DETAILED ACTION
Claim Status
Claim(s) 1-8 is/are pending.
Claim(s) 1-8 is/are rejected.
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission previously filed on 11/10/2025 has been entered on 12/11/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(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) 2, 4, 6, 8 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2, 4 are vague and indefinite because it is unclear whether the phrase “a conformable layer”: (i) requires the presence of an additional layer D in the layer packet (i.e., besides the previously recited layers A, B, C); or (ii) is composed of one or more of layer(s) A and/or B and/or C.
Claims 2, 4 are vague and indefinite because in the case of above interpretation (i), the required presence of an additional “conformable layer” in each layer packet appears inconsistent with: (i) the recited required first peel force between layers A and C of adjacent layer packets; (ii) the recited second peel force between adjacent layers A and B; (iii) the recited third peel force between adjacent layers B and C; since the peel force between adjacent layers appears to require direct contact between the specified layers.
Claims 2, 4 are vague and indefinite because in the case of above interpretation (ii) above, the claim fails to clearly specify which layers of A and/or B and/or C constitute "a conformable layer" -- e.g., the conformable layer comprises layer A; or the conformable layer comprises layer B; or the conformable layer comprises layer C; or the conformable layer comprises layers A+B; or the conformable layer comprises layers B+C; or the conformable layer comprises layers A+B+C.
Claims 6, 8 are dependent on one or more of the above claims and therefore incorporate the above-described indefinite subject matter.
NOTE: Claims 2, 4, 6, 8 may be subject to rejections under 35 U.S.C. 103 after the outstanding rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, regarding the structure of the claimed invention of claims 2, 4, 6, 8 are resolved.
Claim Rejections - 35 USC § 103 (AIA )
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.
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.
Claim(s) 1, 3, 5, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
JOHNSON ET AL (US 2015/0202847),
in view of DRAKE ET AL (US 8,292,347),
and in view of JP 2005-125575 (TOYOIZUMI-JP ‘575).
JOHNSON ET AL ‘847 discloses a stack of peelable and removable multilayer films, wherein each multilayer film comprises at least two layer packets each containing three layers A, B, C, wherein in each layer packet:
• layer (A) is a front-most layer (e.g., but not limited to, polyesters, copolyesters, acrylics, silicones, etc.);
• layer (B) is an interior layer (e.g., but not limited to, copolyesters; polymethyl methacrylate (PMMA); PMMA copolymers; styrenic block copolymers, polypropylene, silicone copolymers, etc. and/or blends thereof);
• layer (C) is a back-most layer (e.g., but not limited to, polypropylene, polyethylene, styrenic block copolymer, ethylene alpha-olefin copolymer, olefin block copolymer, silicone copolymers, etc. and/or blends thereof);
wherein the multilayer films can have arranged in a repeating pattern (e.g., ABCABC…, etc.) -- for example, but not limited to:
layer packet 1 (A1)
layer packet 1 (B1)
layer packet 1 (C1)
layer packet 2 (A2)
layer packet 2 (B2)
layer packet 2 (C2)
adhesive layer
surface to be protected
wherein the peel force between adjacent layer packets (i.e., between a layer C of a first packet and the adjacent layer A of a second packet) is preferably at least 1 gram/inch, and is weaker than the peel force between the layers within a given layer packet (e.g., for layer packet 1, between the layers A1 and B1, and between B1 and C1) in order to facilitate separation between layer packets (and avoid separation at the interfaces between layers A/B or B/C). The stack of multilayer films preferably do not contain adhesive layers between layer packets, wherein the term “adhesive layer” specifically refers to refers to “a layer which is tacky at room temperature”, which allows for irreversible separation of adjacent layer packets. The stack of peelable multilayer films (i.e., layer packets) is typically formed by coextrusion, and can have sufficient flexibility so that it can be applied to, and conform to, workpieces that are contoured. The stack of peelable multilayer films and can be utilized in a variety of protective applications (e.g., coverings for medical and/or electronic devices; windshield protection; face shields; etc.) (entire document, e.g., Figures 1A-1D, 6, etc.; paragraph 0002, 0005-0007, 0033, 0035-0036, 0046, 0056-0059, 0069, 0087-0089, 0092-0093, 0097, 0099-0104, etc.) However, the reference does not specifically discuss differences in the combined thickness in layers B or C in adjacent layer packets or the recited gradient peel force between layer packets.
DRAKE ET AL ‘347 disclose that it is well known in the art in a stack of peelable protective multilayer films (16a/14a, 16b/14b, 16c/14c) (corresponding to the recited “first layer packet” and the recited “second layer packet”), the film (14a) closest to the surface being protected (20) (corresponding to recited “layer B” in the recited “conformable layer of the second layer packet”) preferably has a greater thickness than more outward-facing films (14b, 14c) (corresponding to the recited “layer B” in the recited “conformable layer of the first layer packet”) in order to provide good energy absorption and impact resistance even after removal of the outward-facing multilayer films (16b/14b, 16c/14c) and also to facilitate easy removal of said outward-facing films. The reference further discloses that the bonding layers (16b, 16c) (corresponding to recited “layer C”) in the stack of peelable protective films can be non-pressure-sensitive adhesive. (Figure 1-2, 12, etc.; line 41-57, col. 5; etc.)
TOYOIZUMI-JP ‘575 discloses that it is well known in the art to form protective sheets comprising a plurality of peelable layer assemblies (2/4; 2a/4a; etc.) (corresponding to the recited “layer packet”) wherein the adhesive strength (corresponding to the recited “peel force”) between adjacent layer assemblies decreases with increasing distance from the bottommost layer assembly (e.g., the adhesion strength between 2/4 and 2a/4a is weaker than the adhesion strength between 2a/4a and 1/3; etc.) in order to prevent accidental removal of multiple layer assemblies at the same time. (Figure 1, etc.; paragraphs 0004-0005, 0009, 0013, etc.)
Regarding claims 1, 3, 5, 7, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that in a structure in accordance with JOHNSON ET AL ‘847 -- for example, but not limited to:
layer packet 1 (A1)
layer packet 1 (B1)
layer packet 1 (C1)
layer packet 2 (A2)
layer packet 2 (B2)
layer packet 2 (C2)
layer packet 3 (A3)
layer packet 3 (B3)
layer packet 3 (C3)
adhesive layer
surface to be protected
to make at least layer B3 in the surface-facing layer packet 3 (i.e., closest to the surface to be protected) (corresponding to the recited “second layer packet”) thicker than the layers B2 and B1 in the other layer packets (i.e., further away from the surface to be protected) (corresponding to the recited “first layer packet”) – thereby resulting in the combined thickness of B3 + C3 (corresponding to the recited “conformable layer of the second layer packet”) which is thicker (i.e., greater than) than the combined thickness of B2 + C2 (corresponding to the recited “conformable layer of the first layer packet) -- in order to maintain a desired level of energy absorption and impact resistance even after the removal of the outward-facing layer packet 2 (as suggested by DRAKE ET AL ‘347).
Further regarding claims 1, 3, since: (i) DRAKE ET AL ‘347 discloses that the bonding layers (16b, 16c) adhering the multilayer films (16a/14a, 16b/14b, 16c/14c) together can utilize non-pressure-sensitive adhesive; and (ii) the term “pressure-sensitive adhesive” is generally understood in the art to refer to adhesives which are typically tacky at room temperature and form bonds when pressure is applied; bonding layers in accordance with DRAKE ET AL ‘347 comprising a “non-pressure-sensitive adhesive” as suggested in DRAKE ET AL ‘347: (1) do not constitute an “adhesive layer” as defined in JOHNSON ET AL ‘847; and (2) would not form bonds when pressure is applied; and therefore in this aspect, DRAKE ET AL ‘347 is consistent with the irreversible delamination characteristic of between multilayer films disclosed in JOHNSON ET AL ‘847.
Further regarding claims 1, 3, since the term “conformable” is not explicitly defined in the disclosure as originally filed, the term “conformable” is deemed to be equivalent to the term “compliant” (i.e., having sufficient flexibility and/or elasticity to follow or ‘conform’ to a surface, etc.). Therefore, since the stack of peelable multilayer films in accordance with JOHNSON ET AL ‘847 is preferably highly flexible (e.g., in order to fit smoothly against a variety of contoured surfaces), the Examiner has reason to believe that the individual layers A, B, C in each layer packet are each generally flexible and compliant to at least some degree (corresponding to the recited “conformable layer comprising layer B and layer C”).
Further regarding claims 1, 3, one of ordinary skill in the art would have adjusted the peel force between adjacent layer packets in the stack of peelable multilayer films of JOHNSON ET AL ‘847 so that peel force of between lower positioned (i.e., closer to the surface to be protected) pairs of layer packets (e.g., between C2 and A3, which is the interface between the layer packet 2 and layer packet 3) is greater than the peel force of upper positioned (i.e., further from the surface to be protected) pairs of inter-layer-packets (e.g., between C1 and A2, which is the interface between the layer packet 1 and layer packet 2) (corresponding to the recited “gradient peel force between layer packets”) as suggested in TOYOIZUMI-JP ‘575 in order to facilitate the removal of single layer packets at a time and to prevent the accidental removal of multiple layer packets at the same time.
Regarding claims 5, 7, one of ordinary skill in the art would have utilized the stack of peelable multilayer films of JOHNSON ET AL ‘847 in known personal protection applications (e.g., face shields, etc.).
The rejections of claims 2, 4, 6, 8 under 35 U.S.C. 103 based on JOHNSON ET AL (US 2015/0202847), in view of ROTHRUM (US 5,673,433), and in view of FREUDENBERG ET AL (US 2005/0109470) in the previous Office Action mailed 04/04/2025 have been withdrawn in view of the Claim Amendments previously filed 11/10/2025 (entered on 12/11/2025).
However, the withdrawal of these rejections does NOT constitute a concession as to the applicability (or non-applicability) of the previously cited prior art to the previously presented claims (or to presently amended claims). The Examiner reserves any discussion as the merits of the previously cited prior art references until outstanding issues under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ) (regarding indefiniteness) have been resolved. Upon the resolution of outstanding issues under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ) (regarding indefiniteness) in the present Office Action, previous rejections under 35 U.S.C. 103 may be reinstated and/or modified.
Response to Arguments
Applicant's arguments filed 11/10/2025 (entered on 12/11/2025) have been fully considered but they are not persuasive.
(A) Applicant’s arguments with respect to claim(s) 2, 4, 6, 8 have been considered but are moot in view of the new ground of rejection necessitated by the Claim Amendments previously filed 11/10/2025 (and entered on 12/11/2025).
(B) Applicant argues that “JOHNSON ET AL does not disclose a peel force gradient between the layer packets and a thickness gradient between a first sublayer and a conformable layer within the layer packets, as recited in claim 1.” In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
(C) Applicant argues that “DRAKE ET AL does not teach or suggest the feature of a gradient peel force between layer packets.” In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
(D) Applicant argues that “DRAKE ET AL also does not disclose the thickness gradient of the second conformable sublayer being thicker than the first conformable layer, as recited in claim 1.” However, since DRAKE ET AL ‘347 suggest the use of thicker film layers closer to the surface being protected relative to more outward-position films in order to provide good energy absorption and impact resistance even after removal of the outward-facing films (and also to facilitate easy removal of said outward-facing films), it would have been obvious to one of ordinary skill in the art to adjust the relative thickness of one or more film layers within a layer packet in a structure in accordance with JOHNSON ET AL ‘847 -- for example, but not limited to:
layer packet 1 (A1)
layer packet 1 (B1)
layer packet 1 (C1)
layer packet 2 (A2)
layer packet 2 (B2)
layer packet 2 (C2)
layer packet 3 (A3)
layer packet 3 (B3)
layer packet 3 (C3)
adhesive layer
surface to be protected
to make at least layer B3 in the surface-facing layer packet 3 (i.e., closest to the surface to be protected) (corresponding to the recited “second layer packet”) thicker than the layers B2 and B1 in the other layer packets (i.e., further away from the surface to be protected) (corresponding to the recited “first layer packet”) – thereby resulting in a combined thickness of B3 + C3 (corresponding to the recited “conformable layer of the second layer packet”) which is thicker (i.e., greater than) than the combined thickness of B2 + C2 (corresponding to the recited “conformable layer of the first layer packet) -- in order to maintain a desired level of energy absorption and impact resistance even after the removal of the outward-facing layer packet 2 (as suggested by DRAKE ET AL ‘347).
MPEP 2144 Supporting a Rejection Under 35 U.S.C. 103 [R-01.2024]
When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule. This section discusses supporting a rejection under 35 U.S.C. 103 by reliance on scientific theory and legal precedent. In keeping with the flexible approach to obviousness under KSR, as well as the requirement for explanation, Office personnel may invoke legal precedent as a source of supporting rationale when warranted and appropriately supported. See MPEP § 2144.04. So, for example, automating a manual activity, making portable, making separable, reversing or duplicating parts, or purifying an old product may form the basis of a rejection. However, such rationales should not be treated as per se rules, but rather must be explained and shown to apply to the facts at hand. A similar caveat applies to any obviousness analysis. Simply stating the principle (e.g., "art recognized equivalent," "structural similarity") without providing an explanation of its applicability to the facts of the case at hand is generally not sufficient to establish a prima facie case of obviousness.
* * *
II. THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.").
Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited thickness gradient of layers B+C in a stack of layer packets.
(E) Applicant argues that “TOYOIZUMI-JP '575 fails to disclose a peel-force gradient established without the use of an adhesive and a thickness gradient between a first sub-layer and a conformable layer within each layer packet, as recited in claim 1. The film of claim 1 provides peel force and thickness gradients without any adhesive materials, thereby distinguishing from the cited reference.” In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Additionally, in response to applicant's argument that the reference fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the complete absence of adhesive materials in the recited film, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
(F) Applicant argues that “there is no motivation provided, nor any reasonable expectation of success, for a person skilled in the art to combine the teachings of JOHNSON ET AL, DRAKE ET AL, and TOYOIZUMI-JP '575 to arrive at the film of claim 1.” In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, JOHNSON ET AL ‘847 disclose a stack of sequentially peelable multilayer films containing three layers, wherein the peel forces between layers within a given multilayer film is greater than the peel force between adjacent multilayer films, while the secondary references each disclose features and/or modifications which are disclosed as being advantageous and/or beneficial with respect to stacks of sequentially peelable multilayer films -- i.e., DRAKE ET AL ‘347 discloses that it is advantageous to vary the thicknesses of adjacent multilayer films within a stack of sequentially peelable multilayer films in order to maintain a desired level of energy absorption and impact resistance even after the removal of the outward-positioned multilayer films; TOYOIZUMI-JP '575 discloses that it is advantageous to vary the peel force between adjacent multilayer films within a stack of sequentially peelable multilayer films relative to their position in the stack (e.g., decreasing the farther a given multilayer film is positioned from the surface being protected) in order to facilitate easy sequential removal of individual multilayer films, in addition to preventing accidental simultaneous removal of multiple multilayer films (thereby preventing waste).
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. (see MPEP 2144 (II) cited above). The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (i.e., a stack of sequentially peelable multilayer films as disclosed in JOHNSON ET AL ‘847, wherein: (i) the individual multilayer films can be easily removed one at a time; and (ii) which provide maintain adequate impact protection for a surface regardless of how many layers remain in the stack). See KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1739 (2007). Applicant has not provided persuasive evidence that the stack of multilayer films disclosed in JOHNSON ET AL ‘847, modified in accordance with the teachings in DRAKE ET AL and TOYOIZUMI-JP '575, would not provide one or more reasonably predictable benefit(s) and/or advantage(s). Additionally, Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from: (1) the recited peel force gradient between layer packets; and/or (2) the recited thickness gradient of layers B+C in a stack of layer packets.
Conclusion
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January 24, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787