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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/29/2026 has been entered.
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.
Claim 13 is 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 13 recites “the intermediate layer is not foamed”. There is no support for this limitation in the specification. With respect to the limitation “not foamed”, it is also noted that the cited phraseology clearly signifies a “negative” or “exclusionary” limitation for which the applicants have no support in the original disclosure. Negative limitations in a claim which do not appear in the specification as filed introduce new concepts and violate the description requirement of 35 USC 112, first paragraph, Ex Parte Grasselli, Suresh, and Miller, 231 USPQ 393, 394 (Bd. Pat. App. and Inter. 1983); 783 F. 2d 453.
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.
Claims 1, 3-8 and 11-13 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.
Claim 1, lines 12-13 recite that a mass proportion of “the olefin-based resin” in the total mass of the skin layer is 80 % by mass or more. The scope of the claim is confusing given that line 2 of the claim recites that the skin layer is an olefin-based thermoplastic elastomer. It is advised that in line 12, “the olefin-based resin” is amended to “the olefin-based thermoplastic elastomer”. This rejection affects all dependent claims.
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.
Claims 1, 3-8 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (JP H09193300 A). It is noted that the disclosures of Kobayashi et al. are based on a machine translation of the reference which is included in this action.
Regarding claims 1, 3, 4, 8 and 12, Kobayashi et al. disclose a laminate (skin material) consisting of a skin layer, an intermediate layer and a foam layer, in that order (see Abstract). Accordingly, the skin layer is in direct contact with the intermediate layer. The thickness of the skin layer is 0.01 to 1 mm, the thickness of intermediate layer is 0.1 to 3 mm and the thickness of the foam layer is 0.5 to 10 mm (see paragraph 0055).
The skin layer is made of a thermoplastic composition comprising 0 to 95 wt% of a thermoplastic elastomer A and 5 to 100 wt% of poly-1-butene B (see Abstract). The thermoplastic elastomer A comprises a crystalline polyolefin resin (a) and a crosslinked olefin rubber (b) (see paragraphs 0010, 0011). Accordingly, given that skin layer comprises 0 to 95 wt% of thermoplastic elastomer A that comprises crystalline polyolefin resin (a) (olefin-based resin) and crosslinked olefin rubber (b) (olefin-based resin), the thermoplastic elastomer A is olefin-based thermoplastic elastomer present in amount of 0 to 95 wt% in the skin layer.
The intermediate layer is made of a thermoplastic elastomer A’ comprising a crystalline polyolefin resin (a’) and a crosslinked olefin-based rubber (b’) (see Abstract). The crystalline polyolefin resin (a’) can be same as crystalline resin (a) and includes crystalline polypropylene resin (see paragraphs 0049, 0019, 0009). The crosslinked rubber (b’) can be same as the crosslinked olefin-based rubber (b’) and includes crosslinked propylene/a-olefin rubber (see paragraphs 0049, 0019, 0011). Accordingly, given that thermoplastic elastomer A’ comprises crystalline polypropylene resin (polypropylene resin) and crosslinked propylene/a-olefin rubber (polypropylene resin), the thermoplastic elastomer A’ is polypropylene resin present in amount of 100 wt% in the intermediate layer.
The foam layer can be made of polypropylene foam having expansion ratio of 10 to 50 times (see paragraphs 0050 and 0053).
In light of the overlap between the claimed skin material and that disclosed by Kobayashi et al., it would have been obvious to one of ordinary skill in the art to use a skin material that is both disclosed by Kobayashi et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 5, Kobayashi et al. disclose the skin material as set forth above. The skin layer, the intermediate layer and foam layer are identical to that presently claimed including resins identical to that presently claimed in amounts that overlap that presently claimed as well as thickness that overlap that presently claimed. Within the overlapping ranges, given that the skin layer and intermediate layer of Kobayashi et al. are identical to that presently claimed, a tensile elongation at break of a laminate of the skin layer and the intermediate layer of Kobayashi et al. would necessarily inherently be the same as that presently claimed.
Regarding claim 6, Kobayashi et al. disclose the skin material as set forth above. The skin material including the skin layer, the intermediate layer and the foam layer of Kobayashi et al. is identical to that presently claimed including resins identical to that presently claimed in amounts that overlap that presently claimed as well as thickness that overlap that presently claimed. Within the overlapping ranges, it is clear that when a stack consisting of two sheets of the skin material is prepared and measured, the stack would necessarily inherently have the same Shore A hardness as presently claimed.
Regarding claim 7, Kobayashi et al. disclose the laminate (skin material) is used to prepare an automobile interior part such as an instrument panel (see paragraphs 0001, 0062). Accordingly, Kobayashi et al. disclose an instrument panel as presently claimed.
Regarding claim 11, Kobayashi et al. disclose the laminate (skin material) is used to prepare an automobile interior part such as an airbag cover (see paragraphs 0001, 0062). Accordingly, Kobayashi et al. disclose a covering material as presently claimed.
Regarding claim 13, there is no disclosure in Kobayashi et al. that the intermediate layer is foamed. Further, Kobayashi et al. disclose the intermediate layer made of a thermoplastic elastomer A’ comprising a crystalline polyolefin resin (a’) and a crosslinked olefin-based rubber (b’) (see Abstract). That is, intermediate layer is not foamed.
Response to Arguments
Applicant's arguments filed 01/29/2026 have been fully considered. All arguments except as set forth below are moot in light of new grounds of rejections.
Applicants argue that finally, Applicant asserts that the claimed limitations provide unexpected results and are commensurate in scope with unexpected results demonstrated in Table 1, particularly with respect to new claim 12.
Regarding the data, the data is not persuasive given that the data is not commensurate in scope with the scope of claim 1 given that (i) the examples recite a specific skin layer comprising specific olefin-based elastomer (8030NH) in a specific amount (90 wt.%) and having specific thicknesses (0.4-0.7 mm) (see paragraph 0055 and Table 1), while the present claims have broad recitation of skin layer comprising any olefin-based elastomer in broad amounts (80% by mass or more) and any thickness of skin layer, (ii) the examples recite a specific intermediate layer comprising specific polypropylene resin (PRIME POLYPRO E701G, block polypropylene or PRIME POLYPRO B211WA, random polypropylene) in a specific amount (90 wt%) (see paragraphs 0056 and 0064 and Table 1), while the present claims have broad recitation of intermediate layer comprising any polypropylene resin in broader different amount (95% by mass or more), and (iii) the examples recite a specific foam layer comprising a specific olefin-based resin foam (polypropylene) having specific expansion ratio (15 to 20) and specific thicknesses (3.0-4.0 mm) (see paragraph 0057 and Table 1), while the present claims have broad recitation of foam layer comprising any olefin-based resin foam having broad expansion ratio (15 to 30) and broad thickness (3.0-5.0 mm).
Specifically with respect to claim 12, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims given that (i) the examples recite a specific skin layer comprising specific olefin-based elastomer (8030NH) in a specific amount (90 wt.%) (see paragraph 0055 and Table 1), while claim 12 has broad recitation of skin layer comprising any olefin-based elastomer in broad amounts (80% by mass or more), (ii) the examples recite a specific intermediate layer comprising specific polypropylene resin (PRIME POLYPRO E701G, block polypropylene or PRIME POLYPRO B211WA, random polypropylene) in a specific amount (90 wt%) (see paragraphs 0056 and 0064 and Table 1), while claim 12 has broad recitation of intermediate layer comprising any polypropylene resin in broad different amounts (95% by mass or more), and (iii) the examples recite a foam layer having specific expansion ratio (15 to 20) (see paragraph 0057 and Table 1), while the present claims have foam layer having broad expansion ratio (15 to 30).
Further, Comparative Examples 1-2 and 4-5 are not commensurate in scope with the scope of the closest prior art Kobayashi et al. given that Comparative Examples 1-2 and 4-5 do not comprise an intermediate layer; however, Kobayashi et al. requires the presence of an intermediate layer. That is, Kobayashi et al. already recognizes the criticality of the presence of the intermediate layer. With respect to Comparative Example 3, there is not a proper side-by-side comparison between Comparative Example 3 and any of the Inventive Examples given that Comparative Example 3 has a different skin layer thickness and different intermediate layer thickness and therefore, it is not clear if the difference in results is due to the polyethylene used in the intermediate layer or the difference in thicknesses.
Conclusion
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/KRUPA SHUKLA/Examiner, Art Unit 1787