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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 and 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamikubo et al. (US 6013602).
Regarding claim 1, Kamikubo discloses a sheet, i.e. decorative sheet, comprising substrate, barrier layer, and an intermediate layer formed on the barrier layer, i.e. a surface protective layer, in this order (abstract, col. 5, lines 20-35), wherein the barrier layer includes a mixture of vinyl alcohol and polyurethane resin (abstract).
Regarding claim 2, Kamikubo discloses the sheet of claim 1, wherein given that the barrier layer discloses the same composition as claimed in present claim, it is clear that the barrier layer of Kamikubo would inherently have the same properties as claim in present claim.
Regarding claim 8, Kamikubo discloses the sheet of claim 1, wherein the surface protecting layer includes a polyurethane resin (col. 5, lines 36-38).
Regarding claim 9, Kamikubo discloses the sheet of claim 1, wherein given that the surface protecting layer discloses the same composition as claimed in present claim, it is clear that the surface protecting layer of Kamikubo would inherently have the same properties as claim in present claim.
Regarding claim 10, Kamikubo discloses the sheet of claim 1, wherein the surface protecting layer and the barrier layer are in direct contact (abstract, col. 5, lines 20-35).
Claim(s) 1-3 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shih et al. (US 2005/0196607).
Regarding claims 1, 3 and 10, Shih discloses multilayer decorative laminate comprising dry paint layer, i.e. substrate, (0020), barrier layer (0020) and a dry PSA layer, i.e. protective layer (0020) in this order (fig. 1, 0020) wherein the barrier layer comprises 70 to 95% by weight of vinyl alcohol based resin and 5 to 30% by weight of polyurethane resin (0062).
Regarding claim 2, Shih discloses the decorative sheet of claim 1, wherein given that the barrier layer of Shih discloses the same composition as claimed in present claim, it is clear that the barrier layer of Shih would inherently have the same properties as claim in present claim.
Claim(s) 1-2, 4-7 and 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khan et al. (US 2019/0352530).
Regarding claims 1 and 10, Khan discloses laminate, i.e. decorative sheet, (0038) comprising substrate and barrier layer (0038) wherein the barrier layer comprises acetoacetate modified PVOH (0030) and 0.1 to 5 wt% of polyurethane (0068), wherein Khan discloses the barrier layer is sandwich between two films of a laminate (0040) and therefore one layer of the laminate is interpreted as a surface protective layer and the barrier layer and the surface layer are in direct contact as claimed in present claims.
Regarding claim 2, Khan discloses the decorative sheet of claim 1, wherein given that the barrier layer of Khan discloses the same composition as claimed in present claim, it is clear that the barrier layer of Khan would inherently have the same properties as claim in present claim.
Regarding clams 4-7, Khan discloses the decorative sheet of claim 1, wherein the modified PHOH includes acetoacetyl group containing the reactive carbonyl group, i.e. a hydrophobic group, (0064).
Regarding claim 11, Khan discloses article comprising a resin article (0002, 0019, 0028) and a decorative sheet of claim 1 place on a surface of the resin article (0028).
Although Khan does not disclose molding, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Khan meets the requirements of the claimed article, Khan clearly meets the requirements of the present claims.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Khan et al. (US 2019/0352530).
Regarding claim 3, Khan discloses the decorative sheet of claim 1, wherein the barrier layer comprises 0.1 to 5 wt% of polyurethane (0068).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Khan et al. (US 2019/0352530) in view of Kubik et al. (US 2012/0141642).
Regarding claims 8-9, Khan discloses the decorative sheet of claim 1, but fails to disclose polyurethane resin in the protective layer.
Kubik discloses laminate for packaging comprising outer layer including polyurethane resin to obtain good water vapor resistance and puncture resistance (0018).
It would have been obvious to one of ordinary skill in the art to use the polyurethane resin of Kubik in the protective layer of Khan to obtain good water vapor resistance and puncture resistance. Given that Khan in view of Kubik discloses the same protective layer as claimed in present claims, it is clear that the protective layer of Khan in view of Kubik would intrinsically possess the same properties as claimed in present claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787