CTFR 18/041,288 CTFR 95257 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 103 07-103 AIA The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-3, 7-10, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi et al. (WO 2019/044019 A1, “Kiguchi”) in view of Ho et al. (US 2008/0199704 A1, “Ho ‘704”). The disclosure of Kiguchi is based off US 2020/0254743 A1, which serves as an English language equivalent . With respect to claim 1, Kiguchi discloses a multilayer film having a surface protective layer on a first surface of a substrate (i.e., a base layer) and an adhesive layer on a second surface of the substrate layer (i.e., a surfacing film comprising a plurality of layers of the following order: a surface protective layer/a base layer/an adhesive layer) ([0010-0013]). The surface protective layer is made from a polyurethane and contains fluorine atoms (i.e., is a fluoropolyurethane) ([0015]). The polyurethane is made by reacting a polyol (P) (i.e., a first part) and a polyisocyanate (I) (i.e., a second part) ([0017]), where the polyol (P) contains fluorine atoms (i.e., is a polyhydroxy-functional fluoropolymer) ([0018]). However, Kiguchi does not disclose wherein the fluoropolyurethane layer is less than functionally cured. Ho ‘704 teaches a multilayer protective film comprising a first layer made of polyurethane ([0004]). The polyurethane is at least slightly crosslinked (i.e., cured), but not completely crosslinked so that the polyurethane can form a strong bond with a thermoplastic polyurethane ([0020]). Kiguchi and Ho ‘704 are analogous inventions in the field of multilayer films having a polyurethane surfacing layer on a substrate layer that is a thermoplastic polyurethane. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface protective layer made from a fluoropolyurethane of Kiguchi to be at least slightly crosslinked (i.e., partially cured but not functionally cured) as taught by Ho ‘704 in order to provide a polyurethane layer capable of forming a strong bond with a thermoplastic polyurethane (Ho ‘704, [0020]). With respect to claims 2 and 7, Kiguchi discloses the polyisocyanate includes hexamethylene diisocyanate (HDI) and isophorone diisocyanate (IPDI) ([0077-0079]) and can be used in combination ([0080]). Polyisocyanate derivatives including trimers of the polyisocyanates can be used ([0080]). The trimer of HDI and IPDI corresponds to the claimed secondary polyisocyanate. With respect to claim 3, given that this claim further limits an optional layer, the claim is considered met by the prior art. With respect to claims 8-9, Kiguchi discloses the polyisocyanate includes aliphatic polyisocyanates including hexamethylene diisocyanate ([0077-0078]), corresponding to the claimed primary polyisocyanate. With respect to claim 10, Kiguchi discloses the substrate layer (i.e., base layer) contains a thermoplastic resin including a polyurethane resin (i.e., a thermoplastic polyurethane) ([0094-0095]). With respect to claims 16-17, while there is no disclosure from Kiguchi in view of Ho ‘704 regarding the amount of crosslinking or curing, it would have been obvious to one of ordinary skill in the art to crosslink or cure the polyurethane to an amount, including that presently claimed, in order to produce a polyurethane with desired bonding strength (Ho ‘704, [0020]) . 07-22-aia AIA Claim s 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi et al. (WO 2019/044019 A1, “Kiguchi”) in view of Ho et al. (US 2008/0199704 A1, “Ho ‘704”) as applied to claim 1 above, and further in view of Orvis et al. (US 2022/0289918 A1, “Orvis”) and the evidence provided by Lumiflon ( Lumiflon LF916F ). The disclosure of Kiguchi is based off US 2020/0254743 A1, which serves as an English language equivalent . With respect to claims 4-6, while Kiguchi in view of Ho ‘704 discloses the polyurethane is made by reacting a polyol (P) (i.e., a first part) and a polyisocyanate (I) (i.e., a second part) (Kiguchi, [0017]), where the polyol (P) contains fluorine atoms (i.e., is a polyhydroxy-functional fluoropolymer) (Kiguchi, [0018]), Kiguchi in view of Ho does not disclose wherein the at least one hydroxy-functional fluoropolymer has a hydroxy-equivalent weight of from 250-15,000 g/mol. Orvis teaches a surfacing film ([0022]). The surfacing film comprises an OH-functional polyurethane ([0033]). The OH-functional polyurethane is prepared from a polyol including OH-functional fluoropolymers such as fluoro-containing polyvinyl ether, such as fluoroethylene vinyl ethers (FEVE) in order to provide a multilayer film having low flammability properties, especially for those used in aerospace applications ([0048], [0054]). Examples of the FEVE includes Lumiflon LF916F ([0056]). As evidenced by Lumiflon, Lumiflon LF916 has a hydroxyl equivalent weight of 561 (page 1, Typical Properties). Kiguchi in view of Ho ‘704 and Orvis are analogous inventions in the field of multilayer films containing surfacing films made from fluoropolyurethanes made from a polyhydroxy-functional fluoropolymer that are used in aerospace applications. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyhydroxy-functional fluoropolymer of Kiguchi in view of Ho ‘704 to be the FEVE being Lumiflon LF916F (which inherently has a hydroxyl equivalent weight of 561) as taught by Orvis in order to provide a multilayer film having low flammability properties (Orvis, [0054]) . 07-22-aia AIA Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi et al. (WO 2019/044019 A1, “Kiguchi”) in view of Ho et al. (US 2008/0199704 A1, “Ho ‘704”) as applied to claim s 1 and 10 above, and further in view of Ho et al. (WO 2019/060284 A1, “Ho ‘284”). The disclosure of Kiguchi is based off US 2020/0254743 A1, which serves as an English language equivalent . With respect to claim 11, while Kiguchi in view of Ho ‘704 discloses the substrate layer (i.e., base layer) contains a thermoplastic resin including a polyurethane resin (i.e., a thermoplastic polyurethane) (Kiguchi, [0094-0095]), Kiguchi in view of Ho ‘704 does not disclose wherein the thermoplastic polyurethane has a hard segment content of 10-65%. Ho ‘284 teaches a surfacing film including a base layer made from a thermoplastic polyurethane ([0002]). The thermoplastic polyurethane includes a hard segment in an amount of 30-55 wt% in order to provide a thermoplastic polyurethane with desired stiffness, elastomeric resilience, or tear resistance ([0043]). Kiguchi in view of Ho ‘704 and Ho ‘284 are analogous inventions in the field of multilayer films used with automobiles. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thermoplastic polyurethane base layer of Kiguchi in view of Ho ‘704 to have a hard segment of 30-55 wt% as taught by Ho ‘284 in order to provide a thermoplastic base layer having desired stiffness, elastomeric resilience, or tear resistance (Ho ‘284, [0043]) . 07-22-aia AIA Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi et al. (WO 2019/044019 A1, “Kiguchi”) in view of Ho et al. (US 2008/0199704 A1, “Ho ‘704”) as applied to claim 1 above, and further in view of Johnson et al. (US 2011/0027594 A1, “Johnson”). The disclosure of Kiguchi is based off US 2020/0254743 A1, which serves as an English language equivalent . With respect to claim 12, Kiguchi in view of Ho ‘704 does not disclose wherein the base layer comprises 1-20% of a colorant. Johnson teaches a multilayer film 100 having a color layer 130 and protective layer 150 (Fig. 1, [0115-0116]). The multilayer film is used in automobile applications ([0184]). The protective layer 150 is made from polyurethane ([0162]). The color layer 130 comprises a colorant and polymeric material, wherein the colorant is present in an amount of less than 20% in order to not degrade physical properties while providing desired light- fastness ([0124]). The polymeric materials include thermoplastics, including polyurethanes (i.e., the color layer 130 is made from a thermoplastic polyurethane and contains colorant) ([0126-0127]). Kiguchi in view of Ho ‘704 and Johnson are analogous inventions in the field of multilayer films used in automotive applications having a top layer made from polyurethane and a base layer made from thermoplastic polyurethane. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate layer (i.e., base layer) of Kiguchi in view of Ho ‘704 to contain less than 20% of a colorant as taught by Johnson in order to provide a base layer that does not have degraded physical properties while providing desired light-fastness (Johnson, [0124]) . 07-22-aia AIA Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi et al. (WO 2019/044019 A1, “Kiguchi”) in view of Ho et al. (US 2008/0199704 A1, “Ho ‘704”) as applied to claim 1 above, and further in view of Ho et al. (US 2017/0218226 A1, “Ho ‘226”). The disclosure of Kiguchi is based off US 2020/0254743 A1, which serves as an English language equivalent . With respect to claim 13, while Kiguchi in view of Ho ‘704 discloses the use of an adhesive layer as set forth in the above rejection of claim 1, Kiguchi in view of Ho ‘704 does not disclose wherein the adhesive layer is either a pressure sensitive adhesive layer or a hot melt adhesive layer. Ho ‘226 teaches a top layer 202, base layer 208, and adhesive layer 214 (Fig. 2, [0029]). The top layer 202 is made from polyurethane ([0037]). The base layer 208 is a thermoplastic polyurethane ([0058]). The adhesive layer is a pressure sensitive adhesive (PSA) that is tacky at ambient conditions ([0059]) or hot melt adhesive that is not tacky at room temperature but becomes tacky upon heating ([0061]). Kiguchi in view of Ho ‘704 and Ho ‘226 are analogous inventions in the field of multilayer films having a urethane-based surface layer, thermoplastic polyurethane base layer, and adhesive layer that is used in automotive applications. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive layer of Kiguchi in view of Ho ‘704 to be one of a pressure sensitive adhesive or hot melt adhesive as taught by Ho ‘226 in order to provide an adhesive layer that is tacky at ambient conditions or that is not tacky at room temperature but becomes tacky upon heating, respectively (Ho ‘226, [0059], [0061]) . Response to Arguments Due to the amendments to claims 4-6, the objections to claims 4-6 are withdrawn. Due to the amendment to claim 7, the 35 U.S.C. 112(b) rejection of claim 7 is withdrawn. Due to the amendment to claim 1, the 35 U.S.C. 102(a)(1) rejections of claims 1, 3, and 8-10 over Kiguchi; the 35 U.S.C. 103 rejections of claims 2 and 7 over Kiguchi; the 35 U.S.C. 103 rejections of claims 4-6 over Kiguchi in view of Orvis; the 35 U.S.C. 103 rejection of claim 11 over Kiguchi in view of Ho ‘284; the 35 U.S.C. 103 rejection of claim 12 over Kiguchi in view of Johnson; and the 35 U.S.C. 103 rejection of claim 13 over Kiguchi in view of Ho ‘226 are withdrawn. However, claims 1-3 and 7-10 are now rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi in view of Ho ‘704; claims 4-6 are now rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi in view of Ho ‘704 and Orvis; claim 11 is now rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi in view of Ho ‘704 and Ho ‘284; claim 12 is now rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi in view of Ho ‘704 and Johnson; and claim 13 is now rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi in view of Ho ‘704 and Ho ‘226. 07-37 AIA Applicant's arguments filed 17 March 2026 have been fully considered but they are not persuasive. Regarding the rejections over Kiguchi, Applicant argues Kiguchi fails to disclose wherein the fluoropolyurethane is less than functionally cured. In response to Applicant’s argument, the examiner acknowledges Kiguchi is silent with respect to this limitation. However, upon updating the searches, a new reference, Ho ‘704, was found. As set forth above, Ho ‘704 teaches a multilayer protective film comprising a first layer made of polyurethane ([0004]). The polyurethane is at least slightly crosslinked (i.e., cured), but not completely crosslinked so that the polyurethane can form a strong bond with a thermoplastic polyurethane ([0020]). Kiguchi and Ho ‘704 are analogous inventions in the field of multilayer films having a polyurethane surfacing layer on a substrate layer that is a thermoplastic polyurethane. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface protective layer made from a fluoropolyurethane of Kiguchi to be at least slightly crosslinked (i.e., partially cured but not functionally cured) as taught by Ho ‘704 in order to provide a polyurethane layer capable of forming a strong bond with a thermoplastic polyurethane (Ho ‘704, [0020]). Conclusion 07-40 AIA 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /STEVEN A RICE/Examiner, Art Unit 1787 /CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787 Application/Control Number: 18/041,288 Page 2 Art Unit: 1787 Application/Control Number: 18/041,288 Page 3 Art Unit: 1787 Application/Control Number: 18/041,288 Page 4 Art Unit: 1787 Application/Control Number: 18/041,288 Page 5 Art Unit: 1787 Application/Control Number: 18/041,288 Page 6 Art Unit: 1787 Application/Control Number: 18/041,288 Page 7 Art Unit: 1787 Application/Control Number: 18/041,288 Page 8 Art Unit: 1787 Application/Control Number: 18/041,288 Page 9 Art Unit: 1787 Application/Control Number: 18/041,288 Page 10 Art Unit: 1787 Application/Control Number: 18/041,288 Page 11 Art Unit: 1787
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