DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claims 4-10 are objected to because of the following informalities: the phrase "any one of" on line 1 of each of these claims appear to have been unintentionally added back into the claims and must be removed. Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 1-7, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kuriyama et al. (JP 2018-051864) in view of Sagawa (JP 2011-042041).
Kuriyama is directed to a decorative sheet comprising a surface protective layer on a base sheet (paragraph 0011). A picture pattern layer and/or primer layer may be formed between the base sheet and surface layer (Figure 2 and paragraph 0017). The base sheet is preferably a polyolefin sheet (paragraph 0050) having a thickness of 50 to 280 mm (paragraph 0055). The surface protective layer is formed from an ionizing radiation curable resin, such as (meth)acrylate oligomers (paragraphs 0042-0043), and may contain an ultraviolet absorber to provide weather resistance (paragraph 0047). The decorative sheet is used to form a molded article by bonding the sheet to an adherend (paragraph 0094).
In the embodiment of Example 1, the base sheet (i.e., core layer) is formed from a 110 mm thick polypropylene (i.e., a polyolefin) sheet to which a primer has been applied (paragraph 0103). A surface protective layer having a thickness of 10 mm is formed over the primer by applying an ionizing radiation curable composition comprising silica (i.e., particles) and a resin formed from a mixture of urethane acrylate oligomers having weight average molecular weights of 3,000 and 4,000 followed by crosslinking the coating with an electron beam (paragraph 0104).
Kuriyama does not report the indentation depth of the decorative sheet. According to the instant specification, the indentation depth is a function of the resin constituting the surface protective layer and the thickness of the surface protective layer (see paragraph 0057 on page 15). The instant specification further recites that the preferred resin comprises electron beam curable (meth)acrylate oligomers, such as urethane (meth)acrylate oligomers having weight average molecular weights of 1,100 to 7,000 (paragraphs 0063, 0068, and 0072). Additionally, the preferred thickness of the surface protective layer is in the range of 3 to 10 mm according to paragraph 0136 of the instant specification. Since the surface protective layer of Example 1 of Kuriyama has a thickness of 10 mm and is formed from a urethane (meth)acrylate having a weight average molecular weight within the range of 3,000 to 4,000 cured by electron beam, one of ordinary skill in the art would expect it to inherently have an indentation depth that satisfies the limitations of claim 1.
Kuriyama does not teach the presence of an transparent layer including a polyolefin and an ultraviolet absorber. Additionally, while Kuriyama teach that the surface protective layer contains a ultraviolet absorber, there is no teaching that it includes three ultraviolet absorbers with absorption peaks at different wavelengths.
Sagawa is directed to a decorative sheet designed to provide weather resistance when attached to a surface (paragraphs 0001-0005). The sheet comprises a surface protective layer containing multiple types of hydroxyphenyltriazine-based ultraviolet absorbers including one having the structure:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
and a second ultraviolet absorber having the structure:
PNG
media_image2.png
200
400
media_image2.png
Greyscale
and a third ultraviolet absorber based on a benzotriazole (paragraphs 0020-0021). The sheet may further comprises a transparent resin layer to provide protection for a picture pattern layer, wherein the transparent resin layer is preferably formed from a polyolefin and may contain an ultraviolet absorber (paragraph 0044).
It would have been obvious to one of ordinary skill in the art to use the combination of ultraviolet absorber taught by Sagawa in the protective layer of Kuriyama since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07. The two hydroxyphenyltriazine-based ultraviolet absorbers and the benzotriazole-based ultraviolet absorber have absorption peaks at different wavelengths (paragraphs 0037-0038).
Additionally, it would have been obvious to provide the decorative sheet of Kuriyama with a transparent resin layer comprising a polyolefin and ultraviolet absorber to provide protection for the picture pattern layer.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kuriyama et al. (JP 2018-051864) in view of Sagawa (JP 2011-042041) as applied to claim 1 above, and further in view of Th. Vollenberg et al. (US 7,090,926).
Kuriyama taken in view of Sagawa suggests all the limitations of claim 8, as outlined above, except for the structure of the ultraviolet absorber.
Th. Vollenberg is directed to multi-layer, weatherable polymeric materials such as sheets and films (column 1, lines 10-24). The upper layer contains an ultraviolet absorber (column 1, lines 51-55). A suitable ultraviolet absorber is a hydroxyphenyltriazine having the structure (column 6, lines 1-20):
PNG
media_image3.png
200
400
media_image3.png
Greyscale
.
Therefore, it would have been obvious to use
PNG
media_image3.png
200
400
media_image3.png
Greyscale
as the second hydroxyphenyltriazine compound since Th. Vollenberg shows it to be a known ultraviolet absorber used in weatherable surface films and Sagawa merely require the use of a second hydroxyphenyltriazine. Furthermore, in the absence of a showing of criticality or unexpected results, it would have been obvious to use any -C8H17 group for the second hydroxyphenyltriazine, including -CH2CH(C2H5)(CH2)3CH3.
Response to Arguments
Applicant's arguments filed 24 October 2025 have been fully considered but they are not persuasive.
The applicant argues that the combination of features (a), (b), (c), and (d) set forth in the remarks (and also present in the claims) provide the resulting decorative sheet with improvements, including reduced bleedout of ultraviolet absorbers and deterioration of long-term weather resistance.
This is not persuasive because the courts have held that the motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. See MPEP 2144IV. As such, the arguments alone are not sufficient to overcome the rejections over Kuriyama. However, the rejections over Kuriyama have been modified to account for new limitations added by claim amendments.
Additionally, while a prima facie obviousness rejection can be overcome by a showing of unexpected results, including examples present in the originally filed disclosure, the guidelines set forth in MPEP 716.02 must be followed, including (but not limited to) establishing that the results are unexpected and establishing that the claims are commensurate in scope with the showing.
The rejection of claim 1 over Grahl has been withdrawn in view of the claim amendments.
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 RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787