DETAILED ACTION
This action is in response to the amendment filed on 1/12/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12, 13, 15, 16, 21, 24, 27, and 29-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 21, 30, and 31 each recite the limitation “the Loss Factor Test Method is performed using a dynamic mechanical analyzer” and “a 25 mm plate, 5% strain”. The specification does not describe the Loss Factor Test Method is performed using a dynamic mechanical analyzer and a 25 mm plate (no plate is described) and 5% strain (0.3% strain is disclosed see paragraph 00092). The specification discloses degree of polymerization evaluated using a rheometer with 25-mm diameter disposable plates and operating the rheometer in oscillation mode using 5% strain (Paragraph 000103).
Claims 12, 13, 15, 16, 21, 24, 27, and 29-33 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 21, 30, and 31 each recite the limitation “the Loss Factor Test Method is performed using a dynamic mechanical analyzer” and “a 25 mm plate”. It is not clear how the dynamic mechanical analyzer uses a 25 mm plate as a rheometer uses a 25 mm plate as described in the specification (Paragraph 000103).
Claim Rejections - 35 USC § 103
Claims 15 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Uhl et al. (U.S. Patent 9,364,857) in view of Hoshi et al. (WO 2015/115212 or U.S. Patent Application Publication 2017/0158924).
Regarding claim 31, Uhl discloses an article (upon removing a protective polymeric film) comprising the following adhered in sequence: a portion of a polymerized interlayer (cured laminating adhesive resin composition); and a fiber-based underlying surface of the article (substrate comprising a fiber-based surface) (Figures 1 and 3 and Column 3, line 17 to Column 4, line 39 and Column 5, lines 19-57 and Column 6, lines 12-25 and Column 7, lines 66-67).
As to the limitation in claim 31 of “the portion of the polymerized interlayer filling and substantially obviating voids and defects in the underlying surface”, Uhl teaches the adhesive resin composition migrated into the substrate with a degree of penetration less than 50 microns (Column 5, lines 27-33) so that Uhl teaches (or if somehow considered to not necessarily teach at least makes prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention) the polymerized interlayer fills (migration/penetration is up to about 50 microns) and substantially obviates (at least covers and fills) voids and defects (that which is penetrated up to about 50 microns) in the underlying surface.
As to the limitation in claim 31 of “the portion of the polymerized interlayer…”, “… exhibiting a peak loss factor of less than about 1.0 when tested according to the Loss Factor Test Method…” and “… wherein the Loss Factor Test Method is performed using a dynamic mechanical analyzer in tension mode, a 25 mm plate, 5% strain, a frequency of 1 Hz, and a temperature increase from 50°C to 130°C with a ramp rate of 3°C/minute”, Uhl does not expressly teach the peak loss factor of the polymerized interlayer when tested according to the Loss Factor Test Method. Uhl teaches coating the polymeric film with the polymerizable laminating adhesive resin composition such as comprising epoxy adhesive resin (Column 5, lines 19-26) prior to polymerizing (curing) the adhesive to form the interlayer. Hoshi teaches a laminating adhesive resin composition (separable from separator films) comprising epoxy adhesive resin with excellent adhesive strength such as to a fiber-based surface and excellent storage stability including as formulated to exhibit a peak loss factor of less than about 1.0 as compared to comparative laminating adhesive resin composition exhibiting a peak loss factor of greater than 1.0 (the peak loss factor exhibited including when tested according to a Loss Factor Test Method performed using a dynamic mechanical analyzer in compression mode, a frequency of 1 Hz, and a temperature increase from -50°C to 150°C with a ramp rate of 5°C/minute and considered in the absence of evidence to the contrary substantially equivalent to a Loss Factor Test Method performed using a dynamic mechanical analyzer in tension mode, a 25 mm plate (the limitation rejected herein in as much as it is currently understood see the 35 U.S.C. 112 rejections above), 5% strain, a frequency of 1 Hz, and a temperature increase from 50°C to 130°C with a ramp rate of 3°C/minute (Paragraphs 0095, 0096, 0106, and 0107 and Examples 1 and 2 of Hoshi). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the polymerizable laminating adhesive resin composition taught by Uhl is that taught by Hoshi (and including formulated to exhibit a peak loss factor of less than about 1.0) for excellent adhesive strength to the underlying surface of the article and excellent storage stability.
As to the limitations in claim 31 of “An article prepared according to a method comprising: applying a polymerizable composition to a portion of a fiber-based underlying surface of the article or to a portion of a major surface of a polyurethane-based polymeric film or laminate comprising the polyurethane-based polymeric film in contact with the portion of the underlying surface of the article; and polymerizing the polymerizing composition to form a polymerized interlayer for adherence of the polyurethane-based polymeric film or the laminate comprising the polyurethane-based polymeric film to at least the portion of the underlying surface of the article; and separating the polyurethane-based polymeric film, and any laminate of which it is a part, from the portion of the underlying surface, leaving behind a portion of the polymerized interlayer on the underlying surface”, claim 31 is directed to a product-by-process wherein even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art (see Uhl as modified by Hoshi set forth above), the claim is unpatentable even though the prior product was made by a different process. The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art (see Uhl as modified by Hoshi set forth above), although as may be produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product (see MPEP 2113).
Regarding claim 15, Uhl as modified by Hoshi further teaches an article comprising the following in sequence: a polymeric film or laminate comprising the polymeric film (the protective film) outwardly exposed on the article; the portion of the polymerized interlayer (cured laminating adhesive resin composition); and the underlying surface of the article (substrate).
As to the limitation in claim 15 of “wherein the method further comprises applying a second polymeric film or second laminate comprising the second polymeric film to at least the portion of the underlying surface”, claim 15 is directed to a product-by-process wherein as noted above once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art (see Uhl as modified by Hoshi set forth above), although as may be produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product.
Claims 12, 13, 15, 16, 21, 24, 27, and 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Uhl and Hoshi as applied to claims 15 and 31 above, and further in view of McGuire, JR. ‘576 (U.S. Patent Application Publication 2008/0286576) and/or McGuire, JR. et al. ‘507 (WO 2017/156507).
Regarding claim 21, Uhl as modified by Hoshi above discloses an article comprising the following in sequence: an outwardly exposed polymeric film or laminate comprising the polymeric film (protective film); a polymerized interlayer (cured laminating adhesive resin composition) exhibiting a peak loss factor of less than about 1.0 when tested according to a Loss Factor Test Method; and an underlying surface comprising a fiber-based surface (substrate comprising a fiber-based surface), wherein the polymerized interlayer is sandwiched between the polymeric film or the laminate and the underlying surface and adheres to the underlying surface adjacent thereto and fills and substantially obviates voids and defects in the underlying surface, wherein the polymeric film or the laminate comprising the polymeric film is capable of being efficiently and effectively separated from the article, leaving behind a portion of the polymerized interlayer on the underlying surface, and wherein the Loss Factor Test Method is performed using a dynamic mechanical analyzer in tension mode, a 25 mm plate, 5% strain, a frequency of 1 Hz, and a temperature increase from 50°C to 130°C with a ramp rate of 3°C/minute.
Regarding claim 30, Uhl as modified by Hoshi above discloses an article comprising the following adhered in sequence: a polymeric film or laminate comprising the polymeric film (protective film) outwardly exposed on the article; a polymerized interlayer (cured laminating adhesive resin composition) filling and substantially obviating voids and defects in the underlying surface and exhibiting a peak loss factor of less than about 1.0 when tested according to a Loss Factor Test Method; and a fiber-based underlying surface of the article (substrate comprising a fiber-based surface), wherein the Loss Factor Test Method is performed using a dynamic mechanical analyzer in tension mode, a 25 mm plate, 5% strain, a frequency of 1 Hz, and a temperature increase from 50°C to 130°C with a ramp rate of 3°C/minute.
As to the limitation in claims 21 and 30 of “polyurethane-based polymeric film or laminate comprising the polyurethane-based polymeric film” and claims 12, 27, 32, and 33 (and claims 15 and 31 further rejected herein in the event it is somehow considered Uhl as modified by Hoshi does not necessarily teach the limitations of these claims as set forth above although the polyurethane-based polymeric film or laminate comprising the polyurethane-based polymeric film is not a part of the article claimed in claims 15 and 31), Uhl does not require any particular polymeric protective film. Polymeric protective film that is extensible and having environmental resistance, chemical resistance, abrasion resistance, scratch resistance, etc. exhibiting superior performance and handling properties is polyurethane-based (e.g. comprising a laminate including a polyurethane-based polymeric film wherein the laminate has an overall thickness of less than about 400 microns, Paragraphs 0038 and 0048 of ‘576 and Paragraphs 0036 and 0054 of ‘507, wherein a major surface of the laminate comprising the polymeric film comprises that of an (optional) adhesive layer, Paragraph 0020 of ‘576 and Paragraph 0050 of ‘507, and wherein the polymeric film has a thickness of about 10 microns to about 200 microns, Paragraph 0048 of ‘576 and Paragraph 0036 of ‘507) as taught by McGuire, JR. ‘576 (Paragraphs 0001, 0002, 0013, 0014, 0016, 0018-0021, 0033, 0038, 0043, 0048, and 0093) and/or McGuire, JR. ‘507 (Paragraphs 0003, 0004, 0027, 0030, 0036, 0050, and 0054). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the polymeric protective film taught by Uhl as modified by Hoshi is the laminate comprising the polyurethane-based polymeric protective film taught by McGuire, JR. ‘576 and/or McGuire, JR. ‘507 as a simple substation of one known polymeric protective film to yield predictable (and beneficial) results and including (regarding claim 27) extensible and having environmental resistance, chemical resistance, abrasion resistance, scratch resistance, etc. exhibiting superior performance and handling properties and (regarding claim 32) wherein the laminate has an overall thickness of less than about 400 microns, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP 2144.05), (regarding claim 12) wherein the major surface of the laminate comprising the polymeric film comprises that of an (optional) adhesive layer, and (regarding claim 33) wherein the polymeric film has a thickness of about 10 microns to about 200 microns.
As to the limitations in claim 30 of “An article prepared according to a method comprising: applying a polymerizable composition to a portion of a fiber-based underlying surface of the article or to a portion of a major surface of a polyurethane-based polymeric film or laminate comprising the polyurethane-based polymeric film in contact with the portion of the underlying surface of the article; and polymerizing the polymerizing composition to form a polymerized interlayer for adherence of the polyurethane-based polymeric film or the laminate comprising the polyurethane-based polymeric film to at least the portion of the underlying surface of the article”, claim 30 is directed to a product-by-process wherein as noted above once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art (see Uhl as modified by Hoshi and McGuire, JR. ‘576 and/or McGuire, JR. ‘507 set forth above), although as may be produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product).
Regarding claim 13, Uhl teaches the polymeric film (laminate comprising the polyurethane-based polymeric film taught by Uhl as modified by Hoshi and McGuire, JR. ‘576 and/or McGuire, JR. ‘507) is at least partially metallized (Column 4, lines 15-17).
Regarding claim 16, Uhl teaches the underlying surface comprises that of a motorized vehicle (Column 7, lines 66-67).
Regarding claim 24, in Uhl as modified by Hoshi and McGuire, JR. ‘576 and/or McGuire, JR. ‘507 there is no described or suggested covalent crosslinking between the polymerized interlayer and polymeric film and/or layers adjacent thereto.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Uhl and Hoshi as applied to claims 15 and 31 above, and further in view of McGuire, JR. ‘167 (U.S. Patent Application Publication 2010/0059167). Additionally, claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Uhl, Hoshi, and McGuire, JR. ‘576 and/or McGuire, JR. ‘507 as applied to claims 12, 13, 15, 16, 21, 24, 27, and 30-33 above, and further in view of McGuire, JR. ‘167.
Regarding claim 15, in the event it is somehow considered Uhl as modified by Hoshi (and/or Uhl as modified by Hoshi and McGuire, JR. ‘576 and/or McGuire, JR. ‘507 above) does not necessarily teach the article of claim 15 as set forth above the following rejection is made. Uhl teaches after separating the polymeric film painting the portion of the underlying surface of the article (Column 3, line 30) without expressly teaching painting by applying a second polymeric film or second laminate comprising the second polymeric film to at least the portion of the underlying surface wherein paint replacement polymer film (i.e. polymeric paint film and laminate comprising the polymeric paint film) is well understood in the art of painting as a beneficial alternative to conventional painting as evidenced by McGuire, JR. ‘167 (Paragraphs 0001-0004, 0020, and 0023). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to paint the underlying surface of the article as taught by Uhl as modified by Hoshi (and Uhl as modified by Hoshi and McGuire, JR. ‘576 and/or McGuire, JR. ‘507) by applying a second polymeric paint film or second laminate comprising the second polymeric paint film to at least the portion of the underlying surface not only as a simple substitution of one known method of painting to yield predictable results but as a beneficial alternative to conventional painting as evidenced by McGuire, JR. ‘167.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Uhl, Hoshi, and McGuire, JR. ‘576 and/or McGuire, JR. ‘507 as applied to claims 12, 13, 15, 16, 21, 24, 27, and 30-33 above, and optionally further in view of Bruhis et al. (WO 2013/028420).
Regarding claim 29, Uhl as modified by Hoshi and McGuire, JR. ‘576 and/or McGuire, JR. ‘507 teach all of the limitations in claim 29 as set forth above except for a specific teaching the article provides a class A type surface for the motorized vehicle. Uhl teaches at Column 6, lines 25-30 “For example, it is preferred that the smoothness of the final exposed surface be such that the leveling characteristics of the paint or coating provides an industry- or use-acceptable final finish. Achieving a surface compatible for painting without further treatment depends on the smoothness of the weave or surface of the fabric or film.” so that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the smoothness of the article taught by Uhl as modified by Hoshi and McGuire, JR. ‘576 and/or McGuire, JR. ‘507 provides a class A type surface for the motorized vehicle as a class A type surface is extremely conventional and well understood by one of ordinary skill in the art as a surface smoothness for an industry- or use-acceptable final finish without further treatment in the art of a motorized vehicle (including as optionally evidenced by Bruhis e.g. paragraph 0039).
Response to Arguments
Applicant's arguments filed 1/12/2026 have been fully considered.
In view of the amendments filed on 1/12/2026 the previous rejections as set forth in the Office action mailed on 7/10/2025 are withdrawn, and the claims as amended and new claims are fully addressed by the rejections set forth above.
Applicant argues, “There is no disclosure in Uhl of “a fiber-based surface” or of a polymerized interlayer that “fills and substantially obviates voids and defects in the underlying surface,” as is recited in amended claim 21 and in new independent claim 30 and 31.”.
This argument is not persuasive wherein Uhl teaches a fiber-based surface (see Column 3, lines 17-55) and the polymerized interlayer (cured laminating adhesive resin composition) fills and substantially obviates voids and defects in the underlying surface (see Column 5, lines 27-33 and as discussed in detail in the rejection above).
Applicant further argues, “Specifically, the application as filed discloses that “Surface voids and defects that were present on the underlying surface of the article, such as is often the case with fiber- based surfaces, before application of the removed polymeric film or laminate according to methodology of the invention remain substantially obviated by the sufficiently polymerized interlayer remaining on the surface as a result of the polymerizable composition applied during the original polymeric film or laminate application.” Application as filed, par. [0026] (emphasis added); see also pars. [0068], [0085], [0097], and [0098]. Such evidence of unexpected results renders the pending claims non-obvious. See M.P.E.P. § 2141.”.
This argument is not persuasive wherein Uhl (Column 3, lines 28-30 and Column 6, lines 13-25) teaches the article is capable of removing the polymeric film and leaving behind the polymerized interlayer (including which interlayer migrated into and penetrated the underlying fiber-based surface up to 50 microns and see further MPEP 716.02(c)) so that Uhl teaches surface voids and defects that were present on the underlying surface of the article (such as is often the case with fiber-based surfaces as noted by applicants and that is which is migrated into/penetrated taught by Uhl) before application of the removed polymeric film or laminate remain substantially obviated by the sufficiently polymerized interlayer remaining on the surface as a result of the polymerizable composition applied during the original polymeric film or laminate application. It is further noted claim 30 is not commensurate in scope with this argument/results (see MPEP 716.02(d)) as claim 30 does not require wherein the polyurethane-based polymeric film or the laminate comprising the polyurethane-based polymeric film is capable of being efficiently and effectively separated from the article, leaving behind a portion of the polymerized interlayer on the underlying surface (such as in claim 21).
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 JOHN L GOFF II whose telephone number is (571)272-1216. The examiner can normally be reached 7:30 AM - 4:00 PM EST Monday - Friday.
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746
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