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 1-3, 5-15 are pending. Applicant’s previous election of Group I, claims 1-3, 5-8 still applies and claims 9-15 remain withdrawn.
Response to Amendment
Applicant’s amendment of 08/11/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(b)/second paragraph
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(s) 3 is/are 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 pre-AIA the applicant regards as the invention.
Claim 3 recites a group of adhesion promoters that is broader than claim 1 and therefore is vague because it appears to conflict with claim 1.
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) 1-3, 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izumi (JP H10-52893, see machine translation) in view of Xu et al. (U.S. 2020/0048450).
Regarding claims 1-3, 6-8, Izumi teaches an article comprising an A layer of PMMA followed by a B layer of maleic anhydride grafted polypropylene followed by a C layer of polypropylene, as in claims 1-3, with a maleic anhydride content that appears to overlap claim 1 ([0013]-[0015], [0018]-[0023], [0025], [0069]). Izumi does not disclose that a polysiloxane is included with the PMMA however Xu is also directed to PMMA compositions and teaches that inclusion of a polydimethylsiloxane, as in claim 6, with a MW overlapping claim 7 at an amount relative to the PMMA overlapping claim 8 imparts abrasion resistance and stain resistance (see abstract, [0010], [0049], [0055], [0067]) such that it would have been obvious to have included the PDMS in the PMMA layer of Izumi in order to improve abrasion resistance and stain resistance.
Although the amounts of maleic anhydride groups and PDMS overlap the ranges as explained above, they are also obvious to adjust to within the claimed ranges as part of the optimization of an art-recognized result effective variable (i.e., optimizing adhesion for the maleic anhydride and optimizing abrasion resistance and stain resistance for the PDMS).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izumi (JP H10-52893) in view of Xu et al. (U.S. 2020/0048450), as applied to claim 1 above, and further in view of Numrich et al. (U.S. 2008/0281023).
Regarding claim 5, modified Izumi teaches all of the above subject matter including suggesting that the A layer may be impact modified ([0014]) but does not explicitly disclose the subject matter of claim 5. However, Numrich is also directed to PMMA materials and discloses that impact modifiers may be included in the PMMA at amounts overlapping claim 5 to improve impact properties (inherently a type of impact strength) (see abstract, [0001], [0034]-[0054], claim 7), such that it would have been obvious to have included an impact modifier in the PMMA of Izumi to improve impact properties as taught by Numrich.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Izumi teaches a maleic anhydride content outside the claimed range, but Applicant is only referring to the examples and the reference is not limited to the examples, with the broader disclosed range from Izumi overlapping the claimed range.
Applicant argues that the primary and secondary references are non-analogous but presents an overly narrow summary of the fields of the cited references. Both references are more broadly directed to user facing/contacting PMMA based compositions, and thus Izumi’s PMMA composition would benefit from the stain and abrasion resistance benefits taught by Xu. The references are therefor analogous and obvious to combine.
Applicant then summarizes the claimed subject matter and argues this is not disclosed in either of the first two cited references which is improper piecemeal analysis.
Applicant then argues that certain claimed ranges are critical and the prior art does not teach the present benefits of using those ranges however the prior art is not required to arrive at the claimed subject matter for the same reason as Applicant.
Applicant then appears to argue unexpected results, but it is unclear what evidence/data is cited and it also appears that the claims are much broader in the type and amount of ingredient and thickness of layers compared to the present examples such that any showing of unexpected results would be non-commensurate in scope with the examples.
Applicant then makes improper piecemeal arguments with respect to the rejection of claim 5. Applicant then argues that Numrich provides its teaching “in isolation.” However, the reference discloses the amount of impact modifiers for a PMMA composition (not in isolation) and teaches that the amount is suitable for achieving improved impact properties which makes it obvious to apply to Izumi because that reference does not disclose an amount for the impact modifier, merely suggest including impact modifiers.
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