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, 4-11 are pending. Applicant’s previous election of claims 1-11 and the TPO species still applies and no claims are currently withdrawn.
Response to Amendment
Applicant’s amendment of 09/26/25 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) 4 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 4 depends from cancelled claim 3 and therefore has vague dependency.
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) 1-2, 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Min (U.S. 2020/0232157) in view of Suzuki (U.S. 2021/0292965) in view of Oka (U.S. 2005/0032923).
Regarding claims 1-2 and 5-7, Min teaches an artificial leather for vehicle interiors (though this intended use is not given patentable weight) that includes a skin layer comprising a PVC layer with thickness overlapping claim 7 and a multilayer PU coating, having a thickness overlapping claim 6, applied onto the PVC layer (with one of the multilayer corresponding to the claimed PU layer and the other corresponding to the surface treatment of claim 2), and with the skin layer being provided on a foam base layer of thermoplastic polyolefin, and with a back layer coating on the foam layer (corresponding to the primer of claim 5) to improve adhesion between the foam layer and the back layer (see abstract, [0060], [0062], [0066], [0094], [0111], [0117], [0127]-[0136]). In addition to the thicknesses overlapping the claimed ranges as discussed above, Min also teaches that the PVC thickness should be adjusted based on smoothness, processability, pigmentation, cushioning and cost ([0117], making the range of claim 7 obvious to arrive at as part of optimizing these properties) and also teaches that the PU thickness should be adjusted based on flexibility, contamination resistance, durability and cost ([0136], making the range of claim 6 obvious to arrive at as part of optimizing these properties).
Min does not disclose an acrylic surface treatment layer on the PU layer, though Min teaches that the surface treatment layer (i.e., which includes the PU coating discussed above) may be comprised of multiple surface treatment layers ([0127]). Suzuki is also directed to synthetic leather with a skin layer having surface treatment and discloses acrylic resin surface treatment layers may be applied to improve appearance and feel, and further discloses that acrylic beads may be included in any surface treatment layer (even one based on a non-acrylic resin) to provide better tactile sensation (see abstract, [0140]-[0147]). Thus, it would have been obvious to have included acrylic surface treatment layers amongst the surface treatment layers disclosed by Min (from which two or more layers may be used) because Suzuki teaches that acrylic resin surface treatment also provides improved appearance and feel (this would render obvious a combination of a PU surface treatment layer and an acrylic surface layer, as claimed) and it would have also (or alternatively) been obvious to have included acrylic beads in the PU surface treatment layers of Min as disclosed by Suzuki to provide better tactile sensation (this would render obvious multiple PU surface treatment layers that include acrylic beads, such that one layer would correspond to the claimed PU layer and the other would correspond to the claimed acrylic surface treated layer).
Min does not disclose the claimed acrylic layer between the skin and base layer. However, Oka is also directed to synthetic leather skin materials bonded to a foam base and discloses that acrylic adhesives were suitable for providing an adhesive bond between the foam and skin layers (see abstract, [0038]-[0039]), such that it would have been obvious to have used an acrylic adhesive between the skin and foam layers of Min to adhere the two layers together as taught by Oka.
Claim(s) 4 and 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Min (U.S. 2020/0232157), in view of Suzuki (U.S. 2021/0292965) in view of Oka (U.S. 2005/0032923), as applied to claim 1 above, and in view of Shibayama et al. (U.S. 5,543,438).
Regarding claims 4 and 8-11, Min discloses all of the above subject matter but does not disclose the claimed bond layer of claims 4 or the same properties as claims 8-11. However, Shibayama is also directed to an automobile laminate including a polyolefin based foam that may be covered with a PVC skin layer (as in Min) and teaches that pretreatement (e.g., corona treatment, which forms a treated surface layer on the foam) may improve bonding by an adhesive between the PVC skin and the polyolefin foam (see abstract, col. 1, lines 10-20, col. 13, lines 10-60 and col. 19, lines 25-40), such that it would have been obvious to have used the corona treatment of Shibayama in modified Min to improve bonding of the adhesive between the foam and skin layers as taught by Shibayama. The above surface treated layer formed by corona discharge corresponds to the bond layer of claim 4.
Furthermore, it is noted that the present disclosure has no details regarding the claimed “bond layer” besides its name and location, such that it may be compositionally identical to the claimed backside treated layer (i.e., when the backside treated layer and bond layer are adjacent, they may be made of the same material and therefore would be patentably indistinguishable from a single layer formed from two applications of the same adhesive composition). Thus, just the adhesive layer in modified Min (discussed above) may correspond to both the backside treatment layer and bond layer (i.e., since the claims allow for the bond layer and backside treatment layer to be the same and be adjacent).
Regarding claims 8 and 9, Min teaches that the skin layer may comprise the same materials as in the present application at an overlapping thickness, such that these overlapping embodiments from Min will inherently have the same properties (including properties within claims 8 and 9) as the corresponding overlapped embodiments in the present disclosure.
Furthermore, Min teaches that mechanical strength and durability are desirable properties of the layered article ([0102], [0122]) such that it would have been obvious to have optimized the mechanical strength and durability properties of the overall laminate (as in claim 10) and each individual layer inside the laminate (including the skin layer, as in claim 8) to provide a strong and durable artificial leather. Similarly, Shibayama teaches that improved elongation properties are also desirable for such laminates, including teaching that elongation values within the claimed range are exemplary (col. 3, lines 20-25, col. 15, Table 4), such that it would have been obvious to have optimized the elongation properties of the overall laminate (as in claim 11) and each individual layer inside the laminate (including the skin layer, as in claim 9) to provide a comfortable automobile seat material. Based on the above, optimizing the elongation/tensile strength of the overall laminate and each layer within the laminate is obvious as part of optimizing the suppleness (elongation) and durability (tensile strength) of the artificial leather for use as an automobile interior material (e.g., seat cushion).
See MPEP 2144.05 II A: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
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 Min teaches away from acrylic adhesive but cites a portion related to use of acrylic adhesive between the foam layer and a backing layer, which is a different location than the claimed acrylic adhesive. Furthermore, the cited portion clearly indicates that acrylic adhesive may be used, despite the “disadvantage” cited by Applicant, such that Min clearly does not teach away from acrylic adhesive (in that particular location in the laminate, or in general) because acrylic adhesive is explicitly suggested as a coating solution.
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