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 § 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) 1-7, 10-12 and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Khan et al. (US 2019/0352530).
Regarding claims 1, 10 and 14, 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 i.e. outermost layer, and the barrier layer and the surface layer are in direct contact as claimed in present claims.
It is noted that Khan does not disclose a specific thickness of the substrate but discloses flexing substrate (abstract, 0012, 0013).
Since the instant specification is silent to unexpected results, the specific thickness of the substrate is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of substrate, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of substrate in decorative sheet to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
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 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).
Regarding clams 4-7, Khan discloses the decorative sheet of claim 1, wherein the modified PVOH includes acetoacetyl group containing the reactive carbonyl group, i.e. a hydrophobic group, (0064).
Regarding claims 11-12, 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).
It is noted that Khan does not disclose a specific thickness of the substrate but discloses flexing substrate (abstract, 0012, 0013).
Since the instant specification is silent to unexpected results, the specific thickness of the substrate is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of substrate, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of substrate in decorative sheet to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
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.
Regarding claims 15-18, 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), i.e. one film (between the substrate and the barrier layer) of the laminate is interpreted as a pattern layer and the other film of the laminate is interpreted as surface protective layer, i.e. outermost layer, and therefore it is clear that Khan discloses substrate, pattern layer, a barrier layer and a surface protecting layer in this order as claimed in present claims.
It is noted that Khan does not disclose a specific thickness of the substrate but discloses flexing substrate (abstract, 0012, 0013).
Since the instant specification is silent to unexpected results, the specific thickness of the substrate is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of substrate, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of substrate in decorative sheet to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim(s) 8-9 and 13 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 and 13, 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.
Response to Arguments
Applicant's arguments with respect to present claims have been considered but are moot in view of the new ground(s) of rejection.
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 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
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