DETAILED ACTION
In the amendment filed on June 26, 2026, claims 1, 4 – 6, 12 – 15, 18 – 24, 28, 30, 33, 35 – 36 are pending. Claim 1 has been amended and claims 2 – 3, 7 – 11, 16 – 17, 25 – 27, 29, 31 – 32, 34 have been canceled.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Analysis
The claims have been amended/contain one or more negative limitations. While negative limitations are permissible in the claiming of inventions, any negative limitation or exclusionary proviso must have basis in the original disclosure. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977). The mere absence of a positive recitation is not basis for an exclusion.
The Examiner notes that the limitation “a) applying an emission-free, solvent-free and exclusively moisture-curing polyurethane-based reactive hot-melt as a layer directly onto a support material, wherein the polyurethane-based reactive hot-melt …” appears to be expressly supported on page 6 lines 20 – 38 of the originally filed specification from the international application of the present national stage case. The same recitation reasonably conveys implied support for the negative limitation “d) separating the composite film from the support material, wherein the hot-melt cures only with moisture and does not cure with UV light.”
Claim Rejections - 35 USC § 112
The rejections of the claims under 35 USC § 112 in the previous Office Action are withdrawn due to Applicant amendment.
Claim Rejections - 35 USC § 103
The rejections of the claims under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment.
Claim(s) 1, 4 – 6, 12, 14 – 15, 18 – 22, 24, 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanagawa et al. US 20100068499 A1 (hereinafter “Kanagawa”) in view of Buehring et al. EP 2272663 A1 (hereinafter “Buehring”) and Becker-Weimann et al. US 2008/0009592 A1 (hereinafter “Becker’592”), Becker-Weimann et al. US 20180353992 A1 (hereinafter “Becker-Weimann”), and optionally in view of Zhao US 20170029653 A1 (hereinafter “Zhao”).
Regarding claims 1, 4, 12, 15, 18, 20:
Kanagawa is directed to a leather-like sheet and methods of making such a leather-like sheet [composite films] (Abstract). Kanagawa discloses that their method and prior art methods comprises: applying a hot-melt polyurethane resin – intended to form a surface skin layer – directly onto a release paper [support material, meeting claim 12]; applying a fibrous substrate onto the hot-melt urethane resin; curing the hot-melt urethane resin; and removing the release paper from the release paper after curing [meeting claim 20] ([0009], [0029], [0113] – [0114], [0125], [0147] – [0148], [0156], [0187] – [0190]). The application of the hot-melt polyurethane resin can be accomplished using a coating apparatus such as a roll coater [coating apparatus, meeting claim 15 where no smoothing roller and no roll bar is present] ([0107] – [0109], [0130]).
Kanagawa discloses that the polyurethane hot-melt resin contains a polyol such as polypropylene glycol ([0024], [0034], [0059]), a polyisocyanate such as toluene diisocyanate ([0024], [0034], [0067]), and a photopolymerization initiator ([0024], [0029], [0042]). The holt melt cures under both UV light and moisture [meeting claim 34, also emission-free and solvent-free] ([0042], [0130] – [0132], [0147] – [0148], [0156]).
Finally, Kanagawa discloses a step of applying a polyurethane or acrylic resin layer onto the surface of skin layer to provide inter alia a surface design ([0141]).
Kanagawa does not expressly teach a step of applying a lacquer layer on the polyurethane-based reactive hot-melt layer in order to produce the composite film on the support material; does not expressly teach that the polyurethane-based reactive hot-melt layer is a moisture-curing, solvent-free, and emission-free polyurethane-based reactive hot-melt layer; and does not expressly teach that the polyurethane-based reactive hot-melt is exclusively moisture-curing wherein the hot-melt cures only with moisture and does not cure with UV light
With regards to the application of a lacquer layer on the polyurethane-based reactive hot-melt layer in order to produce the composite film on the support material:
Buehring is directed to a method for producing a leather composite film in a reverse coating process (Abstract). Buehring discloses that the method is practiced on a roll-to-roll apparatus as depicted in Fig. 1 (page 5 – top of page 6). Buehring discloses that their method comprises: coating the carrier tape with a second plastic compound with a moisture-crosslinking solvent-less reactive polyurethane-based thermoplastic applied as a hot-melt adhesive by devices such as slot dies and [applicator, additionally meeting claim 15] rolls (Abstract; page 3 last paragraph, page 4 6th paragraph – 10th paragraph “Preferably, the laminating composition may be a reactive solvent-free polyurethane-based thermoplastic, which crosslinks under the action of moisture”); laminating a leather layer onto the hot-melt adhesive (page 3); and applying a [singular, fully meeting claim 4] paint layer [lacquer] as an outer coating of the leather, which is on the second plastic compound [on the hot-melt layer] (page 4 9th paragraph, page 5 3rd paragraph). Similar to Kanagawa, Buehring discloses that painting (alongside embossing) allows for desired surface structures and appearances, especially to match the appearance of genuine leather (page 3 5th paragraph, page 5 6th paragraph).
In view of the prior art as a whole, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kanagawa by applying a lacquer layer on the fibrous substrate [and thus on the hot-melt layer under the broadest reasonable interpretation] because Buehring suggests that such a step aids in matching the appearance of genuine leather or otherwise to impart desired appearances on a final product, which Kanagawa likewise suggests in a different context.
With regards to the polyurethane-based reactive hot-melt layer is a moisture-curing, solvent-free, and emission-free polyurethane-based reactive hot-melt layer:
Becker-Weimann is directed to a process for producing structured surfaces (Abstract). Becker-Weimann discloses a process comprising: applying a layer made from a reactive hotmelt (Abstract; [0014]); and applying a lacquer layer onto the reactive hotmelt ([0016]). The lacquer layer may have a thickness between 5 to 25 micrometers ([0035]). The reactive hotmelt is based on polyurethane and is an emission and solvent-free product that is solid at room temperature ([0033]).
As it is readily apparent that emissions from an industrial process would be deleterious to the environment, Becker-Weimann implies a desire to use emission-less reactive hotmelts to minimize environmental damage. Optionally Zhao, directed to low odor and fast curing compositions, likewise discloses that historically, changing health and environmental legislation have restricted solvent emissions and solvent-free coating materials and lacquers have become much more common ([0006]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have recognized that the polyurethane-based reactive hot-melt layer is an emission-free polyurethane-based reactive hot-melt layer is also emission-free or alternatively modified the method of Kanagawa in view of Buehring by using an emission-free, solvent-free and moisture-curing polyurethane-based reactive hot-melt layer because Becker-Weimann, in view of the general knowledge of one of ordinary skill in the art, would be motivated to minimize environmental impacts and optionally Zhao likewise fairly suggests the same.
With regards to the polyurethane-based reactive hot-melt is exclusively moisture-curing wherein the hot-melt cures only with moisture and does not cure with UV light:
Becker’592 is directed to processes to prepare reactive hotmelt polyurethane compositions that cure by atmospheric moisture ([0002]). Becker’592 discloses that the reactive hotmelt polyurethane composition is prepared from isocyanate reactive polymers such as polyamides, polytetrahydrofurans, polyethylene or polypropylene glycols ([0013]); and a polyisocyanate such as e.g. hexamethylene 1, 6- diisocyanate (claim 28), diisocyanato-toluenes [toluene diisocyanate] (claim 28; [0019]). Becker’592 is silent to the presence of photoinitiators in the compositions, and emphasizes moisture curing. One of ordinary skill in the art would then reasonably infer that compositions taught by Becker’592 do not cure with UV light. Such compositions are known to provide adhesive films that have high initial strengths when first applied onto objects followed by cooling and high application rates ([0002]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kanagawa in view of Buehring and Becker-Weimann by substituting the reactive hot-melt of Kanagawa with that of Becker’592 because Becker’592 teaches that [exclusive] moisture cured polyurethane hotmelts produce films that are known to have high initial strengths and can be rapidly applied onto surfaces.
Regarding claim 5:
Kanagawa discloses that the thickness of the surface skin layer [reactive hot-melt layer] may be e.g. 150 µm ([0047], [0156]), within the general range of 30 µm and 800 µm ([0139]).
Regarding claim 6:
Kanagawa in view of Buehring does not expressly teach that has a thickness in the range of from 5 micrometers to 25 micrometers.
Becker-Weimann discloses that the lacquer layer may have a thickness between 5 to 25 micrometers ([0035]). Becker-Weimann discloses that the lacquer layer provides protection from ambient air, provides a surface effect and allows embossing of the reactive hotmelt without recovery effects, thus providing improved haptic properties and optical properties ([0035] – [0036], [0051]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kanagawa in view of Buehring and Becker-Weimann by adding a lacquer layer as taught by Becker-Weimann, which has a thickness between 5 to 25 micrometers, because Becker-Weimann teaches that such a lacquer layer provides protection for reactive hotmelt layers that are previously deposited from ambient air and enhances the embossing ability of the reactive hotmelt layer without recovery effects.
Regarding claim 19:
Kanagawa discloses that an embossing roller may be used to provide an embossing treatment ([0138]).
Regarding claims 21, 35:
Kanagawa discloses that a filler and a wax may be added as part of the reactive hot-melt layer ([0099]). Similarly, Becker’592 discloses that the reactive hotmelt polyurethane composition may comprise fillers and waxes ([0031]).
Regarding claim 14, 22, 24:
Kanagawa discloses that both in the prior art and their disclosure, various rolls may be used to perform operations in the production of the leather-like sheet, e.g. coating, embossing; as well as winders and the act of rolling the formed sheet into a roll ([0004], [0009], [0021], [0125], [0130], [0188]). Kanagawa therefore suggests that the leather-like sheet is formed roll-to-roll.
Kanagawa does not expressly teach that the coating apparatus is a roll-to-roll apparatus.
Buehring discloses that their method is practiced on a roll-to-roll apparatus as depicted in Fig. 1, including support reuse [also meeting claim 14] (page 5 – top of page 6). Buehring disclose that the practice of their method upon their recited apparatus results in a cost advantage over existing technology of leather production (page 5 8th paragraph). Finally, one of ordinary skill in the art would have reasonably inferred that the apparatus disclosed allows for continuous production of a composite sheet of material.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kanagawa by practicing the method of Kanagawa in view of Buehring on a roll-to-roll apparatus like that of Buehring because Buehring teaches that the use of such an apparatus with a similar methodology creates costs savings, and one of ordinary skill in the art would have appreciated an apparatus that would allow for continuous production of material using rollers like that of Kanagawa.
Claim(s) 13, 33, 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanagawa in view of Buehring, Becker’592, Becker-Weimann, and optionally Zhao as applied to claims 1, 4 – 6, 12, 14 – 15, 18 – 22, 24, 35 above, and further in view of Dove et al. WO2005/108114 A2 (hereafter “Dove”).
Regarding claim 13:
Kanagawa in view of Buehring, Becker’592, Becker-Weimann, and optionally Zhao does not expressly teach that the support material has a thickness of from 30 micrometers to 400 micrometers.
In analogous art, Dove is directed to preparation of decorated substrates comprising a step of applying a radiation-curable coating composition and/or radiation-permeable film (Abstract). Dove discloses that the coating composition may be urethane-based (page 19 lines 5 – 20). The coating composition may be disposed on a radiation-permeable film or onto a resultant substrate [both the radiation permeable film and resultant substrate can alternatively correspond to support material] (page 7 line 25 – page 8 line 10). Dove further discloses that the thickness of the substrate may be thicker or thinner depending on the desired end result product (e.g carton board vs paper packaging, decorated polymer substrates) (page 7 lines 1 – 10); and that the radiation-permeable film may be of a sufficient thickness that remains sufficiently transparent to allow transmission of radiation used to cure coatings disposed on the radiation-permeable film (page 14 lines 15 – 30).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kanagawa in view of Buehring, Becker’592, Becker-Weimann, and optionally Zhao as a matter of routine experimentation to optimize end result aesthetics and/or allow for full curing of radiation-curable compositions that rely on UV radiation-curing. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 33, 36:
Kanagawa in view of Buehring, Becker’592, Becker-Weimann, and optionally Zhao does not expressly teach that the filler is an abrasion-resistant filler.
Dove further discloses that the coating composition may be urethane-based (page 19 lines 5 – 20). The coating compositions may include one or more fillers known in the art such as barium sulphate, calcium sulphate, calcium carbonate, silica [silicon dioxide] or silicates, and/or aluminum oxides [including corundum, which is a form of aluminum oxide1; metal oxide, inorganic materials and therefore abrasion-resistant fillers2] (page 29 lines 5 – 16).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have utilized abrasion-resistant fillers such as silica or aluminum oxides as the filler in the prior art invention of Kanagawa in view of Buehring, Becker’592, Becker-Weimann, and optionally Zhao because as taught by Dove, the use of such abrasion-resistant fillers is known to be suitable for the purpose of fillers in polyurethane layers. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanagawa in view of Buehring, Becker’592, Becker-Weimann, and optionally Zhao as applied to claims 1, 4 – 6, 12, 14 – 15, 18 – 22, 24, 35 above, and further in view of Fandrey et al. WO 2010112511 A1 (hereinafter “Fandrey”, full machine translation provided) and Hannig US 20190283490 A1 (hereinafter “Hannig”).
Regarding claim 30:
Kanagawa discloses that an intermediate layer can be disposed upon the surface skin layer ([0031]) and that an uneven pattern may be embossed onto the surface skin layer ([0138]).
Kanagawa in view of Buehring, Becker’592, Becker-Weimann, and optionally Zhao does not expressly teach printing a decoration – which is matched to the embossed structure – after application of the polyurethane layer and before the application of lacquer layers.
Fandrey is directed to adhesion promoters for painting and printing where a reactive melt mass is used (Abstract). Fandrey discloses that lacquer layers/paint layers can be printed onto the surfaces of a reactive hot melt by digital printing, and that digital printing is a conventional method to coat or print (page 4 2nd paragraph)
In analogous art, Hannig is directed to decorated, surface-structured wall or floor panels and methods for manufacturing the same (Abstract). Hannig discloses that it is known within the prior art to provide surface structures/textures onto panels in order to achieve haptic effects ([0008]). Hannig discloses a method of forming a fiber cement sheet comprising: providing a carrier ([0014], claim 11, [0043]); applying a primer of e.g. urethane or a urethane acrylate and optionally a polyurethane undercoat onto the carrier [corresponding to the hot melt polyurethane layer] ([0043] – [0044]); printing a decorative layer made from a radiation-curable paint and/or ink [a type of lacquer] onto the primer or polyurethane undercoat ([0045], [0047]); applying a radiation curable varnish or a hot melt on the decorative coating; applying an embossable plastic film onto the radiation curable varnish/hot melt layer (Abstract; [0056], [0058], [0062]); and embossing the embossable plastic film ([0062]). Hannig discloses that the structuring of the plastic film is carried out in congruence [matching] of the decorative image in order to haptically support the realistic appearance of the decoration ([0089]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kanagawa in view of Buehring by printing a decorative ink/lacquer layer onto the polyurethane-based hot melt layer that would match with either an embossing of the adhesion layer because Fandrey teaches that digital printing onto hot melt layers is conventional within the art, Kanagawa teaches that intermediate layers may be disposed between the surface skin layer and the substrate layer, and Hannig teaches that the addition of a decorative layer allows for the appearance and haptics of the resultant composite film can match and feel like those of desired natural materials such as wood ([0004], [0007], [0021]).
Claim(s) 23, 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kanagawa in view of Buehring as applied to claims 1, 4 – 6, 12, 14 – 15, 18 – 22, 24, 35above, and further in view of Fandrey.
Regarding claims 23, 28:
Kanagawa in view of Becker’592, Becker-Weimann, and optionally Zhao does not expressly teach the application of a lacquer that is a UV-curing/ UV-curable lacquer, water-based lacquer or both UV-curing and water-based lacquer.
Fandry discloses that adhesion promoters can include a polyurethane-based layer that is used to adhere to subsequently applied lacquer layers (page 3 “applying a primer layer containing … thickness of less than 20 microns”). Fandry discloses that lacquers may be applied as clear white or colored lacquers that are preferably UV-curing paints (page 4 3rd – 4th paragraph, page 5 Examples).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the additional polymer layers of Kanagawa in view of Becker’592, Becker-Weimann, and optionally Zhao or apply as a polymer layer a layer of UV-curing lacquer because Fandry teaches that such layers are suitable and adhesive to polyurethane based polymer layers.
Response to Arguments
Applicant’s arguments, filed June 26, 2026, with respect to the rejection(s) of the claim(s) under 35 USC §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Becker’592.
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.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
1 See Hannig US 20190283490 A1 pararaphs [0061] and [0097], which indicate corundum is a known alumina.
2 See page 9 line 30 – page 10 line 10 of the instant specification that characterizes abrasion resistant fillers as inorganic filler components, such as silicon dioxide.
Prosecution Insights