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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 28 January 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 28 May 2025.
Claim Rejections - 35 USC § 103
Claims 1, 3, 5, 6, 8, 11, 13-15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wokӧck et al. (US 2018/0265016).
Wokӧck is directed to vehicle outer surface component comprising a transparent coating of a material that can be induced to self-repair by applying heat (paragraph 0011). The component comprises a base layer over which the coating is applied by injection molding (paragraph 0012-0013). The coating material is polyurethane or polyurea applied at a thickness of 0.1 to 2.0 mm (paragraph 0015) that may be applied directly to the base layer (paragraph 0028 and Figure 1). The base layer may be transparent and provided with a structured surface (paragraph 0019-0020). The component may serve as a light guide (paragraph 0021), i.e., a light device.
Wokӧck is silent regarding the material used as the base layer, however, Wokӧck does teach that polycarbonate is a known material used as a base layer (paragraph 0004). As such, it would have been obvious to one of ordinary skill in the art to form the base layer out of polycarbonate. Moreover, because one of ordinary skill in the art would expect polycarbonate to have hydroxyl end groups, one of ordinary skill in the art would expect at least some direct bonds to form between the hydroxyl end groups (i.e., polyol) of the polycarbonate and the isocyanate of the materials injected to form the polyurethane coating.
Regarding claims 6, 14, and 19, since Wokӧck (a) uses the same materials for the base layer and coating as are used in the instant invention for the substrate and coating (i.e., polycarbonate and polyurethane) and (b) describes both the base and the coating as “transparent” (see paragraphs 0019-0020), one of ordinary skill in the art would expect the base and coating layers of Wokӧck to inherently satisfy the limitations of claims 6, 14, and 19. Alternatively, in the absence of a showing of criticality, it would have required no more than routine experimentation and ordinary skill in the art to determine a suitable transparency for the base and coating layers of Wokӧck. Such a determination would be expected to result in a body and protective film that satisfy the limitations of claims 6, 14, and 19 since articles made by Wokӧck include a light guide and transparent cover (see paragraphs 0023-0024).
Regarding the limitation in claim 1 that the chemical reaction at the interface between the polyols of the substrate and the isocyanates of the coating occurs when the substrate is at a temperature greater than ambient temperature, this represents a product-by-process type limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985) and MPEP § 2113. In this case, since (a) the claims require only one (i.e., the substrate) of the two components (i.e., substrate and coating) participating in the reaction to be above ambient temperature and (b) one of the components of Wokӧck (i.e., the coating which is injection molded directly onto the base component - paragraph 0008) would be above ambient temperature when coming into contact with the base, one of ordinary skill in the art would expect the interface of Wokӧck to have a similar structure as that of claim 1. Therefore, the burden is on the applicant to conclusively demonstrate that a component formed by disposing a coating layer on a substrate above ambient temperature is patentably distinct from a component formed by disposing a coating layer above ambient temperature on a substrate.
Moreover, Wokӧck teach that their base component may be produced in the same injection mold used to subsequently apply the coating (paragraph 0013). One of ordinary skill in the art would expect the base component that had been produced in the mold prior to the injection of the coating material to be greater than ambient temperature, particularly since Wokӧck does not teach or suggest completely cooling down the mold prior to injecting the coating.
Claims 9 and 16 are rejected under 35 U.S.C. 103 as obvious over Wokӧck et al. (US 2018/0265016) in view of Chen et al. (US 2018/0188438).
Wokӧck suggest all the limitations of claims 9 and 16, as outlined above, except for specifying that the structured surface in an inner surface of the light guide.
Chen is directed to a light emitting device for motor vehicle use (paragraphs 0002-0005). The device comprises a light guide layer and a microstructure layer formed above or below the light guide layer (paragraph 0007). The microstructure layer may be formed on the top or bottom of the light guide layer (paragraphs 0023-0024).
Since Chen teaches that the microstructure layer of a light guide device may be on either the top or bottom of the light guide, it would have been obvious to one of ordinary skill in the art - in the absence of a showing of criticality or unexpected results - to situate the structured layer of Wokӧck on either surface of the light guide layer, including the inner surface
Claims 1, 3-8, 11-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hanasaki (US 2001/0028569) in view of Hufen et al. (US 2016/0251513).
Hanasaki is directed to the outer lens of a car head lamp (paragraph 0002). The lens comprises a lens body formed of a transparent resin and a transparent protective film formed of thermoplastic polyurethane on the outer surface of the lens body (paragraph 0013). In one embodiment, the lens body has a preferred thickness of about 1.5 mm and is formed of polycarbonate while the transparent protective film has a preferred thickness of about 1.2 mm (paragraph 0045).
The polycarbonate lens corresponds to the substrate of the instant claims while the thermoplastic polyurethane transparent protective film corresponds to the coating.
Hanasaki does not teach that the interface between the lens body and protective film comprises polar bonds formed by crosslinking polyol of the lens body with isocyanate of the transparent protective film. However, Hanasaki does teach that the lens may be made by an in-mold molding method of injecting a polycarbonate into a mold in which a thermoplastic urethane film is set
Hufen to improving the adhesion between polycarbonate and polyurethane (paragraph 0001), particularly in composites suitable as exterior or interior components of motor vehicles (paragraph 0103). The composite is formed by injecting the polyurethane raw material directly onto the polycarbonate (paragraphs 0071-0075 and 0079-0090), such that the polycarbonate does not cool down to room temperature before the polyurethane is injected. This allows for the achievement of a reduction in production times and higher energy efficiency (paragraph 0090).
It would have been obvious to one of ordinary skill in the art to fabricate the outer lens of Hanasaki by injecting the polyurethane components directly onto the polycarbonate before the polycarbonate has cooled to room temperature to achievement of a reduction in production times and higher energy efficiency. One of ordinary skill in the art would expect this to result in the formation of polar bonds at the interface of the polycarbonate body and polyurethane film since this appears to be the same approach used by the applicant (see page 2, lines 12-18 of the instant specification).
Regarding claims 6, 14, and 19 Hanasaki (a) uses the same materials for the body and protective film as are used in the instant invention for the substrate and coating (i.e., polycarbonate and polyurethane) and (b) describes both the body and the protective film as “transparent,” one of ordinary skill in the art would expect the body and protective film of Hanasaki to inherently satisfy the limitations of claims 6, 14, and 19. Alternatively, in the absence of a showing of criticality, it would have required no more than routine experimentation and ordinary skill in the art to determine a suitable transparency for the body and protective film of Hanasaki. Such a determination would be expected to result in a body and protective film that satisfy the limitations of claims 6, 14, and 19 because the lens of Hanasaki is used for the same purpose as the instant invention (i.e., an outer lens for a motor vehicle light device).
Regarding claim 8, since (a) the polyurethane of the protective film of Hanasaki is thermoplastic as opposed to thermosetting and (b) the claim does not require any particular degree of self-repair, one of ordinary skill in the art would expect the thermoplastic polyurethane used in the protective layer of Hanasaki to inherently exhibit at least some degree of self-repair upon the application of heat.
Response to Arguments
Applicant's arguments filed 20 January 2026 have been fully considered but they are not persuasive.
Regarding the rejections over Wokӧck, the applicant argues that a coating formed by injecting a plastic material onto a substrate before the substrate has cooled allows for the warm polyols of the substrate to chemically react with the isocyanates of the coating to form the interface. This is contrasted with Wokӧck wherein the formation of the substrate is completely separate from the coating such that no chemical bonding occurs at the interface. The applicant notes that paragraph 0013 of Wokӧck teaches that the substrate may be prefabricated, and therefore completely formed and cooled before the second material is injected.
This is not persuasive for the following reasons. The claims as written require only that the substrate be above ambient temperature with no requirement that the coating also be above ambient temperature. Wokӧck, by teaching that their coating is formed by injecting the coating over the base component implicitly requires that the material of the coating be above ambient temperature. The invention as claimed reads on a component formed by injection molding the first thermoplastic material onto a preformed coating layer composed of polyurethane and/or polyurea, since one of ordinary skill in the art would understand an injection molded first material to be above ambient temperature.
It is further noted that Wokӧck do not require the use of a prefabricated base layer. Paragraph 0013 of Wokӧck goes on to state that their base component may also be produced in the same injection mold used to subsequently apply the coating. One of ordinary skill in the art would expect the base component that had been produced in the mold prior to the injection of the coating material to be greater than ambient temperature, particularly since Wokӧck does not teach or suggest completely cooling down the mold prior to injecting the coating.
The applicant further argues that nothing in Hanasaki or Hufen cures the alleged deficiency in Wokӧck.
This is not persuasive because the rejection set forth over Hanasaki and Hufen does not rely or refer to Wokӧck. Rather, claims are rejected over Hanasaki, which illustrates a lens comprising a body formed of a polycarbonate and a protective film of polyurethane, in view of Hufen, which teaches that the adhesion between polycarbonate and polyurethane used as components of motor vehicles can be improved by injecting the polyurethane onto the polycarbonate before the polycarbonate cools down.
Regarding the rejection under 35 U.S.C. 112(b), in view of the amendment and the arguments presented in the response filed 20 January 2026, the rejection has been withdrawn as the examiner agrees the claims are no longer indefinite. One of ordinary skill in the art would understand that the substrate must comprise both a thermoplastic material and a polyol, including materials wherein the thermoplastic material is a polyol.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787