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 .
Formal Matters
Receipt of Applicant’s response, dated 11/19/2025, is acknowledged.
Claims 1-14 are pending.
Claims 1, 3-4, 10-11, and 14 are amended.
Claim 14 remains withdrawn from consideration as being drawn to a nonelected invention.
Claims 7-8 remain withdrawn from consideration as being drawn to nonelected species.
Claims 1-6 and 9-13 are being examined to the extent of the elected species, i.e., the light stabilizer is an NH type hindered amine-based compound and an NR type hindered amine-based compound having molecular weight 1000 or less, the antioxidant is antioxidant having a phosphorous acid structure represented by the following general formula (1):
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, the ultraviolet absorber is a hydroxyphenyltriazine-based ultraviolet absorber, and the base material is an olefin resin base material.
OBJECTIONS/REJECTIONS WITHDRAWN
Specification
The objections to the abstract and to the specification set forth in the Office action dated 08/22/2025 are hereby withdrawn in light of Applicant’s amendments to the abstract and to the specification.
Claim Objections
The objections to claims 1, 3-4, and 10-11 set forth in the Office action dated 08/22/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
The indefiniteness rejection of claim 4 set forth in the Office action dated 08/22/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejection of claims 1-6, 9-10, and 12-13 over Miyazaki et al in view of Samuels and of claim 11 over Miyazaki in view of Samuels and further in view of Yu et al set forth in the Office action dated 08/22/2025 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection set forth below necessitated by Applicant’s amendments to the claims.
NEW GROUNDS OF OBJECTION/REJECTION
Claim Objections
Claim 1 is objected to because the line break between lines 4 and 5 and the line break between lines 7 and 8 are each unnecessary and each should be deleted in order to improve claim readability.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites “the average particle diameter of the antiviral agent is 0.1 to 10.0 μm” and depends on claim 1, however claim 1 recites “the average particle diameter of the antiviral agent is 0.5 to 10.0 μm”. Because claim 3 limits the average particle diameter of the antiviral agent to a range broader than the range claim 1 limits the average particle diameter of the antiviral agent to, claim 3 is rejected for failing to further limit the subject matter of claim 1 and for failing to include all of the limitations of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1-6, 9-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tominaga et al (JP 6,888,727 B1, published 06/16/2021) in view of Samuels (US 6,051,164 A, published 04/18/2000, cited in Notice of References Cited dated 08/22/2025).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Tominaga et al teach a decorative sheet having excellent antiviral properties comprising a surface protective layer comprising an antiviral agent and a thermosetting resin, an ultraviolet curable resin, or an electron beam curable resin and a base material (referred therein as colored layer), among other layers (See entire document, e.g., Abstract, Page 2 Fourth to last Par. of English translation).
The surface protective layer has an important role of determining the superiority or inferiority of the bending workability, weather resistance, scratch resistance and cleanability; the surface protective layer contains a curable resin as a main component and may contain an ultraviolet absorber, and a light stabilizer, among various other additives (e.g., Page 3 Fifth to last Par. of English translation). The surface protective layer contains an antiviral agent that improves antiviral properties (e.g., Bottom of Page 4 of English translation). The antiviral agent is preferably a silver-based material, e.g. antibacterial zeolite, antibacterial apatite, antibacterial zirconia, etc. formed by incorporating any metal ion of silver ion, copper ion, or zinc ion into a substance such as inorganic compound zeolite, apatite, or zirconia, wherein silver-based antiviral agents are superior in terms of antiviral effect (e.g., Spanning Pages 4-5 of English translation). The amount of the antiviral agent added to the surface protective layer is in the range of 0.2% by mass or more and 10% by mass or less (e.g., Page 5 Par. 2 of English translation). The average particle size of the antiviral agent is preferably 0.5 times or more and 2 times or less the thickness of the surface protective layer (e.g., Page 5 Par. 3 of English translation). The average particle size of the antiviral agent is preferably 1 μm or more and 10 μm or less (e.g., Page 5 Par. 3 of English translation).
A thermoplastic resin can be used as the base material, wherein the thermoplastic resin is not particularly limited, e.g. polyolefins such as polyethylene, polypropylene, polymethylpentene, polybutene, ethylene-propylene copolymer, ethylene-α-olefin copolymer, and propylene-α-olefin copolymer (e.g., Page 2 Third to last Par. of English translation).
Although Tominaga et al teach that the surface protective layer may contain various additives including an ultraviolet absorber and a light stabilizer, Tominaga et al do not teach a hydroxyphenyltriazine-based ultraviolet absorber as a suitable ultraviolet absorber, the combination of an NH type hindered amine-based compound and an NR type hindered amine-based compound having molecular weight 1000 or less as a suitable light stabilizer, nor that a suitable additive is an antioxidant wherein the phosphorous acid structure represented by general formula (1) depicted in page 2 of the instant Office action is a suitable antioxidant.
These deficiencies are made up for in the teaching of Samuels.
Samuels teaches the protection of a polymeric article from degradation due to exposure to UV light by the blending of the polymeric material with from about 50 to about 5,000 ppm of at least one ortho hydroxy tris-aryl triazine light absorber and from about 500 ppm to about 1.25 percent of at least one oligomeric, polymeric, or high molecular weight hindered amine light stabilizer (HALS) having a molecular weight of at least about 500, wherein the weight ratio of HALS to triazine light absorber is from about 3:1 to about 20:1, to form a stabilized polymeric composition (e.g., Abstract). Samuels teaches that it is well-known that UV light/radiation can cause the degradation of polymers, often resulting in the embrittlement or yellowing of polymers, which may be in the form of molded articles, polymer films, tapes, coatings, and the like. However, this degradation can be inhibited by the incorporation of ultra-violet light stabilizers and ultra-violet light absorbers in or on such articles (e.g., Col. 1 Lines 16-22). The use of hindered amine light stabilizers (HALS) and UV light absorbers, both individually and in combination, to stabilize polymeric materials is known, and because HALS scavenge free radicals formed in the polymeric material when exposed to UV light more effectively than other light stabilizers most conventional applications contain UV light absorbers used in combination with at least one HALS (e.g., Col. 1 Lines 23-34).
Suitable compounds as the at least one ortho hydroxy tris-aryl triazine light absorber include hydroxyphenyltriazine-based compounds (See formula (IV) in Col. 5 Lines 20-42). Suitable compounds as the at least one oligomeric, polymeric, or high molecular weight HALS having a molecular weight of at least about 500 include NH type hindered amine-based compounds and NR type hindered amine-based compounds (See structure of formula (II) in Col. 3 Lines 1-11 wherein R1 may represent hydrogen or C1-C8 alkyl). Polymeric articles that may be protected from UV light with the light stabilization additive composition of Samuels include, but are not limited to, molded or extruded articles, coatings, tapes, and films (e.g., Col. 11 Lines 8-10). The light stabilization additive composition of Samuels may contain other additives including antioxidants, wherein suitable antioxidants include tris(2,4-ditert-butylphenyl)phosphite, triphenyl phosphite, trinonyl phosphite, and diphenyldecyl phosphite (i.e., each have a phosphorous acid structure represented by general formula (1) depicted in page 2 of the instant Office action) (e.g., Col. 10 Lines 32-34, 37-57).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, based on the teaching of Tominaga et al and Samuels, to produce a decorative sheet having excellent antiviral properties comprising a surface protective layer and a base material, wherein the base material is a thermoplastic resin e.g. polyolefins such as polyethylene, polypropylene, polymethylpentene, polybutene, ethylene-propylene copolymer, ethylene-α-olefin copolymer, and propylene-α-olefin copolymer, wherein the surface protective layer contains (a) a curable resin as a main component, (b) an antiviral agent being a silver-based material e.g. antibacterial zeolite, antibacterial apatite, antibacterial zirconia, etc. formed by incorporating silver ion into a substance such as inorganic compound zeolite, apatite, or zirconia, and (c) a light stabilization additive composition comprising from about 50 to about 5,000 ppm of at least one ortho hydroxy tris-aryl triazine light absorber, including hydroxyphenyltriazine-based compounds, from about 500 ppm to about 1.25 percent of at least one oligomeric, polymeric, or high molecular weight HALS having a molecular weight of at least about 500, including NH type hindered amine-based compounds and NR type hindered amine-based compounds, and antioxidant(s) such as tris(2,4-ditert-butylphenyl)phosphite, triphenyl phosphite, trinonyl phosphite, and/or diphenyldecyl phosphite, wherein the antiviral agent is added to the surface protective layer in the range of 0.2% by mass or more and 10% by mass or less, the antiviral agent has an average particle size of 1 μm or more and 10 μm or less, and wherein the average particle size of the antiviral agent is preferably 0.5 times or more and 2 times or less the thickness of the surface protective layer.
One of ordinary skill in the art would have been motivated to add the light stabilization additive composition of Samuels to the decorative sheet of Tominaga et al because Samuels teaches that the light stabilization additive composition comprising the combination of specifically at least one HALS as light stabilizer(s) and UV absorbers stabilizes polymeric articles and prevents degradation, embrittlement, and/or yellowing and there would have been a reasonable expectation of success because the decorative sheet of Tominaga et al is taught as compatible with various additives including ultraviolet absorbers and light stabilizers.
The decorative sheet of Tominaga et al in view of Samuels renders obvious the antiviral article of instant claims 1-6, 9-10, and 12-13.
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). The average particle size of the antiviral agent being taught as ranging from preferably 0.5 times or more and 2 times or less the thickness of the surface protective layer in the decorative sheet of Tominaga et al in view of Samuels renders obvious the requirement of instant claim 5 (i.e., when the average particle size of the antiviral agent is more than the thickness of the surface protective layer, at least a part of the antiviral agent will protrude from the surface of the surface protective layer).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tominaga et al (as cited above) in view of Samuels (as cited above) as applied to claims 1-6, 9-10, and 12-13 above, and further in view of Yu et al (CN 103525319 A, published 01/22/2014 cited in Notice of References Cited dated 08/22/2025).
The decorative sheet of Tominaga et al in view of Samuels has been discussed supra.
Although the light stabilization additive composition in the surface protective layer of the decorative sheet comprises the antioxidant(s) of tris(2,4-ditert-butylphenyl)phosphite, triphenyl phosphite, trinonyl phosphite, and/or diphenyldecyl phosphite, which each have a phosphorous acid structure represented by general formula (1) depicted in page 2 of the instant Office action, neither Tominaga et al nor Samuels teach a suitable antioxidant being the following compound represented by general formula (1-2-1) of instant claim 11:
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.
This deficiency is made up for in the teaching of Yu et al.
Yu et al teach an ultraviolet cross-linking curing ethylene vinyl acetate copolymer optical adhesive film comprising an antioxidant such as a phosphorus acid compound including
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(See entire document, e.g., Abstract, See claim 5 on Page 2 of English translation, See Par. 5 on Page 3 of English translation, See Scifinder printout for translation of antioxidants).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the aforementioned phosphorus acid compound of Yu et al as an antioxidant in the decorative sheet of Tominaga et al in view of Samuels because of its similarity to the antioxidant(s) comprised in the decorative sheet of Tominaga et al in view of Samuels being tris(2,4-ditert-butylphenyl)phosphite, triphenyl phosphite, trinonyl phosphite, and/or diphenyldecyl phosphite which each have a phosphorous acid structure represented by general formula (1) depicted in page 2 of the instant Office action, for which the aforementioned phosphorus acid compound of Yu et al is also of the same phosphorous acid structure. An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
The decorative sheet of Tominaga et al in view of Samuels and further in view of Yu et al renders obvious instant claim 11.
Response to Applicant’s Arguments
Applicant’s arguments filed on 11/19/2025 have been considered.
Applicant argues that Applicant’s election of “an NH type hindered amine-based compound and an NR type hindered amine-based compound having molecular weight 1000 or less as the species of light stabilizer” has been misinterpreted by the Examiner and that Applicant intended to elect “compounds having a molecular weight of 1000 or less” and not a combination of the compounds.
The above argument has been fully considered by the Examiner but is not found persuasive because in the Restriction/Election requirement dated 04/30/2025 the Examiner stated that “Applicant is required to elect: … B) A species, or a single specific combination of species, of light stabilizer” for which Applicant elected in the Response to the Restriction/Election requirement dated 06/24/2025 “The following species are also elected: … B) Light stabilizer: NH type hindered amine-based compound and an NR type hindered amine-based compound having a molecular weight 1000 or less”. The species of light stabilizer was clearly elected as the combination of ‘NH type hindered amine-based compound and an NR type hindered amine-based compound having a molecular weight 1000 or less’ and, thus, the species election for the light stabilizer is hereby maintained and the withdrawal of claim 7-8 as being drawn to nonelected species is hereby maintained.
Applicant’s arguments regarding the prior art rejections set forth in the Office action dated 08/22/2025 have been fully considered, however are moot in light of the prior art rejections set forth in the Office action dated 08/22/2025 having been withdrawn in light of the new grounds of rejection set forth above.
Conclusion
No claims are allowable.
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.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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