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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 filed on 5 September 2025 has been entered.
Response to Amendment
The communication of 5 September 2025 has been entered and fully considered. Claims 1-7 and 9-20 are pending
The amendment has overcome the rejection as set forth in the prior office action.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive. The prior office action relied upon component B to meet claim 10 because claim 10 recited the language: further comprises indicating a separate and distinct resin containing the pentaerythritol tetraacralate. The current claim does not require a separate resin but the component can be met A alone.
Should applicant have data which shows the properties to be surprising it would be instrumental in overcoming the references applied.
Election/Restrictions
Applicant’s election of claims 1-10 and 17-20 in the reply filed on 3 March 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Double Patenting
Claims 1-9 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-10 of copending Application No. 18/403,365 in view of Nishine et al (WO 2022/054645A) (using USPGPUB 2023/0364640 as the English version) in view of Kobayashi (JP 2017171794).
Regarding claim 1, claim 1 of the copending Application recites all of the limitations of present claim 1 except for the tetrafunctional limitation regarding the claimed acrylic resin.
Nishine discloses a matte article comprising, on at least a part of a surface thereof, a surface shape with a skewness (Ssk) of 0.00 or more and a kurtosis (Sku) of 3.50 or less as specified in ISO25178-2:2012 [0012]. The matte layer is formed of an ionizing radiation curable resin [0171-175]. The polymerizable monomer is preferably a polyfunctional (meth)acrylate monomer [0176]. The (meth)acrylate most preferably has a functionality of 4 or less in order to achieve stabilization of the wrinkle formation and thereby an enhanced matte effect [0178]. Nishine discloses the amount of the monomer is within the claimed range based on the desired bending and abrasion resistance (0020)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a functionality of 4 (i.e., a tetraacrylate or tetrafunctional acrylic resin) for the copending Application’s acrylic resin. One of ordinary skill in the art would have been motivated to use such a functionality because this would enhance the matte effect as disclosed by Nishine above. The copending Application discloses the desirability of the sheet having low gloss (i.e., a matte effect) (see claim 6).
Nishine is silent with regard to a tetrafunctional acrylic resin containing the claimed repeating structure as a main component.
Kobayashi teaches a UV curable coating composition and laminate comprising a trifunctional or higher acrylate compound (A) having an addition mole number of the alkylene oxide of 4 to 20 (see ¶23-24) where the alkylene oxide is EO or PO It is preferably an ethyleneoxy group or a propyleneoxy group, and the number of moles added is preferably from 6 to 15 to achieve decreased penetration of the ultraviolet-curable coating composition into a paper substrate and improved curability and physical properties are specifically improved when a benzophenone-based photopolymerization initiator (D) is used. Nishine teaches the amount of the polyfunctional monomer is 20-70%.
Nishine and Kobayashi are analogous because both disclose decorative material having surface protective layers formed from ionizing radiation curable resin. Nishine also discloses a paper substrate (¶92) and benzophenone photopolymerization initiator (¶192).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Kobayashi’s propyleneoxy -modified acrylate compound composition as Nishine’s ionizing radiation curable resin material for the benefit of the improved properties taught by Kobayashi. It would have been obvious to pick the PO instead of the EO because both are disclosed as useable known modifiers for acrylate compounds and a PHOISA would expect them to perform the same in the Nishine application.
Claims 2-4 and 6-10 of the copending Application meet the limitations of present claims 2-9, respectively. Likewise, claims 2-4 and 6 of the copending Application meet the limitations of present claims 17-19. Claims 2 and 7 of the copending Application meet the limitations of present claim 20.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
Claims 1-9 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nishine et al (WO 2022/054645A) (using USPGPUB 2023/0364640 as the English version) in view of Kobayashi (JP 2017171794).
Regarding claim 1, Nishine discloses a matte article comprising, on at least a part of a surface thereof, a surface shape with a skewness (Ssk) of 0.00 or more and a kurtosis (Sku) of 3.50 or less as specified in ISO25178-2:2012 [0012]. A laminate having a base material and a cured product layer/matte layer is a preferred embodiment [0069]. The matte article preferably has a decorative layer/sheet [0036]. Examiner’s note: Nishine’s matte layer corresponds to the claimed surface protective layer (A decorative sheet comprising: a base material layer; and a surface protective layer provided on one surface of the base material layer). The matte layer has a surface shape which leads to a dry and smooth touch and a matte effect visibility and texture [0032-33] (also see Figs. 3-5]. The surface shape should have a micro-wrinkled surface visible in the plan view [0046] [see Figs. 6-13]. This surface shape improves the matte effect as well as the dry and smooth touch [0046]. The RSm (average length of the curve elements) is preferably 90.00 um or less [0055]. The Ra (arithmetic mean roughness) is preferably 1.90 um or less [0063]. Inventive embodiments 1-6 disclose RSm/Ra values falling within the claimed range; e.g. example 1 has an RSm of 27.37 um and an Ra of 1.34 um (RSm/Ra of approximately 20) (wherein the surface protective layer has ridge-like parts provided to project in a ridge-like shape and form an irregular shape on a surface, RSm/Ra of the irregular shape of the surface protective layer is within a range of 10 or more and 300 or less) [pg 22, Table 1]. The matte layer is formed of an ionizing radiation curable resin [0171-175]. The polymerizable monomer is preferably a polyfunctional (meth)acrylate monomer [0176] having a functionality preferably from 2 to 6 (the surface protective layer contains an ionizing radiation curable resin as a main material, the ionizing radiation curable resin contains…a tetrafunctional acrylic resin) [0178].
Nishine is silent with regard to a tetrafunctional acrylic resin containing the claimed repeating structure as a main component.
Kobayashi teaches a UV curable coating composition and laminate comprising a trifunctional or higher acrylate compound (A) having an addition mole number of the alkylene oxide of 4 to 20 (see ¶23-24) where the alkylene oxide is EO or PO It is preferably an ethyleneoxy group or a propyleneoxy group, and the number of moles added is preferably from 6 to 15 to achieve decreased penetration of the ultraviolet-curable coating composition into a paper substrate and improved curability and physical properties are specifically improved when a benzophenone-based photopolymerization initiator (D) is used. Nishine teaches the amount of the polyfunctional monomer is 20-70%.
Nishine and Kobayashi are analogous because both disclose decorative material having surface protective layers formed from ionizing radiation curable resin. Nishine also discloses a paper substrate (¶92) and benzophenone photopolymerization initiator (¶192).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Kobayashi’s propyleneoxy -modified acrylate compound composition as Nishine’s ionizing radiation curable resin material for the benefit of the improved properties taught by Kobayashi. It would have been obvious to pick the PO instead of the EO because both are disclosed as useable known modifiers for acrylate compounds and a PHOISA would expect them to perform the same in the Nishine application.
Regarding claim 2, Nishine discloses that the thickness of the matte layer is 1 um or more and 300 um or less, most preferably between 5 um and 100 um [0165]. In the inventive examples, the matte layer thickness is 5 or 18 um (wherein a thickness of the surface protective layer is within a range of 2 um or more and 20 um or less) [pg 22, Table 1].
Regarding claims 3-4, Nishine discloses inventive embodiments wherein the matte layer composition includes wrinkle formation stabilizer (silica particles with an average particle size of 3 um) at 3 parts by mass based on 100 parts by mass of the radiation curable resin [0322] [Table 1] (see Examples 1-6) (The decorative sheet according to claim 2, wherein the surface protective layer contains particles having an average particle size of 10 um or less – claim 3) (The decorative sheet according to claim 3, wherein an adding amount of the particles is within a range of 0.5 part by mass or more and 10 parts by mass or less based on 100 parts by mass of the ionizing radiation curable resin – claim 4).
Regarding claims 5 and 17-19, Nishine discloses that the 60° gloss value of the surface protective layer can be 5.0 or less [0202]. The 60° gloss value of the inventive embodiments is 1.4 (wherein the gloss level of the surface protective layer is 5.0 or less) [Table 1].
Regarding claims 6-7 and 20, Nishine discloses that the height difference between the convex and concave portions can range from 1 um to 20 um [0154]. The thickness of the matte layer can range from 1 um to 300 um [0165]. Examiner’s note: the aforementioned height difference corresponds to the claimed layer thickness of the ridge-like parts. The thickness of the core part is the difference between the layer thickness and the aforementioned height difference. Accordingly, the core part thickness can approach zero at the lower limit (i.e., when the height difference is about the same as the thickness of the matte layer) to as high as 299 um (when the thickness is 300 um and the height difference is 1 um). Therefore, the range of the ratio of a layer thickness of the ridge-like parts to a layer thickness of the core part is 1/299 (0.0033) or higher. According to MPEP 2144.05, Obviousness of Ranges, ‘In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)’. In the present case, the claimed range of 0.01 or more and 2.0 or less (claim 6) (or 0.1 or more and 1.0 or less – claim 7) overlaps the prior art range of 0.003 or higher.
Regarding claim 20, this claim depends on claim 2 which requires the thickness of the surface protective layer to be within a range of 2 um or more and 20 um or less. Nishine discloses that the thickness of the matte layer can range from 1 um to 300 um [0165]. In this case (using a layer thickness range of 2 to 20 um), the core part thickness can approach zero at the lower limit (same as above) to as high as 19 um (when the thickness is 20 um and the height difference is 1 um). Accordingly, the range of the ratio of a layer thickness of the ridge-like parts to a layer thickness of the core part is 1/19 (about 0.05) or higher (The decorative sheet according to claim 2, wherein the surface protective layer includes a core part and ridge-like parts formed on the core part, and a ratio of a layer thickness of the ridge-like parts to a layer thickness of the core part (Layer thickness of ridge-like parts/Layer thickness of core part) is within a range of 0.01 or more and 2.0 or less).
Regarding claim 8, the highest RSm/Ra ratio in Nishine’s inventive embodiments is approximately 50 (see example 5, Table 1; RSm of 32.62 um and Ra of 0.65 um) [Table 1]. However, Nishine discloses more generally than the RSm (average length of the curve elements) is preferably 90.00 um or less and 15.00 um or greater [0055] and the Ra (arithmetic mean roughness) is preferably 1.90 um or less and 0.10 um or larger [0063]. Therefore, the ratio RSm/Ra can range from as high as 90/0.10 (900) to as low as 15/1.9 (approximately 8). According to MPEP 2144.05, Obviousness of Ranges, ‘In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)’. In the present case, the claimed range of 80 to 150 RSm/Ra overlaps the prior art range of 8 to 900.
Regarding claim 9, Nishine discloses a sinusoidal/sine wave shaped surface profile for the matte/surface protective layer [0042-43] [Fig. 2-1].
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK J VINEIS whose telephone number is (571)270-1547. The examiner can normally be reached Monday - Thursday: 8:00 a.m. - 4:00 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Greg Tryder can be reached at (571) 270-7365. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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