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 .
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 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.
Claims 10-26 are pending. Applicant’s previous election of Group I, claims 10-23 and 26 still applies and claims 24-25 remain withdrawn.
Response to Amendment
Applicant’s amendment of 11/13/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art 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) 10-13, 16-17, 20-23, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishio (U.S. 2021/0008858) in view of Uno et al. (U.S. 2018/0251661) in view of Asahi (U.S. 2012/0077046).
Regarding claim 10-13, 16-17, 20-23, and 26 Nishio teaches a PET substrate as in claims 16 and 17 having a thickness overlapping claims 20-21, with a silicone adhesive on one side and an antifouling layer having a thickness overlapping the present disclosure on the other side thereof, which may be KR-400F (the same as in the present examples and inherently a silicone hard coating agent containing a fluorine containing silicone compound with repellent properties as in claims 11 and 22-23 and 26), and which antifouling layer may have a silicone based resin functional layer between the antifouling layer and the substrate, with such a functional layer having UV light absorber thereby providing the substrate with anti-UV treatment as in claims 12-13. (see abstract, [0020]-[0091]).
Nishio does not disclose that the adhesive has the properties of claim 10 or the thickness of claims 20-21, however, Uno is also directed to silicone adhesives for multilayer films and teaches that a silicone adhesive having the claimed properties and a thickness overlapping claims 20 and 21 allows the adhesive to conform to cracks on the surface that the multilayer is adhered to (see abstract, [0044], [0071], Table 1, page 10) such that it would have been obvious to have used such an adhesive from Uno as the generic silicon adhesive called for in Nishio so that the multilayer can conform to cracks on the surface that the multilayer is adhered to. The thicknesses discussed above, including the total thickness of the substrate, adhesive and antifouling layer for the overall sheet, overlap claims 20 and 21.
The intended use of preventing graffiti in claims 22-23 is not given patentable weight but the antifouling surface of modified Nishio is inherently capable of such a use, as explained above.
Modified Nishio does not disclose that the fluorine silicone compound antifouling layer also has the UV absorber (though suggests UV absorbers in general, and for the functional layer). However, Asahi is also directed to fluorine silicone based antifouling layers and teaches that UV absorbers were a known additive and thus would have been obvious to use in modified Nishio to provide UV absorbing (protection) properties to the antifouling layer as well as additional UV absorbing (protection) properties to the underlying layers (see abstract, [0137], [0227]).
Claim(s) 14-15, 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishio (U.S. 2021/0008858) in view of Uno et al. (U.S. 2018/0251661), as applied to claim 10, in view of Shimano (U.S. 2011/0217541).
Regarding claim 14-15, 18-19, modified Nishio teaches all the above subject matter, but does not disclose that the resin functional film is a hard coat, or that the substrate has antireflective properties. However, Shimano is also directed to multilayer films with a silicone functional layer on a PET substrate followed by an antifouling layer, and teaches that the silicone functional layer between the substrate and antifouling layer may be provided with inorganic filler particles to make it a hard layer to prevent abrasion (thus making it a silicone hard coating as in claims 14-15, with UV absorber in this functional layer being already taught by Nishio as explained above), and also teaches that the functional layer may include refractive index modifiers to provide antireflective properties, such that the combination of PET and antireflective hard coat constitute an antireflective substrate, as in claims 18-19 (see abstract, [0041], [0097], [0105]-[0107], [0182], [0192], [0277], [0295]). Thus, it would have been obvious to have added hard particles and refractive index modifiers to the silicone functional layer of modified Nishio in order to provide the functional layer with hardness/abrasion resistance and antireflective properties as taught by Shimano, in addition to the anti UV function already taught by Nishio.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment.
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 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787