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 .
Priority
This application is the 35 U.S.C. § 371 national stage entry of PCT/CN2022/111001, filed 08/09/2022 and published as WO 2023/201931 A1 on 10/26/2023. This application also claim benefit of CN 202210408598.2, filed 094/19/2022 and published on
3/28/2023 as CN 115847887 A.
The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
Election/Restrictions
Applicant's election with traverse of claims 1, 2, and 4-11 in the reply filed on 10/09/2025 is acknowledged. The traversal is on the ground(s) that Sakurai does not teach the special technical feature wherein the polymeric transparent film and the polymeric printing film are prepared from the same material, as recited in independent claim 1, as amended. This is not found persuasive because this feature still does not make a contribution of the prior art in view of the prior art rejections set forth herein below and unity is lacking a posteriori.
The principles of unity of invention are used to determine the types and claimed subject matter and the combinations of claims to different categories of invention that are permitted to be included in a single national stage patent application. The basic principle is that an application should relate to only one invention or, if there is more than one invention, that Applicant would have a right to include in a single application only those inventions which are so linked as to form a single general inventive concept. See MPEP §1893.03(d).
Whether or not any particular technical feature makes a “contribution” over the prior art, and therefore constitutes a “special technical feature,” should be considered with respect to novelty and inventive step. For example, a document discovered in the international search shows that there is a presumption of lack of novelty or inventive step in a main claim, so that there may be no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept.
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Lack of unity of invention may be directly evident “a priori,” i.e., before considering the claims in relation to any prior art, or may only become apparent “a posteriori,” i.e., after taking the prior art into consideration. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims.
However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art. This method for determining whether unity of invention exists is intended to be applied even before the commencement of the international search. Where a search of the prior art is made, an initial determination of unity of invention, based on the assumption that the claims avoid the prior art, may be reconsidered on the basis of the results of the search of the prior art. See MPEP §1850(II).
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-16, 18, and 21-23 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/09/2025.
Specification
The abstract of the disclosure is objected to because (i) it recites phrases that may be implied (“The present disclosure relates to”) and (2) it refers to the purported merits of the invention (e.g., “desirable abrasion and scratch resistance through a composite structure design”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claims 7 and 10 are objected to because of the following informalities:
Claim 7 should read - - an ultraviolet light-emitting diode (UV-LED) lamp - -.
Claim 10 should read - - coating the radiation-cured coating A_on a rigid transparent PVC film - -.
Appropriate correction is required.
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.
Claim 8 is 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.
The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110774625 A, published 02/11/2020 (reference made to US 11,938,704 B2 as the English-language equivalent) in view of US 2020/0269555 A1.
Claims 1 & 2
US 704 teaches a method of preparing a composite pre-coating film comprising: (1) laminating (i.e., “[t]o manufacture by placing layer upon layer of material”1) a PVC transparent film layer (i.e., “polymeric transparent film”) to a radiation-cured coating (i.e., radiation-cured coating A); followed by (2) laminating this structure to a printed decorative layer on a substrate [3:37-55]. The resulting structure may be represented as follows:
Radiation-cured coating
PVC transparent film layer
+
Decorative layer
Substrate
↓
Radiation-cured coating
PVC transparent film layer
Decorative layer
Substrate
Insofar as the radiation-cured coating and the PVC transparent film layer are laminated together, and that dual-layer structure is laminated to the decorative layer | substrate structure, the layers are laminated “in sequence” (i.e., in an order of one thing following another). The claim does not specify an order to the sequence (i.e., “in that sequence” or “in that order”). Moreover, the claim does not specify a substrate (permanent or temporary) as an “anchor” so as to identify which layer is attached to said substrate. See Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F. 3d 1323, 1342 (Fed. Cir. 2001) and TALtech Ltd. v. Esquel Apparel, Inc., 279 Fed. Appx. 974, 978 (Fed. Cir. 2008).
US 704 does not teach that the decorative layer is a polymeric printing film and that this film and the polymeric transparent film are prepared from the same material; here, PVC. However, US 704 does not place any limitation of the material: “The present application does not particularly limit the source of the printed decorative layer” [4:14-15]. It is the Primary Examiner’s position that it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized any suitable material as the decorative layer.
US 555 teaches a process of manufacturing a composite pre-coating film (“upper intermediate product (1)”) including, inter alia, laminated layers including a transparent PVC layer, a PVC plastisol printing layer (5), and a decorative print layer (6) [0040, 0044]. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have either utilized, as the decorative layer in the process of US 704, a PVC printing layer, or included in the laminate structure, a PVC printing layer-decorative layer structure, as taught by US 555, e.g.:
Radiation-cured coating
PVC transparent film layer
+
Decorative layer
PVC printing layer
Substrate
↓
Radiation-cured coating
PVC transparent film layer
Decorative layer
PVC printing layer
Substrate
One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully providing a decorative layer in the process of US 704 since US 555 teaches that PVC is known in the art as suitable for this purpose. MPEP § 2143(A). In the alternative, one of ordinary skill in the art would have been motivated to do so by the desire and expectation of advantageously providing a resin layer capable of receiving and holding a pattern from, e.g., roto-gravure printing, as taught by US 555 [0041] (US 704 contemplates texture laminate materials [1:36-37 and 4:27-30]). See MPEP § 2144(II) (“the expectation of some advantage is the strongest rationale for combining references”). Finally, another advantage of this combination is the enhanced adhesion provided by the printing layer’s and the transparent film layer’s being made of the same material. Id.
Claim(s) 4-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110774625 A, published 02/11/2020 (reference made to US 11,938,704 B2 as the English-language equivalent) in view of US 2020/0269555 A1, as applied to claim 1 above, further in view of JP H0613209 B2.
Claim 4
Steps (1) and (2) of this claim are detailed above, with US 704 teaches joining the two components by press-fitting [3:44-46]. Neither US 704 nor US 555 teach that the press-fitting roller is an embossing roller.
JP 209 teaches that press fitting flooring laminates can be performed using a heated embossing roll, forming a desired pattern without causing cracks (“The decorative sheet and substrate are easily deformed by press-fitting molding while imparting plasticity using the embossing roll or embossing board on which the surface of the decorative plate is heated, forming sharp narrow groove recesses without causing cracks.”). See “Effect of the Invention.”
It would have been obvious to one of ordinary skill in the art, before the effective date of the claimed invention, to modify the process of US 704 in view of US 555 so as to utilize, as the pressing device during press fitting, an embossed roller. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully press fitting the two components together. MPEP § 2143(a). Moreover, an embossed press roller would have advantageously imparted a decorative pattern, taught as desirable by the cited prior art. MPEP § 2144(I).
Claim 5
US 704 further teaches “[i]n one embodiment, the radiation-cured coating comprises an adhesive primer layer, an elastic primer layer, and a top coating layer [i.e., “finishing coat”] sequentially from the bottom up” [4:18-20]. The layers are applied to the transparent film in sequence and the adhesive primer is radiation-cured [13:1-24].
Claim 6
US 704 teaches that the adhesion primer is cured by LED-UV coating [13:7-12].
Claim 7
US 704 teaches that the finishing coat (i.e., “top coating”) is cured by UV [21-23]. While US 704 does not specify the particular type of UV source, at least the claimed mercury lamp, UV-LED, halogen lamp, and light source with a wavelength of 254 nm (i.e., UV-C light) are all known sources of UV and it would have therefore been obvious to one of ordinary skill in the art to utilize any one or all of these based on the desire and expectation of successfully curing the finishing coat. MPEP § 2143(A)-(C).
Claim 8
US 704 does not explicitly teach a thickness of the claimed layers. Nevertheless, it is the Primary Examiner’s position that the thickness of each of the claimed layers is a result-effective variable. The layer must be thick enough to perform its function, while not being so thick as to be wasteful of materials, make the coating to thick or too heavy, be too slow to cure, or otherwise deleteriously affect further processing. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the thickness of the adhesion primer, finishing coat, and middle coating (adhesive primer, elastic primer, and top coating) by routine experimentation, absent evidence of criticality. MPEP § 2144.05. Nothing in the record indicates that the optimization of these thicknesses was anything other than the exercise of ordinary skill in the art and, moreover, “[t]he mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of one of a person having ordinary skill in the art.” In re Applied Materials, Inc., 692 F. 3d 1289, 1298-99 (Fed. Cir. 2012).
Claim 9
US 740 teaches that the elastic primer layer (i.e., “the middle coating”) comprises bifunctional polyurethane acrylic resins and bifunctional polyurethane acrylate monomers only [see Examples, e.g., 12:30-35].
US 740 does not teach the claimed additional multi-functional (functionality > 2) polyurethane acrylate resin.
Nevertheless, it would have been obvious to one of ordinary skill in the art to utilize a resin with any desired functionality sufficient to form the cured (i.e., cross-linked) film, including acrylate resins with a higher degree of functionality to get a faster or more complete cross-linking of the layer.
Claim 10
US 740 in view of and US 555 teach the limitations of this claim as explained above in connection with claims 1, 4, and 5.
Claim 11
The cited prior art does not teach the claimed film thicknesses and plasticizer content for the PVC films.
With respect to the former, film thickness is a result-effective variable. The layers must be thick enough to perform their functions, while not being so thick as to be wasteful of materials, make the coating to thick or too heavy, be too slow to cure, or otherwise deleteriously affect further processing. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the thickness of the PVC films by routine experimentation, absent evidence of criticality. MPEP § 2144.05. Nothing in the record indicates that the optimization of these thicknesses was anything other than the exercise of ordinary skill in the art and, moreover, “[t]he mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of one of a person having ordinary skill in the art.” In re Applied Materials, Inc., 692 F. 3d 1289, 1298-99 (Fed. Cir. 2012).
Similarly, the amount of plasticizer added to a PVC film is also a well-known result-effective variable. Addition of plasticizer makes the PVC film more flexible. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the plasticizer in the PVC film(s) by routine experimentation to achieve the desired rigidity of the film, absent evidence of criticality. MPEP § 2144.05. Nothing in the record indicates that the optimization of these plasticizer concentrations was anything other than the exercise of ordinary skill in the art and, moreover, “[t]he mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of one of a person having ordinary skill in the art.” In re Applied Materials, Inc., 692 F. 3d 1289, 1298-99 (Fed. Cir. 2012).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
13 November 2025
1 Laminate, Oxford English Dictionary, https://www.oed.com/dictionary/laminate_v?tab=meaning_and_use&hide-all-quotations=true#39925321 (last visited Nov. 12, 2025).