DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 01/07/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1, 2, 6, 9, 10 and 12-17 are examined on the merits in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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.
Claims 1, 2, 6, 9, 10 and 12-17 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “propylene-ethylene random copolymer”. However, while there is support for the base material layer comprising propylene-ethylene random copolymer having a degree of crystallinity of 40% or more and 70% or less where the ethylene content of the random copolymer is 4.5% by mass or less, there is no support for propylene-ethylene random copolymer having an any amount of ethylene.
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, 2, 6, 9, 10, 12, 13, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sagawa (JP 2011016277 A cited in IDS) in view of Kwon et al. (KR 20140042562 A) and Takahashi et al. (JP 2012106506 A cited in IDS). It is noted that the disclosures of Sagawa and Takahashi et al. are based on a machine translation of the reference which is included in previous office action. It is noted that the disclosures of Kwon et al. are based on a machine translation of the reference which is included in this action.
Regarding claims 1, 2, 6, 9, 10, 12 and 17, Sagawa discloses a decorative sheet comprising a base material layer 1, a pattern layer 2 (decoration layer), transparent resin layer 4 and a surface protective layer 5, in this order (see Figure 1 and paragraphs 0027, 0051, 0052, 0055 and 0056).
The base material layer 1 comprises a resin such as polypropylene resin (see paragraph 0051). The thickness of the base material layer can be 70 microns (see paragraph 0055).
The transparent resin layer 4 can comprise a resin such as polypropylene resin (see paragraph 0044). Given that the resin is identical to that presently claimed, it is inherent or obvious that the resin has an ultraviolet absorption wavelength at least at 360 nm to 380 nm. The transparent resin layer can also comprise ultraviolet absorber such as hydroxyphenyltriazine and radical scavenger such as hindered amine compound (see paragraphs 0044, 0045 and 0046). The hindered amine compound is identical to light stabilizer utilized in the present invention (see paragraph 055 of published application). The amount of ultraviolet absorber in the transparent resin layer is 0.001 to 10 parts by weight (see paragraph 0045). The amount of hindered amine compound is 0.001 to 10 parts by weight (see paragraph 0046).
The surface protective layer comprises hydroxyphenyltriazine-based ultraviolet absorber and hindered amine radical scavenger (light stabilizer) (see paragraphs 0034, 0035 and 0040). The hindered amine radical scavenger is identical to light stabilizer utilized in the present invention (see paragraph 055 of published application). The surface protective layer comprises a cured product of an ionizing curable resin composition including oligomers (see paragraphs 0028, 0030, and 0033). The surface protective layer has a thickness of 2 to 20 microns (see paragraph 0042). The surface protective layer of Sagawa reads on a top coat layer as presently claimed. The amount of ultraviolet absorber is 1 to 30 parts by weight (see paragraph 0036). The amount of hindered amine radical scavenger is 1 to 30 parts by weight (see paragraph 0041).
While Sagawa disclose the base material layer comprising the polypropylene resin, Sagawa does not disclose the polypropylene resin is a propylene-ethylene random copolymer as presently claimed. While Sagawa discloses surface protection layer having a top coat layer as presently claimed, Sagawa does not disclose the surface protection layer comprises a primer layer, and the primer layer is a layer formed between the top coat layer and the transparent resin layer.
Kwon et al. disclose a propylene/ethylene random copolymer having crystallinity of less than 50% (see Abstract). The propylene/ethylene random copolymer improves mechanical properties and elasticity, and minimizes deformation as well as simplifies manufacturing process and lowers the unit cost of the final product (see pages 7-8, bridging paragraph). Given that the polypropylene resin is identical to that presently claimed, it is inherent or obvious that the polypropylene resin has an ultraviolet absorption wavelength at least at 360 nm to 380 nm.
In light of motivation for using propylene/ethylene random copolymer having crystallinity of less than 50% disclosed by Kwon et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use propylene/ethylene random copolymer having crystallinity of less than 50% as the polypropylene resin in the base material layer in order to improve mechanical properties and elasticity, and minimize deformation as well as simplify manufacturing process and lower the unit cost of the final product, and thereby arrive at the claimed invention.
While Sagawa discloses surface protection layer having a top coat layer as presently claimed, Sagawa in view of Kwon et al. do not disclose the surface protection layer comprises a primer layer, and the primer layer is a layer formed between the top coat layer and the transparent resin layer.
Takahashi et al. disclose a decorative sheet comprising a base material layer 2, colored layer 3, picture layer 4, film layer 5, primer layer 6 and surface protection layer 7 (see Figure 1 and paragraph 0061). The film layer 5 is transparent film layer 5 (see paragraph 0024). The primer layer improves adhesion between the two layers (see paragraph 0025). The primer layer comprises an ultraviolet absorber such as hydroxyphenyltriazine compound (see paragraph 0014). The thickness of the primer layer is about 1 to 10 microns (see paragraph 0030).
In light of motivation for using a primer layer between a transparent film layer and a surface protection layer disclosed by Takahashi et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a primer layer of Takahashi et al. between the transparent film layer and the surface protection layer in Sagawa in view of Kwon et al. in order to improved adhesion between the transparent film layer and the surface protection layer, and thereby arrive at the claimed invention.
Accordingly, Sagawa in view of Kwon et al. and Takahashi et al. disclose the base material layer 1, the pattern layer 2 (decoration layer), the transparent resin layer 4, the primer layer and the surface protective layer 5, in this order. As noted above, both the primer layer and the surface protective layer comprises ultraviolet absorber. The surface protective layer 5 reads on the top coat layer. The surface protective layer 5 (topcoat layer) and the primer layer together read on the surface protection layer as presently claimed.
Sagawa in view of Kwon et al. and Takahashi et al. do not disclose absorbance A11 of the surface protection layer, absorbance A12 of the transparent resin layer and the surface protection layer, absorbance A21 of the surface protection layer, absorbance A22 of the transparent resin layer and the surface protection layer and ratio of the absorbance A11 to the absorbance A12. However, given that the surface protection layer and the transparent resin layer of Sagawa in view of Kwon et al. and Takahashi et al. are identical to that presently claimed, it is inherent or obvious that the absorbance A11 of the surface protection layer, absorbance A12 of the transparent resin layer and the surface protection layer, absorbance A21 of the surface protection layer, absorbance A22 of the transparent resin layer and the surface protection layer and ratio of the absorbance A11 to the absorbance A12 of Sagawa in view of Kwon et al. and Takahashi et al. is identical to that presently claimed.
Sagawa in view of Kwon et al. and Takahashi et al. do not disclose the decorative sheet having a water transmission rate as presently claimed. However, given that the decorative sheet of Sagawa in view of Kwon et al. and Takahashi et al. is identical to that presently claimed, it is inherent or obvious that the decorative sheet of Sagawa in view of Kwon et al. and Takahashi et al. has water transmission rate as presently claimed.
Regarding claims 13 and 16, Sagawa discloses a decorative material obtained by laminating a metal base material (adherend) to the decorative sheet using an adhesive (see paragraphs 0054 and 0071).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Sagawa (JP 2011016277 A cited in IDS) in view of Kwon et al. (KR 20140042562 A) and Takahashi et al. (JP 2012106506 A cited in IDS) as applied to claim 13 above, further in view of Yamakoshi et al. (US 2011/0275767 A1).
Regarding claims 14 and 15, Sagawa in view of Kwon et al. and Takahashi et al. disclose the decorative material as set forth above. While Sagawa discloses an adhesive between the decorative sheet and the adherend, Sagawa in view of Kwon et al. and Takahashi et al. do not disclose the adhesive as presently claimed.
Yamakoshi et al. disclose a moisture-curable hot-melt adhesive having an excellent balance of environmental friendliness, computability of ingredients, early-stage adhesive strength, heat resistance after moisture curing and tack free time (see Abstract). The moisture-curable hot-melt adhesive comprises a urethane polymer (see Abstract).The moisture-curable hot-melt adhesive can be used to bond an adherent to a substrate (see paragraph 0085).
In light of motivation for using a moisture-curable hot-melt adhesive comprising a urethane polymer disclosed by Yamakoshi et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a moisture-curable hot-melt adhesive comprising a urethane polymer of Yamakoshi et al. as the adhesive between the decorative sheet and the adherend in Sagawa in view of Kwon et al. and Takahashi et al. in order to provide an excellent balance of environmental friendliness, computability of ingredients, early-stage adhesive strength, heat resistance after moisture curing and tack free time, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 01/07/2026 have been fully considered. In light of amendment, new grounds of rejections are set forth above.
Applicants assert that nothing in Sagawa, alone or in view of Takahashi and/or Yamakoshi teaches or suggests the claimed invention having the claimed ultraviolet absorption wavelength, propylene-ethylene random copolymer, or thickness as claimed. Furthermore, Applicants assert that there would have been no reason to modify Sagawa, alone or in view of Takahashi and/or Yamakoshi, to arrive at the claimed invention - having the specifically disclosed layers with the specific amounts of ultraviolet absorber - without resorting to undue experimentation. Specifically, Applicants assert that nothing in any of the cited art, alone or in combination, teaches or suggests that the resin having an ultraviolet absorption wavelength at least at 360 to 380 nm is a polypropylene resin. That is, even if the cited art mentions the use of polypropylene resins, one of ordinary skill in the art would have had no way to confirm that these resins have the claimed ultraviolet absorption wavelength without resorting to undue experimentation. Further, applicants assert that nothing in any of the cited art, alone or in combination, teaches or suggests that the base material layer is made of propylene-ethylene random copolymer having a degree of crystallinity of 40 % or more and 70% or less. Indeed, nothing in any of the cited art teaches or suggests any such degree of crystallinity.
As set forth above, Sagawa discloses that the amount of ultraviolet absorber in the transparent resin layer is 0.001 to 10 parts by weight (see paragraph 0045) which falls within the amount used in the present invention while the amount of ultraviolet absorber in the surface protection layer is 1 to 30 parts by weight (see paragraph 0036) which overlaps the amount used in the present invention.
Further, as set forth above, Sagawa discloses a decorative sheet comprising a base material layer 1, a pattern layer 2 (decoration layer), transparent resin layer 4 and a surface protective layer 5, in this order. While Sagawa et al. do not disclose a primer layer formed between the surface protective layer and the transparent resin layer, Takahashi et al. disclose a primer layer between a transparent film layer and a surface protection layer in order to improve adhesion between the transparent film layer and the surface protection layer. Further, the basis for a proper prior art rejection is not whether there is undue experimentation when combining the references but whether there is a proper motivation to combine the references and that the obviousness rejection is proper. Given that both Sagawa and Takahashi et al. are drawn to a decorative sheet and given that Takahashi provides a proper motivation, i.e. improved adhesion, it would have been obvious to one of ordinary skill in the art to modify Sagawa in view of Takahashi to arrive at the claimed invention without resorting to undue experimentation.
While there is no disclosure in either Sagawa or Takahashi of the specific propylene-ethylene random copolymer as presently claimed, that is why Kwon is now used.
Given that Sagawa in view of Takahashi and Kwon disclose propylene-ethylene random copolymer as presently claimed having degree of crystallinity that overlaps that presently claimed, within the overlapping range, such copolymer would necessarily inherently have ultraviolet absorption wavelength of at least at 360 nm to 380 nm absent, evidence to the contrary. Given that the cited prior art teaches propylene-ethylene random copolymer as claimed, there would be no undue experimentation involved to arrive at the present invention.
Applicant argues that nothing in any of the cited art, alone or in combination, teaches or suggest the claimed thickness of the base material.
However, as set forth above, Sagawa discloses that the thickness of the base material layer can be 70 microns (see paragraph 0055).
Applicants maintain that nothing in Yamakoshi rectifies the deficiencies of Sagawa in view of Takahashi.
However, note that while Yamakoshi do not disclose all the features of the present claimed invention, Yamakoshi is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely an adhesive, and in combination with the primary reference, discloses the presently claimed invention.
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 KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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