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 .
Drawings
The replacement sheets filed 12/30/202025 are accepted.
Specification
The substitute specification filed 12/30/2025 has been entered. Said substitute specification contains no new matter.
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.
Claim(s) 1, 2, 4-12, 14, 15, and 17-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saiga et al (US 2005/0234194) in view Liu et al (US 2012/0178862).
Saiga teaches a coating film (abstract) comprising a polymeric blend (abstract), the polymer blend comprising: 50% by weight to 90% by weight (0038), based on the total weight of the blend, of an acrylic polymer (herein understood to read on the claimed “flexible acrylic resin”), and 10% by weight to 50% by weight, based on the total weight of the blend, of a thermoplastic urethane block polymer (herein understood to read on the claimed thermoplastic urethane elastomer”)
and optional pigment (0047). Saiga teaches the flexible acrylic resin is a multi-stage acrylic polymer comprising a core layer comprising butyl (meth)acrylate (0016)-herein understood to read on the claimed “low Tg monomer selected from the group consisting of butyl acrylate…”). The examiner notes BMA is known to have a Tg around 20C meeting applicant’s disclosure of a low Tg material. Saiga’s shell comprises methyl methacrylate which has a Tg around 105C and is understood to read on the claimed “methacrylate polymer having a glass transition temperature of above 100C”.Said composition is understood to be “both processable and printable” since it comprises the same two major components as applicant’s claimed compositions; thus, it must necessarily possess the same properties (see MPEP 2112.01).
With regards to the limitation the composition may further comprise filler, Saiga teaches the polymeric blend may further comprise a filler, preferably calcium carbonate (0040).
Saiga is relied upon as above, but does not teach the composition should further comprise the claimed high molecular weight organic lubricant. However, Liu teaches 0.1-4pbw of a separating agent (herein understood to read on the claimed “lubricant”) may be added to an acrylic resin (abstract). Said separating agent may comprise a high molecular weight organic lubricant polyester lubricant which is the reaction product of a glycerin fatty acid ester and a polyol (herein understood to be sufficiently narrow that the skilled artisan could at once envisage the use of oleic acid or stearic acid as the fatty acid) and has a molecular weight of 8,000-20,000 Da (claim 6)-herein understood to read on the claimed “at least about 1,500Da” limitation of claim 1. It would have been obvious to one of ordinary skill in the art at the time the invention was made to add 0.1-40 pbw of the compound disclosed in Liu to the composition disclosed in Saida. The motivation for doing so would have been to provide the acrylic resin with the desired level of lubrication.
With regards to claim 2, Saiga teaches the flexible acrylic resin is a multi- stage (i.e. core-shell) polymer (0014).
With regards to claim 4, , Saiga teaches the flexible acrylic resin is present in an amount in the range of from 50% by weight to 95% by weight, based on the total weight of the blend (0038)
With regards to claims 5, 8, and 9, the flexible acrylic resin and thermoplastic urethane resin disclosed in Saiga are understood to possess the claimed Shore D hardnesses since they are compositionally identical to those claimed/disclosed by applicant. Compositionally identical components must necessarily possess the same properties (see MPEP 2112.01). Alternatively, the skilled artisan at the time the invention was filed would have known how to optimize the Shore D properties of acrylic and urethane films in order to obtain a composition with the desired impact and surface properties.
With regards to claim 6, Saiga teaches the thermoplastic urethane elastomer is selected from the group consisting of polyether based polyurethane and polyester based polyurethane (0020).
With regards to claim 7, Saiga teaches the thermoplastic urethane elastomer is present in an amount in the range of from 5% by weight to 50% by weight, based on the total weight of the blend (0038).
With regards to claim 15, Saiga teaches the pigment may be titanium dioxide (0047).
With regards to claims 17, Saiga teaches the polymeric blend may further comprise a filler but does not teach the claimed upper limits. However, Saiga teaches the amount of filler is a result effective variable and can be selected based upon the cost and film strength desired (0040). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select the amount of filler present in the composition of Saiga based upon costs and film strength consideration. Saiga teaches the filler is preferably calcium carbonate (0040).
With regards to claim 18 and 19, Saiga is silent to the presence of an organic acid metal salt in the polymeric blend; thus, it is understood to teach the claimed blend comprising “less than 0.075% by weight, based on the total weight of the blend, of an organic acid metal salt.” Similarly, with regards to claim 21, Saiga is understood to teach “wherein the polymeric blend does not contain an organic acid metal salt.”
With regards to claim 20, Saiga teaches calcium carbonate is an optional component in the polymer blend taught therein. Thus, said reference is understood to teach embodiments “wherein the polymeric blend does not contain calcium carbonate.”
With regards to claim 22, Saiga is understood to teach the polymeric blend does not contain a hydrogen-bondable monomer since it is silent to the presence of such a component.
With regards to claim 23, Saiga is silent to the thickness of the film. However, the courts have held where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed invention and an invention having the claimed relative dimensions would not perform differently than the prior art invention, the claimed device was not patentably distinct from the prior art. Thus, it would have been obvious to one of ordinary skill in the art to select the thickness of the film disclosed in Saiga such that the film has a thickness of from 30 um to 200 um.
With regards to claim 24, Saiga teaches the film is roller coated ((0049), here understood to read on the claimed “calendared”. Alternatively, the examiner takes the position the limitation “calendared” is a method limitation that does not inherently structurally or compositionally distinguish the claimed invention. The courts have held that a method of making a product does not patentably distinguish a claimed product from a product taught in the prior art unless the method of making the product inherently results in a materially different product. In the present application, no such showing has bene made.
With regards to claim 25, Saiga teaches the composition disclosed therein may be used as an adhesive (0050). Furthermore, the courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (see MPEP 2144.04). In such an arrangement, the film would comprise of the claimed film with an adhesive applied to one face of the film.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaito et al (US 2004/0034183) in view Liu et al (US 2012/0178862).
Kaito teaches a film (0164) consisting of a butyl acrylate-PMMA block copolymer (0288). The composition may further contain a plasticizer or lubricant (0166).
Kaito is relied upon as above, but does not teach the composition should further comprise the claimed high molecular weight organic lubricant. However, Liu teaches 0.1-4pbw of a separating agent (herein understood to read on the claimed “lubricant”) may be added to an acrylic resin (abstract). Said separating agent may comprise a high molecular weight organic lubricant polyester lubricant which is the reaction product of a glycerin fatty acid ester and a polyol (herein understood to be sufficiently narrow that the skilled artisan could at once envisage the use of oleic acid or stearic acid as the fatty acid) and has a molecular weight of 8,000-20,000 Da (claim 6)-herein understood to read on the claimed “at least about 1,500Da” limitation of claim 1. It would have been obvious to one of ordinary skill in the art at the time the invention was made to add 0.1-40 pbw of the compound disclosed in Liu to the composition disclosed in Kaito. The motivation for doing so would have been to provide the acrylic resin with the desired level of lubrication.
Response to Arguments
Applicant's arguments filed 9/15/2026 have been fully considered but they are not persuasive.
Applicant notes the Non-Final Official Action dated June 17, 2026 stated “[w]ith regards to the limitation requiring 'the polymeric blend comprise no more than 1wt% of filler,". (See Office Action, page 3) which was deleted from Claim 1 as part of the May 29, 2026 amendment. The reference to said previously canceled limitation has been deleted from the rejection. The examiner notes the May 29, 2026 amendment was fully entered and considered in the June 17, 2026 Office Action.
Rejections under 35 U.S.C. 103
With regards to the rejection of claims 1, 2, 4-12, 14, 15, and 17-25 are rejected under 35 U.S.C. 103 as allegedly being unpatentable over US Publication No. 2005/0234194 to Saiga et al. (hereinafter "Saiga") in view of US Publication No. 2012/0178862 to Liu et al. (hereinafter "Liu"), Applicants traverse this rejection and notes it is understood that Claim 1 closes off the polymeric blend to unrecited elements. Said argument is noted but is not persuasive for the reasons of record. Specifically, the claimed invention is to a film “comprising” a polymeric blend and is thus open to additional components.
Applicant further argues the core layer limits polymers to butyl acrylate, 2-ethylhexyl acrylate and combinations thereof. Applicant notes Saiga teaches "a core layer comprising butyl (meth)acrylate
(0016)- herein understood to read on the claimed 'low Tg monomer selected from the group
consisting of butyl acrylate." (See Office Action, page 3). Applicants respectfully disagree, arguing .
butyl methacrylate is not encompassed by the claimed Markush group. Said argument is noted but is not persuasive as the examiner did not take the position butyl methacrylate was encompassed by the claimed Markush group. Rather, the reference to butyl (meth)acrylate would be understood by the skilled artisan to encompass both butyl acrylate and butyl methacrylate embodiments as both are taught by Saiga (e.g0012).
In addition, applicant argues the rejection does not identify where Saiga or Liu teaches that the recited core comprises cross-linked residues of the claimed monomers. The cited portions of Saiga discuss monomer selection for the core but do not disclose the specific cross-linked acrylate-core
structure required by claim 1. Said argument is noted but is not persuasive as Saiga teaches the acrylate polymers are cured, which is often used interchangeably with crosslinking.
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 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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie 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.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
