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 .
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1.114, and the fee set forth in 37 CFR1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/24/26 has been entered.
Claims 13-15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking
claim. Election was made without traverse in the reply filed on 05/29/25.
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 1-5, 7-8, 10-12, 16-19 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. For claim 1, there is no support in disclosure indicating exposing polysiloxane-containing composition to infrared irradiation(heat) to thermally initiate curing of the cover layer, followed by exposing the applied polysiloxane-containing composition to ultraviolet irradiation to further crosslink and finalize curing of the polysiloxane-containing composition. For claim 18, there is no support for two step curing of polysiloxane-containing composition comprising alkyl and/or alkoxy substituted polysiloxane.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 4-5, 7-8, 10, 12, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Uwe Weissenberger et al (U. S. Patent Application: 2019/0084285, here after 285), further in view of John C Chang et al (U. S. Patent Application: 2002/0150765, here after 765).
Claim 1 is rejected. 285 teaches a method for producing a decorative part for an automotive interior component [abstract lines 1-2, 0013-0014], the decorative part having a visible side and an installation side, comprising the steps of:
providing a decorative layer (1a) having a thickness of 0.1mm [0035];
forming the decorative layer into a three-dimensionally shaped preform (2+1a+1b) [fig. 1d] corresponding to a final geometry of the decorative part, the three-dimensionally shaped preform having a preform visible side(1a) [0067] and a preform installation side(1b);
applying a polysiloxane-containing composition (3, to make protective layer) to
the preform visible side(1a) of the three-dimensionally shaped preform
by spraying thereby forming a cover(protective) layer [fig. 3, 0041, 0040]. 285 teaches curing the applied polysiloxane-containing composition with heat, and UV [0041 last sentence], which means two-stage curing sequence comprising exposing the applied polysiloxane-containing composition to infrared irradiation(heat) to which in fact thermally initiate curing of the cover layer, followed by exposing the applied polysiloxane-containing composition to ultraviolet irradiation and finalize curing of the polysiloxane-containing composition forming the cover layer [0041 last sentence]; and
after said step of curing, bonding the preform installation side of the three-dimensionally shaped preform to a substrate layer (this happens as it is add on part, therefore has to be bond to a car part or substrate), whereby the decorative part is produced. 285 teaches applying polysiloxane-containing composition to the visible side of the decorative substrate [fig. 1d]. 285 does not teach the polysiloxane-containing composition comprises a crosslinked substituted polysiloxane. 765 teaches a method of making a decorative article and teaches a laminated decorative element with protective layer comprising polysiloxane wherein the polysiloxane is thermoset (cross linkable) [abstract]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of 285, where the polysiloxane is cross linkable, because it is suitable for protective layer of decorative element. 765 also teaches curing it with UV [0023].
Claims 2 and 18 rejected as 765 teaches polysiloxane is alkyl substituted polysiloxane [claim 5]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of 285, and 765 where the polysiloxane is alkyl substitute polysiloxane, because it is suitable for protective layer of decorative element.
Claim 4 is rejected, as 285 does not each the applying temperature of the
polysiloxane-containing composition, it is considered as room temperature (22C), and
relative humidity of more than 30-60% (room condition).
Claim 5 is rejected. 765 teaches making protective layer for decorative element comprising polysiloxane and teaches curing the polysiloxane at 80-200C [0022].
Although 765 does not teach curing temperature of 50 °C to 100 °C, however overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of [overlapping range] that corresponds to the claimed range. In re Malagari, 182 USPQ 549 (CCPA 1974). and a relative humidity of 10% to 80%. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of 285, where the polysiloxane is cured at 80-100C, because one having ordinary skill in the art to have selected the portion of overlapping range that corresponds to the claimed range. Since neither of 285, nor 765 teach heating condition and amount of humidity, it is considered as room condition which has 30-80% humidity.
Claim 7 is rejected as 285 teaches the cured cover layer (protective layer) has a
layer thickness of 2 um to 25 um [0041].
Claim 8 is rejected as 285 teaches the decorative layer is formed by metal(pigment) [0033].
Claim 10 is rejected as 285 teaches at least one intermediate layer (adhesion
layer) of a thermoplastic or thermoset material is applied to the decorative layer before
the cover layer is applied [0042].
Claim 12 is rejected as 285 teaches the intermediate layer is a PMMA
intermediate layer [0042].
Claim 19 is rejected. 285 teaches exposing the polysiloxane containing composition to infrared(heat) and then UV radiation [0041 last sentence], but does not teach infrared irradiation(heating) for one to five minutes and the ultraviolet irradiation for thirty to sixty seconds. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. In re Aller, USPQ 233 (CCPA 1955). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of 285, and 765 where the infrared irradiation(heating) for one to five minutes and the ultraviolet irradiation for thirty to sixty seconds, because one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Uwe
Weissenberger et al (U. S. Patent Application: 2019/0084285, here after 285), John C Chang et al (U. S. Patent Application: 2002/0150765, here after 765), further in
view of Richard Peres (WO 2018/011288, here after 288).
Claim 3 is rejected. 285, and 765 teach the limitation of claim 1, but does not teach the proportion of polysiloxane in the polysiloxane-containing composition is in total 10% by weight to 70% by weight. 288 teaches a method of making decorating article and teaches forming a polysiloxane composition cover on the article [0013, 0017], where the amount of polysiloxane in polysiloxane composition is 0.1-20% [0017]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of 285, and 765 where the amount of polysiloxane in the composition is 20 wt%, because it is suitable amount for making composition for cover layer for decorative articles.
Claims 11, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Uwe Weissenberger et al (U.S. Patent Application: 2019/0084285, here after 285), in view of John C Chang et al (U. S. Patent Application: 2002/0150765, here after 765),
further in view of Shunichi Hashimoto et al (Japanese Patent: 2020049886, here after
886).
Claim 11 is rejected. 285 does not teach the intermediate layer (adhesive layer)
is applied by an injection molding process. 886 teaches a method of making a
decorated article where adhesion layer is made by injection molding [page 8 line 21].
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the
invention was made to have a method of 285, 765 where the adhesion layer is formed by injection molding, because it is suitable method for depositing adhesion layer for
decorative articles.
Claim 16 is rejected as 285 teaches the intermediate layer is a PMMA
intermediate layer [0042].
Claim 17 is rejected as 285 teaches the intermediate layer is a polyurethane-
containing intermediate layer [0032].
Response to Arguments
Applicant's arguments filed 01/24/26 have been fully considered but they are not persuasive. The applicant argument regarding differences between Weissenbereger refence and the application claim invention is not persuasive since Weissenbereger meet claim limitation as it currently written( see claim rejection above). Weissenbereger teaches two steps curing as well, and the applicant did not show any show why the specific curing time is critical.
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 TABASSOM TADAYYON ESLAMI whose telephone number is (571)270-1885. The examiner can normally be reached M-F 9:30-6.
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/TABASSOM TADAYYON ESLAMI/Primary Examiner, Art Unit 1718