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 .
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) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Illzumi et al (JP 2020-193526).
Regarding claims 1 and 6, Illzumi discloses a transfer film comprising a base material layer 1, i.e. a first substrate, and a transfer film, wherein the transfer film includes a hard coat layer 2 and an adhesive layer 4 in that order from a first substrate side (0167, fig. 2), wherein hard coat layer has an elongation of 25% or more (0091) and the thickness of the hard coat layer is 3 to 15 microns (0085) therefore a value of t x E1/100 is 3.75 (15 x 25/100). 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).
Regarding claim 2, Illzumi discloses the transfer film of claim 1, further comprising a primer layer 3 between the hard coat layer and adhesive layer (0167, fig. 2).
Regarding claims 3-4 and 7, Illzumi discloses the transfer film of claim 1, given that the hard coat layer, primer layer and the adhesive layer of Illzumi discloses the same composition as disclosed in the present specification, it is clear that the hard coat layer, primer layer and the adhesive layer of Illzumi would inherently have the same properties as claimed in present claims.
Regarding claim 5, Illzumi discloses the transfer film of claim 1, wherein the hard coat layer contains particles having average primary particle size of 10 to 100 nm (0075). Given that Illzumi discloses the same size of particles as claimed in present claim, it is clear that the particles of Illzumi would have the same properties as presently claimed.
Regarding claim 8, Illzumi discloses the transfer film of claim 1, wherein the hard coat layer contains light stabilizer or antioxidant, i.e. a weather resistance improver, (0081).
Regarding claim 9, Illzumi discloses the transfer film of claim 2, wherein the hard coat layer contain light stabilizer or antioxidant, i.e. a weather resistance improver, (0081, 0099).
Regarding claim 10, Illazumi discloses the transfer film of claim 1, wherein the transfer film is configured to dispose the hard coat layer on an exterior material (fig. 5).
Response to Arguments
Applicant's arguments filed 01/21/2026 have been fully considered but they are not persuasive.
Applicant argues that Illzumi does not provide an example within the clamed range. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant points to examples in present specification and argues the unexpected results. However, it is noted that the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims given that the examples disclose specific composition and thickness for each layer while present claim recites any composition for each layer. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787