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 .
Status of Claims
Applicant’s amendments dated 12/15/25 have been entered. Claim 1 has been amended. Claims 6 and 20 have been cancelled. Claims 13-16 stand withdrawn. This leaves claims 1-5, 7-12, and 17-20 currently pending and active.
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.
Claims 1-5, 7-9, 11, 12, and 17-19 are rejected under 35 U.S.C. 103 as being obvious over Horio et al. (US 2019/0248100).
Regarding claims 1-3, 12, and 17, Horio teaches a decorative laminate comprising a base material sheet (substrate) (Horio para 13, 33, 39, item 2), a decorative picture pattern layer (Horio para 11, 13, 45, item 3), a transparent resin layer of a thermoplastic olefin with a thickness of 80-200 µm (Horio para 13, 52, 53, 56, item 4), and a transparent surface protective layer with a thickness of 20-40 µm (Horio para 13, 57, item 5) laminated in that order (Horio para 13, 31), where the transparent resin layer and the transparent surface protective layer collectively form the claimed ‘transparent resin film’. Additionally, Horio teaches that the transparent resin layer may comprise additional layers, such as a transparent adhesive layer (Horio para 52, 91). Specifically, Horio teaches that the transparent adhesive layer is not limited as long as it is transparent (Horio para 91), providing examples including thermoplastics such as polyamides, acrylics, and vinyl acetate (Horio para 92). For the transparent layer, besides the applicable polyolefins, Horio further teaches thermoplastic acrylics, polyamides, and vinyl acetates, (Horio para 53) the same materials suggested for the transparent adhesive layer at paragraph 92.
It would therefore be obvious to one of ordinary skill in the art that a transparent thermoplastic polyolefin would be a functional equivalent to the acrylic, polyamide, and/or vinyl acetates listed as transparent materials while further providing the benefit of excellent embossing suitability (Horio para 53).
Horio further teaches that the Rzmax should meet the equation 0.4t ≤ Rzmax ≤ t, where t is the total thickness of the decorative layer (Horio para 86). In practice, Horio teaches that the Rzmax is greater than about 30 µm and less than about 150 µm (Horio Table 1, para 162). This would provide for the claimed ‘thickness at a depression of the pattern of protrusions and depressions of 80 µm or more’ via overlapping values of the thickness and Rzmax according to JIS B0601 (rev 2001) (Horio para 87).
One of ordinary skill in the art would have considered the invention to have been obvious because the Rzmax taught by Horio overlaps with the instantly claimed Rzmax and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, see MPEP 2144.05.
Horio further teaches that the transparent resin film has a pattern of depressions and protrusions opposite the side of the picture layer (Horio para 81), and that the transparent surface protective layer comprises an ionizing radiation curable resin (Horio para 67) and a triazine UV absorber (Horio para 76). Prior art which teaches a range within, overlapping, or touching the claimed range anticipates if the prior art range discloses the claimed range with sufficient specificity, see MPEP 2131.03.
Regarding claims 4 and 18, Horio teaches a multilayer protective film for a decorative layer as above for claim 1. Horio further teaches that the transparent resin film comprises an adhesion primer layer opposite the transparent surface protector layer, that is, on the transparent resin layer (Horio para 94).
Regarding claims 5 and 19, Horio teaches a multilayer protective film for a decorative layer as above for claim 1. Horio further teaches that the transparent resin layer comprises a thermoplastic resin (Horio para 52-53).
Regarding claim 7, Horio teaches a multilayer protective film for a decorative layer as above for claim 1. Horio further teaches that the transparent resin layer comprises a flame retardant (Horio para 55).
Regarding claim 8, Horio teaches a multilayer protective film for a decorative layer as above for claim 1. Horio further teaches that the transparent surface protective layer comprises a flame retardant (Horio para 78).
Regarding claim 9, Horio teaches a multilayer protective film for a decorative layer as above for claim 7. Horio further teaches that additional things may be included in the transparent resin layer such as additives, lubricants, and colorants, which may be considered fillers (Horio para 54-55).
Regarding claim 11, Horio teaches a multilayer protective film for a decorative layer as above for claim 1. Horio further teaches that the surface protective layer comprises at least one antibacterial agent (Horio para 77).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Horio as applied to claim 1 above, and further in view of Inoue et al. (US 2016/0017076).
Regarding claim 10, Horio teaches a multilayer protective film for a decorative layer as above for claim 7.
While Horio teaches the presence of a flame retardant, Horio is silent with respect to which flame retardants may be used.
Horio and Inoue are related in the field of protective curable, heat resistant transparent resins. Inoue teaches the use of phosphorous/phosphate and phosphazene compounds as known and common flame retardants (Inoue para 83). It would be obvious to one of ordinary skill in the art to utilize common flame retardants such as the phosphorous/phosphate and phosphazene compounds as taught by Inoue as the flame retardant in Horio.
Response to Arguments
Applicant’s cancellation of claim 20 has obviated the 112(d) rejection. It has therefore been withdrawn.
Applicant's arguments filed 12/15/25 have been fully considered but they are not persuasive.
Applicant provides a summary of the rejection of claims 1 and 10 on pages 7-9, with arguments appearing to begin on page 9.
Applicant argues on pages 9-10 that “transparent adhesive layer” only refers to the type of transparency, colorless, colored, and semi-transparent, not transparent materials.
The Examiner respectfully disagrees. It is respectfully noted that ‘transparent adhesive layer’ only referring to the type of transparency and not the type/material of adhesive is a conclusory statement contradicted by the following paragraph, 92 of Horio, cited by Applicant, where the material of the adhesives is immediately described.
Applicant further alleges no motivation was provided.
The Examiner respectfully directs Applicant’s attention to paragraph 9, above.
Finally, no teaching away within the reference, or evidence has been provided to support Applicant’s assertions.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/L.B.F/Examiner, Art Unit 1781 1/10/25
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781