Unrrep States PATENT AND TRADEMARK OFFICE TiT75.262 omar Satomi Yamamoto Te9PLsOTUSE 07 BARLOW, JOSEPHS & HOLMES, LTD. a 101 DYER STREET TO DAVID STH FLOOR = PROVIDENCE, RI 02903 anu APER NUMBER o1asn0i0 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. ‘The time period for reply, if any, is set in the attached communication PTOL-9OA (Rev.0407)‘Application Wo. ‘Applicantsy +11778,262 YAMAMOTO ET AL. Office Action Summary Examiner ARtUnit David J. Joy 1794 = The MAILING DATE ofthis comimunication appears on the cover sheet withthe correspondence address ~ Period for Reply A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS, WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION. + Exons n may be malas under he prose 37 CFR 1.1358). 0 even weve, yap be my Fd shor SX. (6) MONTHS ftom ae concn ~N pore frre spoctod are, mara sory Pos Wi apply ar wt xp SK) HONTHS fom orang dat of tis camnieabon. Fae oop wrth str xened pore ro wit y tas eae be apeatn to btame ABANDONED (USC. 135) fyi ecto y tees te an bro mons ae te main ate isconmuiato, een Way fe, ay ede sy Samed atone tom aso Soe 37 CFR 70H), Status 1)E21_ Responsive to communication(s) filed on 30 September 2009. 2a) This action is FINAL. 2b) This action is non-final 3) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 483 0.6. 213, Disposition of Claims 4B Claims) 4 and 9-14 isfare pending inthe application 4a) Of the above claims) ___lvare withdrawn from consideration. 5) Claim(s) is/are allowed. 6)B Claim(s) 1 and 3-14 isiare rejected 7) Claim(s)___is/are objected to 8)C] Claim(s) are subject to restriction andor election requirement. Application Papers 9)L1 The specification is objected to by the Examiner. 10) The drawing(s) fled on 10 July 2007 islare: a)BZ] accepted or b)[] objected to by the Examiner. Applicant may not request that eny objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a). Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d). 14) The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152. Priority under 35 U.S.C. § 119 12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a}(d) or (f). a)CIAN by] Some * }L None of: 1.1 Certified copies ofthe priority documents have been received 2.0 Centified copies of the priority documents have been received in Application No. _. 3.01 Copies of the certified copies of the priority documents have been received in this National Stage pplication from the International Bureau (PCT Rule 17.2(a)). * See the altached detailed Office action for a list of the certified copies not received. Attachment(s) 1) Notee of References Cied PTO-882) 4) Diner Summary (°70-418) 2) Lote of brateperso's Patent Drawing Review (PTO-948) Proper Njs)Mal ate 2) C1 tnrmaton Disclosure Statements) PTOISBIO8) ©) [Z Notice of nirmal Patent Apicaon Paper No(s) Dao 6) Cotter PTOL-826 (Rev. 08-08) Office Action Summary Patt of Paper No Mail Date 20100113Application/Control Number: 11/775,262 Page 2 Art Unit: 1794 DETAILED ACTION 1, Claims 1 and 3-14 are pending as amended on September 30, 2009, with Claim 2 having been cancelled and Claim 14 having been newly-added. 2. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Response to Amendment 3. Applicant’s amendments to the specification and to Claim 1, filed September 30, 2009, with respect to repla the erroneous use of “um” instead of “yum” as units of micrometers have been fully considered and are corrective. As such, the objections to both the specification and to Claim 1 have been withdrawn. Itis also noted that the cancellation of Claim 2 renders the previously recited objection to the claim moot. Applicant's amendment to Claim 3, filed September 30, 2009, renders the previously recited rejection under 35 U: §112 moot. Therefore, the rejection of Claims 3, 7 and 11 under 35 U.S.C. §112, second paragraph, as being indefinite, has been withdrawn.Application/Control Number: 11/775,262 Page 3 Art Unit: 1794 5. Applicant's amendment to Claim 1, filed September 30, 2009, obviates the previously recited rejection under 35 U.S.C. $102. As such, the rejection of Claim 1 under 35 U.S.C. §102(b), as being anticipated by the U.S. Patent Application Publication of Kobayashi et al. (2003/0180562; hereinafter “Kobayashi”) has been withdrawn. 6. The citation to the U.S Patent Application Publication of Fitch et a. (2006/0154050; hereinafter “Fitch”) was in error. In the rejection of Claims 2-13 under 35 U.S.C. §103(a), in the nor inal rejection that was mailed on 02 April 2009 the teachings of Fitch were never relied upon in that rejection. It was merely an oversight that the reference to Fitch appeared in the leading paragraph of that rejection. Claim Rejections - 35 USC § 112 7. Claim 14 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claim 14 recites the limitation "the inert particles of the A layer" in Line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examining the amended claims that were filed on September 30, 2009, Examiner believes that Claim 14 was erroneously recited asApplication/Control Number: 11/775,262 Page 4 Art Unit: 1794 being dependent upon Claim 1, and that Claim 14 should have been written as depending upon Claim 3. Claim Rejections - 35 USC § 103 8 Claims 1 and 3-14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kobayashi. 9. Kobayashi teaches a biaxially, oriented laminated polyester film having a total thickness of from 2 to 10 jum, that comprises at least a first polyester layer and a second. polyester layer, as discussed hereinabove. Additionally, Kobayashi teaches that the first polyester layer can include inert particles of cross-linked polystyrene, calcium carbonate, or silica dioxide (see [0037]). Kobayashi also teaches that the second polyester layer can comprise inert particles, such as silica dioxide (see 14 [0037], [0050] and (0 ). In particular, Kobayashi provides that the inert particles in the first, polyester layer can have an average particle diameter that is greater than 0.4 um and less than 0.7 tum, and that the particles are present in an amount of 0,005 to 0.1 weight% (see 414 [0035] and (0042). Additionally, Kobayashi contemplates the relationship between the inert particle content and the roughness of the polyester layers (see 1 [0046}). Further, Kobayashi suggests the nature of the biaxially stretching of theApplication/Control Number: 11/775,262 Page 5 Art Unit: 1794 polyester films, as well as providing the stretching in terms of the Young's moduli, for stretching in both the longitudinal direction and the transverse direction (see 1 [0061]- [0064)). 10. Kobayashi does not specifically teach such properties as the three-dimensional central plane average roughness, the three-dimensional central plan maximum height, the dynamic friction coefficient, the F-5 value in the longitudinal direction of the film, or the heat shrinkage value in the transverse direction of the film, as in instant claims 2- However, such values or relative values are properties which can be easily determined by a person having ordinary skill in the art. With regard to the limitations of the aforementioned properties, absent a clear and complete showing of unexpected results, it is obvious to modify the conditions of a composition because they are merely the result of routine experimentation. ‘The experimental modification of prior art in order to optimize operation conditions (e.g. modifying the particulate content of the film to affect the roughness, and the conditions under which the film is biaxially stretched) fails to render claims patentable in the absence of unexpected results. All of the aforementioned limitations are optimizable as they directly affect the performance of the multilayer polyester film. It would have been obvious to a person having ordinary skill in the art, at the time of invention, to make the biaxially oriented laminatedApplication/Control Number: 11/775,262 Page 6 Art Unit: 1794 polyester film with the limitations of the roughness values, particle sizes and content and stretching conditions, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 USPQ 215 (CCPA 1980) 11. As for the presently claimed limitations that the biaxially oriented laminated polyester film comprise a base film for either a thermal transfer ribbon or for a dye sublimation thermal transfer ribbon, the limitations in Claims 6-13 fail to positively recite any definite structure over that which is taught by Kobayashi. Applicant has merely recited a future intended use for the biaxially oriented laminated polyester film. As such, the claimed limitations are not given substantial patentable weight in the course of construing and examining the claims. Response to Arguments 12. Applicant's arguments filed September 30, 2009 have been fully considered but they are not persuasive. 13. Applicant argues that Kobayashi is devoid of a teaching of the specific roughness values called for the in the present application, and that the claimed values are not simply inherent. However, as can be seen supra, Examiner has withdrawn theApplication/Control Number: 11/775,262 Page 7 Art Unit: 1794 previously recited rejection under 35 U.S.C. $102(b), as being anticipated by Kobayashi. Therefore, Applicant’s arguments as to the applicability of Kobayashi are moot. 14, Applicant also argues that the values set forth in the claims are not obvious because they are the result of exhaustive testing and engineering to create a film with a new and unique structure that a performance that exceeds prior art films. Applicant also asserts that the rejection is a misapplication of KSR Int'l Co. v. Teleflex, Inc. (hereinafter “KSR”), because the KSR case requires some explanation of why Applicants solution is merely obvious to try. Examiner respectfully disagrees with Applicant's assertions. First of all, nowhere in the current rejection under 35 U §103 does Examiner assert that it would be obvious to fry to create the instant invention. In fact, Examiner never relied upon the ruling in KSR in making the rejection. Secondly, optimization has wholly unrelated to the notion that it would have been obvious to try an experimental method. Every plastic film possesses a roughness quality, and in transfer applications the roughness will be recognized as being a result-effective parameter, since it is desirable that the transfer material be more adhereable to the transfer object than to the substrate off of which it comes. Experimental modification of prior art in order to optimize operating conditions fails to render claims patentable in the absence of a proper showing of unexpected results. In re Aller, 220 F.2d 454, 105 USPQ 233 (C.C.P.A. 1955). To date, Applicant has failed to provide any dispositiveApplication/Control Number: 11/775,262 Page 8 Art Unit: 1794 showing of unexpected results or that the claimed roughness values are result-effective parameters. Conclusion 15. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CER 1.136(a). 16, A shortened statutory period for reply to this final a set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CER 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action. 17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to David J. Joy whose telephone number is (571) 272-9056, The examiner can normally be reached on Monday - Friday, 7:00 AM - 3:30 PM EST.Application/Control Number: 11/775,262 Page 9 Art Unit: 1794 18. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mark Ruthkosky can be reached on (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 19. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. {DMI Examiner, Art Unit 1794 01/13/2010 [Jennifer McNeil/ Supervisory Patent Examiner, Art Unit 1794