at 0095) and a second outer layer (C) (second pigment layer) comprising TiO2 and SiO2 (extender pigment) (0019, Example 1 at 0062, Example 5 at 0097).
Further, as to the claimed “extender pigment” the examiner respectfully submits that the claimed invention does not specify extender pigment. Kliesch as set forth previously discloses SiO2 (0025, Example 1, Example 5). The present application discloses SiO2 as an example of extender pigment (see 0091 of US Patent Application Publication 20250188295 A1 of the present application). As such, Kliesch teaches claimed extender pigment in the first and the second pigment layers as claimed.
As to claim 4, Klieschi discloses an example of layer A containing 14 wt% of TiO2 (0060), which is within the claimed range of 10-40 wt% of TiO2 in the first pigment layer. See MPEP 2131.03 (I).
As to claim 8, Kliesch discloses an example of three-layer (A/B/A) film with a total thickness of 50 μm, Further, Kliesch discloses that the thickness of both of the outer layers (A) and (C) are 4 μm (Example 1 at 0065). Thus, a person having ordinary skill in the art would recognize that the thickness of the second pigment layer in Kliesch of 4 μm is less than the thickness (42 μm) of the base layer (B) (white layer). The base layer thickness of 42 μm calculated as = total thickness of the film of 50 μm – Total thickness of outer layer (C) and outer layer (A) of 8 μm).
As to claim 9, Kliesch as set forth previously discloses the thickness of the first pigment layer and the second pigment layer of 4 μm, and the base layer thickness of 42 μm.
As to claim 10, the claimed invention does not set forth specific colored dye. Kliesch discloses a second pigment layer further comprising coated mica pigment (0016) such as LAZERFLAIR®820 (Example 5 at 0095 or 0097, and also see 0018). The examiner submits that the term “dye” is synonyms with “pigment” or “color” as evidenced by Cambridge Dictionary. As such, the coated mica pigment disclosed by Kliesch meets claimed colored dye.
As to claim 11, Kliesch discloses 2 wt% of the colored dye LAZERFLAIR®820 (Example 5 at 0095 or 0097), which is within the claimed range of 0.1 to 10 wt%.
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.
Claims 2, 3, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kliesch et al. (US 20080107879 A1) and as evidenced by Synonyms of term “pigment” from Cambridge Dictionary as applied to claim 1 above.
Kliesch does not explicitly disclose the relative content of TiO2 (claims 2, 3) and the relative content of extender pigment (claim 6). However, as set forth previously, Kliesch discloses general condition of claims. Specifically, Kliesch discloses a first and second pigment layer each containing TiO2 and extender pigment, and a white layer containing TiO2. The examiner respectfully submits that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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 MPEP 2144.05 (II).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed amount of TiO2 and extender pigment, motivated by the desire to adjust the degree of whiteness of the multilayer white film of Kliesch by adjusting the amount of TiO2 and extender pigments in the white film.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kliesch et al. (US 20080107879 A1) and as evidenced by Synonyms of term “pigment” from Cambridge Dictionary as applied to claim 1 above, and further in view of Matsui et al. (JP-H10180969A; machine translation provided by the examiner).
Kliesch is silent as to disclosing the amount of TiO2 in the white layer as claimed.
Matsui discloses a white polyester film with a central layer B and a layer S on both the front sides (0009). Further, Matsui discloses that the central layer B contains titanium dioxide. Moreover, Matsui discloses that the content of the titanium dioxide in the central layer B is the range of from 20 wt% to 60 wt% in order to balance the whiteness, hiding power, and strength of the film (page 5). The claimed range of TiO2 content of 40-70 wt% overlaps or lies within the range disclosed by Matsui such that a prima facie case of obviousness exists. See MPEP 2144.05 (I).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the amount of TiO2 as claimed in the white layer and as rendered obvious from Matsui, motivated by the desire to form a multilayer structure having balance of whiteness, hiding power, and strength.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kliesch et al. (US 20080107879 A1) and as evidenced by Synonyms of term “pigment” from Cambridge Dictionary as applied to claim 1 above, and further in view of Jacobs et al. (US 6245271 B1).
Kliesch discloses extender pigment such as SiO2 (0025, Example 1 and Example 5 as previously disclosed). However, Kliesch is silent as to disclosing the claimed amount of extender pigments.
Jacobs discloses process for die extrusion of polymers and resulting products (column 1, lines 5-10) such as multilayer films (column 3, lines 5-25). Jacobs further discloses that it is desirable to add anti-block material to improve processing and/or prevent unwanted adhesion of a tacky skin layer to other surfaces. Further, Jacobs discloses that it is desirable to add from 0 to about 10% (wt%) anti-block material such as ground silica (silicon dioxide) to the skin layers (column 5, line 62 to column 6, line 5).
Kliesch as set forth previously discloses SiO2 (silica) as an example of antiblocking agent (extender pigment) (0025, Example 1 and Example 5) in the first pigment layer and the second pigment layer. The claimed amount of extender pigment of e.g. 5-30 wt% in the second pigment layer overlaps or lies within the range disclosed by Jacobs (from 0 to 10%) such that a prima facie case of obviousness exists.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at a claimed content of the extender pigment (SiO2) in the first or the second pigment layer of Kliesch as rendered obvious from Jacobs, because Kliesch desires antiblocking agent such as silica in the first and the second pigment layer, and doing so would allow unwanted adhesion of the pigment layers of Kliesch to other surfaces.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Akamine et al. (US 6088025) in view of Kliesch et al. (US 20080107879 A1) and as evidenced by Synonyms of term “pigment” from Cambridge Dictionary.
As to claims 12 and 14, Akamine discloses a terminal device with built in image sensor as an information appliance to be used in place of a memo pad capable of taking in hand-written characters or pictures or documents of printed matter, or the like, in a portable terminal device, personal computer, and the like (column 1, lines 5-10). Further, in Figures 11 and 12, Akamine discloses tablet means 20 with a lid unit 16 (claim 12 “exterior cover”). According to Akamine, it is intended to erase easily the characteristics and pictures written in the tablet means 20. Further, according to Akamine, in the writing areas of the lid unit 16 (claim 15 “exterior cover on a rear surface”), a writing film 50 formed of a white polyester film is fixed at one side by a detachable film holder 52 (base material layer) and a black metal plate 53 (shielding layer) is provided between the writing film 50 and the lid case (column 7, lines 35-45).
As to claims 12-15, Akamine is silent as to disclosing the claimed multilayer structure.
Kliesch discloses a white coextruded, oriented polyester film (multilayer structure) comprising a base layer (B) that is white and comprises titanium dioxide (TiO2) pigments (white layer comprising TiO2) (abstract, 0002, 00012), and a first outer layer (A) (first pigment layer) comprising TiO2 and SiO2 (extender pigment) (0019, 0025, Example 1 at 0060, Example 5 at 0095) and a second outer layer (C) (second pigment layer) comprising TiO2 and SiO2 (extender pigment) (0019, Example 1 at 0062, Example 5 at 0097). As to the claimed “extender pigment” the examiner respectfully submits that the claimed invention does not specify extender pigment. Kliesch as set forth previously discloses SiO2 (0025, Example 1, Example 5). Further, the present application discloses SiO2 as an example of extender pigment (see 0091 of US Patent Application Publication 20250188295 A1 of the present application). As such, Kliesch teaches claimed extender pigment in the first and the second pigment layers as claimed.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select a multilayer white polyester film of Kliesch and use it in the invention of Akamine as the white polyester film, because Akamine desires a white polyester film and the polyester film of Kliesch has high whiteness on at least one side, low transparency, and improved laser-cuttability (0007 of Kliesch).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Boyd et al. (US 20070264468 A1) discloses coextruded multilayer colored films. Yokoyama et al. (US 7402336 B2) discloses a pressure sensitive adhesive tape for fabricating LCD having colored layers (abstract and column 1, lines 5-15).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 September 24, 2026
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