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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 27-28, 42-45, and 47-48 are rejected under 35 U.S.C. 103 as being unpatentable over Vandeparre et al. (US 2021/0031499 A1, “Vandeparre”) in view of McGuire, Jr. (US 2008/0286576 A1, “McGuire”).
With respect to claims 27 and 48, Vandeparre discloses a multilayer coating having the structure shown below, comprising a protective layer 5 made from polyurethane ([0038]), an at least partially crosslinked polyurethane top coat 4 which is only slightly cross-linked ([0028], [0033]), a facestock layer 3 made from polyurethane ([0028], [0037]), and an adhesive layer 2 ([0028]). The protective layer 5 corresponds to the polyurethane-based topcoat layer; the at least partially crosslinked polyurethane top coat 4 corresponds to the claimed boundary layer comprising polyurethane; the facestock layer 3 corresponds to the claimed carrier layer comprising a polyurethane. The protective layer 5 (i.e., topcoat layer) has a thickness of 1-30 µm ([0039]). As can be seen in the figure below, the protective layer 5 (i.e., topcoat layer) is an outwardly exposed, exterior layer. The adhesive layer 2 is an acrylic-based adhesive and is a pressure-sensitive adhesive layer ([0034]).
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While Vandeparre discloses the polyurethane top coat 4 (i.e., boundary layer) is at least partially crosslinked and being only slightly cross-linked ([0033]), Vandeparre does not disclose wherein the polyurethane top coat 4 (i.e., boundary layer) is essentially uncrosslinked.
McGuire teaches protective sheets comprising a topcoat layer, a carrier layer, and an adhesive layer ([0031]). The topcoat layer is made from polycarbonate-based polyurethane ([0018], [0033]). The topcoat layer (i.e., boundary layer) is essentially uncrosslinked ([0017]). McGuire further teaches the use of an uncrosslinked polyurethane topcoat layer (i.e., boundary layer) because the sheets are significantly more extensible than sheets having a crosslinked topcoat and that the benefits of having an uncrosslinked topcoat layer which results in significantly improved extensibility far outweigh the benefits found in conventional crosslinked topcoat layers ([0035]).
Vandeparre and McGuire are analogous inventions in the field of polyurethane topcoat layers (i.e., polyurethane boundary layers).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the crosslinked polyurethane topcoat (i.e., boundary layer) of Vandeparre with the essentially uncrosslinked polycarbonate-based polyurethane topcoat layer of McGuire since uncrosslinked topcoats have significant benefits over crosslinked topcoats with respect to extensibility (McGuire, [0035]).
While there may be no explicit disclosure from Vandeparre in view of McGuire regarding the M100 modulus of the boundary layer at 60°C being at least about 60% of the M100 modulus of the boundary layer at 25°C, given that Vandeparre in view of McGuire discloses an identical boundary layer made from identical materials as that presently claimed (see instant specification, [00066], which states the polyurethane of McGuire is useful as the boundary layer of the present invention), then the boundary layer would necessarily inherently have an M100 modulus at 60°C which is at least about 60% of the M100 modulus of the boundary layer at 25°C as presently claimed.
Similarly, while there may be no explicit disclosure regarding the M10 modulus of the boundary layer being greater than the M10 modulus of the carrier layer, given that the boundary layer of Vandeparre in view of McGuire is made from identical materials as that of the present invention (see instant specification, [00066], which states the polyurethane of McGuire is useful as the boundary layer of the present invention) and the carrier layer of Vandeparre in view of McGuire is made from identical materials as that of the present invention (see instant specification, [00031], which discloses the carrier layer of the present application are polyurethane-based; see also [0037] of Vandeparre, which discloses the layer 3, i.e. carrier layer, is a polyurethane-based layer), then it is clear the M10 modulus of the boundary layer would necessarily inherently be greater than the M10 modulus of the carrier layer.
Regarding the facestock layer 3 (corresponding to the claimed carrier layer comprising a polyurethane as set forth above) being a web-polymerized layer, there is no disclosure from Vandeparre in view of McGuire of this limitation. However, this is a process limitation in a product claim. It is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See also MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that Vandeparre in view of McGuire meets the requirements of the claimed structure, Vandeparre in view of McGuire clearly meets the requirements of the present claims.
With respect to claim 28, while there may be no explicit disclosure from Vandeparre in view of McGuire regarding the M100 modulus of the boundary layer at 60°C being at least about 70% of the M100 modulus of the boundary layer at 25°C, given that Vandeparre in view of McGuire discloses an identical boundary layer made from identical materials as that presently claimed (see instant specification, [00066], which states the polyurethane of McGuire is useful as the boundary layer of the present invention), then the boundary layer would necessarily inherently have an M100 modulus at 60°C which is at least about 70% of the M100 modulus of the boundary layer at 25°C as presently claimed.
With respect to claim 42, while there may be no explicit disclosure from Vandeparre in view of McGuire regarding the M10 modulus of the top coat layer 4 (i.e., boundary layer) being at least about 20% greater than the M10 modulus of the protective layer 5 (i.e., topcoat layer), given that the boundary layer of Vandeparre in view of McGuire is made from identical materials as that of the present invention (see instant specification, [00066], which states the polyurethane of McGuire is useful as the boundary layer of the present invention) and the topcoat layer of Vandeparre in view of McGuire is made from identical materials as that of the present invention (see instant specification, [00040], which discloses the topcoat is a polyurethane-based material; see also Vandeparre [0038], which discloses the protective layer 5, i.e. topcoat layer, is made from polyurethane), then it is clear the M10 modulus of the boundary layer would necessarily inherently be at least about 20% greater than the M10 modulus of the topcoat layer as presently claimed.
With respect to claim 43, Vandeparre in view of McGuire does not disclose wherein the protective layer 5 (i.e., topcoat layer) is laminated to the top coat layer 4 (i.e., boundary layer). However, this is a process limitation in a product claim. It is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that Vandeparre in view of McGuire meets the requirements of the claimed structure, Vandeparre in view of McGuire clearly meets the requirements of the present claims.
With respect to claim 44, Vandeparre in view of McGuire does not disclose wherein the protective layer 5 (i.e., topcoat layer) is formed by direct coating onto to the top coat layer 4 (i.e., boundary layer). However, this is a process limitation in a product claim. It is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that Vandeparre in view of McGuire meets the requirements of the claimed structure, Vandeparre in view of McGuire clearly meets the requirements of the present claims.
With respect to claim 45, while there may be no explicit disclosure from Vandeparre in view of McGuire regarding the M10 modulus of the top coat layer 4 (i.e., boundary layer) being at least about 50% greater than the M10 modulus of the protective layer 5 (i.e., topcoat layer), given that the boundary layer of Vandeparre in view of McGuire is made from identical materials as that of the present invention (see instant specification, [00066], which states the polyurethane of McGuire is useful as the boundary layer of the present invention) and the topcoat layer of Vandeparre in view of McGuire is made from identical materials as that of the present invention (see instant specification, [00040], which discloses the topcoat is a polyurethane-based material; see also Vandeparre [0038], which discloses the protective layer 5, i.e. topcoat layer, is made from polyurethane), then it is clear the M10 modulus of the boundary layer would necessarily inherently be at least about 50% greater than the M10 modulus of the topcoat layer as presently claimed.
With respect to claim 47, while there may be no explicit disclosure from Vandeparre in view of McGuire regarding the M100 modulus of the top coat layer 4 (i.e., boundary layer) decreasing at a slower rate as temperature is increased as compared to behavior exhibited by the facestock layer 3 (i.e., carrier layer) when similarly tested, given the boundary layer of Vandeparre in view of McGuire is made from identical materials as that of the present invention (see instant specification, [00066], which states the polyurethane of McGuire is useful as the boundary layer of the present invention) and the carrier layer of Vandeparre in view of McGuire is made from identical materials as that of the present invention (see instant specification, [00031], which discloses the carrier layer of the present application are polyurethane-based; see also [0037] of Vandeparre, which discloses the carrier layer is a polyurethane-based layer), then it is clear the M100 modulus of the boundary layer would necessarily inherently decrease at a slower rate as temperature is increased compared to behavior exhibited by the carrier layer when similar tested.
Response to Arguments
Due to the amendments to claims 27 and 48, the objections to claims 27 and 48 are withdrawn.
Due to the amendments to claims 27 and 48, the 35 U.S.C. 112(a) rejections of claims 27-28, 42-45, and 47-48 are withdrawn.
Applicant’s arguments filed 10 November 2025 have been fully considered, but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections, Applicant argues the data found in the specification as originally filed is commensurate in scope with the present claims, such that the data and claims demonstrates unexpectedly superior results. Applicant further argues Vandeparre does not disclose an essentially uncrosslinked boundary layer as presently claimed. Applicant further argues the combination of Vandeparre with McGuire relies on improper hindsight reasoning. The examiner respectfully disagrees for the following reasons.
In response to Applicant’s argument that the data in the specification as originally filed demonstrates unexpectedly superior results, this is not found persuasive because the data is not commensurate in scope with the claims for the following reasons.
Firstly, the Examples relate to a web-polymerized polyurethane carrier layer having a thickness of 5.7 mils (instant specification, [00090]) made from an unspecified polyisocyanate and an unspecified polyol having an unspecified molecular weight, whereas the present claims are broadly drawn to any web-polymerized carrier layer comprising any polyurethane having any thickness. There is no data regarding the M10 modulus of the boundary layer.
Secondly, the Examples relate to a polycarbonate-based polyurethane boundary layer present in an amount of 11 g/m2 (GSM) (instant specification, [00090]) made from an unspecified polycarbonate polyol and an unspecified polyisocyanate having an unspecified molecular weight, whereas the present claims are broadly drawn to any essentially uncrosslinked boundary layer comprising any polycarbonate polyurethane. There is no data provided in the Examples regarding either the M100 modulus of the boundary layer or the M10 modulus of the boundary layer.
Thirdly, the Examples relate to a polyurethane topcoat present in an amount of 5 g/m2 (GSM) (instant specification, [00090]) made from an unspecified polyisocyanate and an unspecified polyol and having an unspecified molecular weight and having any thickness, whereas the present claims are broadly drawn to any topcoat layer having a thickness of about 1 µm to about 28 µm.
Fourthly, the Examples relate to an acrylic pressure sensitive adhesive having a thickness of 1.5 mils (instant specification, [00090]) made from an unspecific acrylic resin, whereas the present claims are broadly drawn to any acrylic pressure sensitive adhesive layer having any thickness.
Fifthly, the data is not persuasive given that the data is not commensurate in scope with the scope of the closest prior art. Specifically, the multi-layer film of the comparative examples does not comprise a boundary layer. However, Vandeparre does discloses a multilayer coating that includes a boundary layer (i.e., the at least partially crosslinked polyurethane top coat 4). Therefore, the data is not persuasive given that Vandeparre already recognizes the criticality of using a boundary layer.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed ranges.
Further, it is unclear that Applicant has discovered unexpectedly superior results since the data in the specification as originally filed generically recites the materials used, as opposed to specific materials. It is unclear which materials are used in the inventive examples and thus unclear if the properties discussed in the specification as originally filed applies to all polyurethanes, or just the specific, albeit undisclosed, materials used to make the inventive examples.
In response to Applicant’s argument that Vandeparre does not disclose an essentially uncrosslinked boundary layer as presently claimed, this is not found persuasive. The examiner acknowledges that while Vandeparre discloses the polyurethane top coat 4 (i.e., boundary layer) is at least partially crosslinked and being only slightly cross-linked ([0033]), Vandeparre does not disclose wherein the polyurethane top coat 4 (i.e., boundary layer) is essentially uncrosslinked. However, Vandeparre is not being used to meet this limitation; rather, McGuire is used to meet this limitation. McGuire teaches protective sheets comprising a topcoat layer, a carrier layer, and an adhesive layer ([0031]). The topcoat layer is made from polycarbonate-based polyurethane ([0018], [0033]). The topcoat layer (i.e., boundary layer) is essentially uncrosslinked ([0017]). McGuire further teaches the use of an uncrosslinked polyurethane topcoat layer (i.e., boundary layer) because the sheets are significantly more extensible than sheets having a crosslinked topcoat and that the benefits of having an uncrosslinked topcoat layer which results in significantly improved extensibility far outweigh the benefits found in conventional crosslinked topcoat layers ([0035]). Vandeparre and McGuire are analogous inventions in the field of polyurethane topcoat layers (i.e., polyurethane boundary layers). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the crosslinked polyurethane topcoat (i.e., boundary layer) of Vandeparre with the essentially uncrosslinked polycarbonate-based polyurethane topcoat layer of McGuire since uncrosslinked topcoats have significant benefits over crosslinked topcoats with respect to extensibility (McGuire, [0035]).
In response to Applicant’s argument that the combination of Vandeparre and McGuire is based off improper hindsight reasoning, this is not found persuasive. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant application, the examiner acknowledges that while Vandeparre discloses an at least partially crosslinked and only slightly cross-linked polyurethane topcoat 4 (corresponding to the claimed boundary layer as set forth above), Vandeparre does not disclose wherein the polyurethane topcoat 4 (corresponding to the claimed boundary layer as set forth above) is essentially uncrosslinked. Turning to McGuire, which teaches protective sheets comprising a topcoat layer, a carrier layer, and an adhesive layer ([0031]). The topcoat layer is made from polycarbonate-based polyurethane ([0018], [0033]). The topcoat layer (i.e., boundary layer) is essentially uncrosslinked ([0017]). McGuire further teaches the use of an uncrosslinked polyurethane topcoat layer (i.e., boundary layer) because the sheets are significantly more extensible than sheets having a crosslinked topcoat and that the benefits of having an uncrosslinked topcoat layer which results in significantly improved extensibility far outweigh the benefits found in conventional crosslinked topcoat layers ([0035]). Vandeparre and McGuire are analogous inventions in the field of polyurethane topcoat layers (i.e., polyurethane boundary layers). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the crosslinked polyurethane topcoat (i.e., boundary layer) of Vandeparre with the essentially uncrosslinked polyurethane topcoat layer of McGuire since uncrosslinked topcoats have significant benefits over crosslinked topcoats with respect to extensibility (McGuire, [0035]). Thus, the motivation to combine the references does not come from the instant application, but the motivation to combine the references is found in [0035] of McGuire.
Applicant’s request for rejoinder has been considered but is denied because no claims are presently allowable.
Conclusion
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 CFR 1.136(a).
A shortened statutory period for reply to this final action is 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787