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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/23/26 has been entered.
Response to Amendment
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 amendment of adding claims 19-20 is supported by the original disclosure.
The previous 103 rejections have been maintained and repeated.
The previous restriction has been maintained and repeated. The applicant affirmed the election Group I (claims 1-14) without indicating traverse in response 9/4/25.
Newly submitted claims 19-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claim 19 is drawn to Group I plus an elastomeric layer further comprising a mixture of polymers other than polyurethane; claim 20 is drawn to multilayer article with microspheres submerged in the bead boding layer, which is distinct from the one of claim 1 (Group I), wherein microspheres are embedded in the bead boding layer. The restriction as stated in the previous office action is repeated here as such. Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §1.143 and 1.144. See 37 CFR 1.142(b) and MPEP § 821.03.
Accordingly, claims 19-20 are withdrawn from consideration as being directed to a non-elected invention. It is duly notified claim 19 does not use appropriate Markush language.
Claim Rejections - 35 USC § 103
Claim(s) 1-5 and 7-14 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Clark et al. (US 20180319204) in view of Ho et al. (US 20170107398).
As to claims 1-5 and 7-14, Clark (abs., examples, claims, figures, 1, 7, 11, 35-50) discloses a multilayer decorative article comprising a microsphere layer, bead bonding layer, and a substrate layer:
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The substrate layer includes an elastomer or polyurethane and has a thickness of 75 microns. The bead bonding layer can be formed by polyurethane directed bonded to microspheres and contains metallic flake pigment. The microsphere can be polyurea spheres having a refraction index less than 1.55 without surface modification, which would inherently contain amino groups on the surface because of the backbone structures of polyurea. Clark further discloses using pigment in bead bonding layer (42).
Clark is silent on the claimed thermoset polyurethane bead bonding layer.
In the same area of producing decorative articles, Ho (abs., examples, claims, figures, Table 1, 1, 15, 34, 37, 42, 95) discloses a solventless thermoset polyurethane film prepared from C-1090 polyol (the same liquid polycarbonate polyol of instant pgpub 0074 and Table 1) and/or liquid polyester polyol with CAPA 3031 polyol (trifunctional caprolactone polyol, the same 3-hyroxyl polyol of instant pgpub 0074 and Table 1) and polyisocyanate. Ho’s liquid polyols would inherently meet the claimed viscosity and equivalent weight of instant claims 2 and 4 for being the same materials. The disclosed thermoset polyurethane provides surface protection from weather and contaminants.
Therefore, as to claims 1-5 and 7-14, it would have been obvious to one of ordinary skill in the art to have modified the article disclosed by Clark and replaced the polyurethane of the bead bonding layer with the thermoset polyurethane in view of Ho, because the resultant article would yield improved surface protection.
Claim(s) 6 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over unpatentable over Clark et al. (US 20180319204) in view of Ho et al. (US 20170107398) and further in view of Flat et al. (EP 0676432).
Disclosure of Clark and Ho is adequately set forth in ¶1 and is incorporated herein by reference.
Clark and Ho is/are silent on the claimed polyurethane elastomer. Clark (37) discloses the elastomer substrate may be in the form of automobiles.
In the same area of endeavor of producing automobile components, Flat (abs., examples, claims, 1-3, 12-15, 19-30, 51) discloses a polyurethane elastomer with improved tensile strength produced by reacting polydiene (butadiene, isoprene, chloroprene,pentadiene-1,3, cyclopentadiene) diol and ethylene glycol with diisocyanate.
Therefore, as to claim 6, it would have been obvious to one of ordinary skill in the art to have modified the article disclosed by Clark and replaced the elastomer with the polyurethane elastomer in view of Flat, because the resultant article would yield improved tensile strength.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Applicant's argument (6:4) of Clark and this application are in the different area of endeavor appears erroneous. Clark and Ho are in the same area of producing decorative articles, and they are analogous arts can be combined to meet the claims with the motivation taught by Ho. This application fails to claim “weathering or heat stability”, so the attack on Clark appears irrelevant.
Applicant’s argument (6:5) that Ho should be used as a primary reference appears irrational and irrelevant. The examiner urges the applicant to be responsive to the previous rejections rather than alleging the prosecution of the examination of this application, which is a job belongs to this examiner. Applicant’s attack on Ho (6:6) citing Ho’s comparative example 2 appears erroneous and irrelevant. Ho’s comparative example 2 has not been cited for the rejection. Ho does not teach away from, this application and Clark.
In response to applicant's argument (6:7) that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Therefore, as to claims 1-5 and 7-14, it would have been obvious to one of ordinary skill in the art to have modified the article disclosed by Clark and replaced the polyurethane of the bead bonding layer with the thermoset polyurethane in view of Ho, because the resultant article would yield improved surface protection.
Therefore, as to claim 6, it would have been obvious to one of ordinary skill in the art to have modified the article disclosed by Clark and replaced the elastomer with the polyurethane elastomer in view of Flat, because the resultant article would yield improved tensile strength.
Therefore, the previous restriction and 103 rejections have been maintained and repeated.
This is an RCE of applicant’s earlier Application. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP §706.07(b). 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 extension fee 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766