DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/29/2026 has been entered.
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 (all pending claims) 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 requiring “the polymeric blend comprise no more than 1wt% of filler,” 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).
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.
Response to Arguments
Applicant's arguments filed 5/29/2026 have been fully considered but they are not persuasive.
Rejections under 35 U.S.C. 103
With regards to the rejection of claims under 35 U.S.C. 103 as 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 based on the
amendments to Claim 1. Specifically, Applicants have amended the claims to close the
transitional phrase for the polymeric blend by using the term "consisting of". Saiga teaches a
formulation comprising acrylic polymer fine particles, block polyurethane, plasticizer and filler.
The plasticizers in Saiga are phthalic acid plasticizers. (See Saiga para. [0039]). Applicant argues claim 1 excludes the presence of plasticizers and there is nothing in Saiga to teach or suggest excluding a plasticizer. Said argument is noted but is not persuasive. The examiner agrees that there is nothing is Saiga to exclude the plasticizer, but disagrees with the argument that claim 1 excludes the plasticizer. Specifically, claim 1 is directed to a film “comprising” a polymeric blend. Thus, the claimed film may comprise additional components other than those in the “closed” polymeric blend. Thus, the rejection is maintained because the amendment does not exclude the presence of additional components, including plasticizers, from the claimed film.
Applicant further argues Liu cannot remedy the deficiencies of Saiga because Liu teaches a formulation comprising acrylic resin, a lubricant, and a solvent. Applicant argues claim 1 excludes solvents as taught by Liu, and Saiga and Liu cannot teach or suggest all the elements of Claim 1. Said argument is noted but is not persuasive for the reasons noted above. Said argument is noted but is not persuasive as the proposed combination of Saiga and Liu does not require or suggest the addition of solvent to the composition of Saiga. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
For the reasons noted above, applicant’s arguments are not persuasive and the claims are rejected for the reasons set forth herein.
Conclusion
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
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