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.
Claims 1, 3-15 are pending.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 10 and 15 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 10 and 15 recite a SEBS copolymer as a tackifying resin which is not supported in the present application. Styrene tackifying resins are disclosed (e.g., [0033], [0036], [0039]-[0041] of the present PGPub) but these are never disclosed as being styrene ethylene butylene styrene copolymers.
Claim Rejections - 35 USC § 112(b)/second paragraph
The following is a quotation of 35 U.S.C. 112(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.
Claim(s) 11 is/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 pre-AIA the applicant regards as the invention.
Claim 11 recites a first adhesive force test of the undercoat layer and then a second adhesive force test of the undercoating layer with the antifouling layer, which makes it unclear if the antifouling layer, which is required in claim 1, is present on the undercoat layer in the first test.
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 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.
If 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.
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 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
Claim(s) 1, 3-9, 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (WO 2016163360, cited by Applicant, see U.S. 2018/0079934) in view of Suzuki et al. (U.S. 2009/0301654, hereinafter Suzuki2) in view of Kishimoto (U.S. 2008/0169062).
Regarding claims 1, 3-9, 11-14, Suzuki teaches an undercoat (base) layer between a pressure sensitive adhesive (with a peel force overlapping claim 12, [0020]) and an antifouling layer, wherein the base layer comprising a styrene (i.e., a monovinyl substituted aromatic compound) based thermoplastic elastomer (as in claim 3, 8-9 and 13-14) as a base polymer as well as a polar compound (e.g., an ionomer having a polar group, and/or silane coupling agents with a polar group), which modifies the base polymer by being mixed with it to promote adhesion, as in claims 9 and 14, ([0023], [0027]-[0030], [0043]) as well as a tackifier ([0039]). The amount of the tackifier in the base layer is not disclosed but given that the tackifier is used to impart tackiness, the amount of this additive would have been obvious to adjust to within the range of claim 1 as an art recognized result effective variable in the process of optimizing the degree of tackiness provided to the base layer. Suzuki teaches that the antifouling layer includes a silicone resin with hydrophilic (polyether modified) and hydrophobic (non-reactive straight chain and non-polyether modified) silicone oils (as in claims 4-7) and with the amounts of those oils relative to the overall antifouling layer overlaps claim 1 ([0050], [0053], [0054], [0064], [0076]).
Suzuki teaches all of the above subject matter but does not disclose the particular type of tackifier used in the base layer that directly contacts the antifouling layer. However, Suzuki2 teaches that tackifiers within claim 3 may be used to adhere a base substrate to an antifouling layer (see abstract, [0059], [0107], [0133]-[0134]). Specifically, Suzuki2 teaches “alicyclic petroleum resin” tackifier may be used ([0067]) which is considered another name for alicyclic saturated hydrocarbon resin in [0038] of the present PGPub, as in claim 8 and 13. This obviousness of alicyclic saturated hydrocarbon resin based on the disclosed alicyclic petroleum resin is further reinforced by Kishimoto which also considers alicyclic saturated hydrocarbon resin as an example of an alicyclic petroleum resin tackifier ([0086]) and also because a petroleum resin is inherently a hydrocarbon resin and the only two possibilities (saturated or unsaturated) are both prima facie obvious to try based on the finite number of possibilities.
Thus, it would have been obvious to have used the claimed tackifiers as the tackifiers in Suzuki because Suzuki2 teaches that the claimed tackifiers are suitable examples of the generic tackifier sought by Suzuki, including the claimed alicyclic saturated hydrocarbon resin tackifier based on Suzuki2’s disclosure of “alicyclic petroleum resin” in view of Kishimoto’s teachings (that alicyclic saturated hydrocarbon resin is an example of such a tackifier) and the prima facie obviousness of trying a saturated alicyclic petroleum resin tackifier based on the finite number of possible options. The above obviousness, based on suitability of the claimed compounds as general tackifiers, is made even more obvious by Suzuki2 teaching that such tackifiers are also suitable for providing more specifically tackiness between a substrate and an antifouling layer which is even more specifically relevant to Suzuki. Although the amount of tackifier in claim 3 is already obvious based on Suzuki alone (as explained above), Suzuki2 make the amount of tackifier further obvious as a result effective variable by disclosing that the tackifier assists in adhesion between the antifouling layer and the substrate (and thus the amount also would be obvious to adjust in order to control the degree of such adhesion).
Regarding the adhesive strength/force properties of claim 11, modified Suzuki renders obvious a composition with an overlapping type and amount of ingredients in the base/undercoat layer and the antifouling layer relative to the base/undercoat layer and the antifouling layer in the present application and thus these overlapping embodiments of modified Suzuki would also inherently have the properties of claim 11. It is noted that Suzuki teaches overlapping base and antifouling layer thicknesses relative to the present disclosure ([0041], [0093]).
Furthermore, Suzuki teaches coupling agents that are intended to improve adhesion to the subsequently applied antifouling layer such that optimization of the degree of adhesive force between the base and antifouling layer would be obvious to adjust as recognized by Suzuki.
Furthermore, claim 11 makes no limitations on the conditions of the first and second force tests, such that the claimed values would be even more obvious based on appropriately selected parameters for those tests.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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