DETAILED ACTION
This is an Office action based on application number 17/641,980 filed 10 March 2022, which is a national stage entry of PCT/JP2020/033925 filed 8 September 2020, which claims priority to JP219-165714 filed 11 September 2019. Claims 1-7 are pending.
Amendments to the claims, filed 3 December 2025, have been entered into the above-identified application.
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
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 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.
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 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2016-207900A with citations taken from the provided machine translation (JP900), which incorporates, by reference, JP2014-101457A with citations taken from the provided machine translation (JP457).
Regarding instant claims 1-2 and 4:
JP900 discloses an adhesive composition comprising an acrylic resin having a mass average molecular weight of 200,000 to 1,000,000 and containing an acrylic acid ester as a main component and obtained by copolymerizing a hydroxyl group-containing monomer and a carboxyl-group containing monomer (paragraph [0012]).
JP900 discloses the acrylic resin includes a polymerized (meth)acrylic acid ester inclusive of a linear or branched alkyl ester having 1 to 30 carbon atoms; furthermore JP900 teaches that specific examples of the (meth)acrylic acid alkyl ester includes those disclosed by JP457. Further, JP 900 teaches that the term “main component” means that the (meth)acrylic acid ester content is greater than 51% by mass (paragraph [0037]).
JP457 discloses that examples of the (meth)acrylic acid ester includes methyl (meth)acrylate, propyl (meth)acrylate, t-butyl (meth)acrylate, pentyl acrylate, ethyl methacrylate, isopropyl methacrylate, butyl methacrylate, and isobutyl methacrylate (paragraph [0051]).
In their original disclosure at paragraph [0024], Applicant illustrates that the above monomers disclosed by JP900 and JP457 are monomers that do not have a crosslinkable functional group and whose homopolymers have a glass transition temperature of 0°C or higher.
Therefore, the (meth)acrylic acid esters of JP900 and JP457 meet the claimed monomer (a1).
At paragraphs [0036-0037] of their original disclosure, Applicant characterizes those monomers (a3) having a crosslinkable functional group are inclusive of hydroxyl group-containing monomers and carboxyl-group containing monomers.
Therefore, the hydroxyl group-containing monomer and a carboxyl-group containing monomer copolymerized with the (meth)acrylic acid ester of JP900 meet the claimed monomers (a3). Furthermore, since JP900 discloses the amount of (meth)acrylic acid ester is greater than 51% by mass, those hydroxyl group-containing monomers and a carboxyl-group containing monomers must make up the balance, i.e., less than 49% by mass, which includes the claimed range of 0-30 mass%. However, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP900 further discloses that the acrylic resin has a glass transition temperature of -20°C to 30°C measured by a method based on the peak top value of loss tangent (tan δ) (DMA method) (paragraph [0036]), which overlaps the claimed range. However, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
JP900 does not disclose a requisite amount of a (meth)acrylic polymer (Ah) having a glass transition temperature of 50°C or higher; however, since the scope of the claim (i.e., an amount of (Ah) of less than 25 mass%) is inclusive of 0 mass% (Ah), JP900 meets the claimed amount.
The limitation of an “adhesive composition for a decorative film” is an intended use limitation. However, “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention' s limitations, then the preamble is not considered a limitation and is of no significance to the claim construction”. See MPEP § 2111.02.
JP900 further discloses the preparation of an adhesive substrate wherein an adhesive composition is applied to the entire surface of an easily peelable treated surface of a 38 μm thick polyester film; said adhesive composition is dried; and a film substrate is applied onto the surface of the formed adhesive layer (paragraph [0128]).
Said “easily peelable treated surface of a 38 μm thick polyester film” meets the claimed “releasing film”
The limitations “an adhesive layer-attached decorative film” “a decorative film” is an intended use limitation. However, “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention' s limitations, then the preamble is not considered a limitation and is of no significance to the claim construction”. See MPEP § 2111.02.
Regarding instant claim 3:
JP900 further discloses that the adhesive composition includes a crosslinking agent (paragraph [0011]).
Regarding instant claim 5:
The limitation “wherein the decorative film is used for vehicles” is an intended use limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Therefore, the adhesive substrate of JP900 is construed to meet the limitations of the claim.
Regarding instant claim 6:
JP900 discloses a method comprising the peeling of the polyester film from the adhesive substrate; applying a circuit board on the adhesive layer of the adhesive substrate; clamping the adhesive-mounted circuit board; and performing transfer molding to obtain a resin-encapsulated article (paragraphs [0128-0131]).
Said resin-encapsulated article formed by transfer molding meets the claimed “molded body”.
The limitation of an “decorative molded body” is an intended use limitation. However, “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention' s limitations, then the preamble is not considered a limitation and is of no significance to the claim construction”. See MPEP § 2111.02.
Regarding instant claim 7:
The limitation “wherein the molded body is a vehicle” is an intended use limitation of the molded body. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the rejection over the prior art of record are fully considered, but are unpersuasive.
Applicant broadly argues that the structure and method of using the prior art is different than that of the claimed invention. Specifically, Applicant contends that the claimed invention is drawn to a decorative molded body formed by the attachment of an adhesive layer-attached decorative film to a molded body. Applicant contends that the prior art of record, JP900, is drawn to a different product and intended use, i.e., the formation of a resin-sealed component wherein the substrate layer is eventually removed.
Applicant’s arguments are unpersuasive. The use and production of a decorative sheet and decorative molded body are intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, Applicant has not persuasively argued how the substate of JP900 is differs from decorative film of the claims. Further, as to the removal of the substrate of JP900, Applicant has not persuasively argued that the intermediate product of JP900, i.e., after attachment of the adhesive substrate to a circuit board but prior to the removal of the substrate, is patentably different from the decorative molded body of the claims.
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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571)272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
/TAM/Examiner, Art Unit 1788 12/23/2025