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 § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 5-10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ho [US 11267993] (also recognized as WO2020129024).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Claim 1: Ho teaches a surfacing film comprising a plurality of layers in the following order: a first clear coat layer comprising a crosslinked polyurethane that is a reaction product of a reactive mixture comprising an isocyanate and a polyol containing a styrene repeat unit and a hydroxyl-containing (meth)acrylate repeat unit; and a bulk layer comprising a thermoplastic polyurethane; and an adhesive layer [col 2, ln 22-32].
Claim 2: Ho teaches the surfacing film of claim 1, wherein the hydroxyl-containing (meth)acrylate repeat unit is a hydroxyalkyl (meth)acrylate repeat unit [col 5, ln 18-22].
Claim 5: Ho teaches the surfacing film of any one of claim 1, wherein the reactive mixture further comprises one or more of a polyester polyol, polycarbonate polyol, and polyacrylate polyol [abstract].
Claim 6: Ho teaches the surfacing film of any one of claim 1, further comprising a second clear coat layer comprised of a polymer that is at least partially crosslinked [col 2, ln 35-50].
Claim 7: Ho teaches the surfacing film of claim 6, wherein the second clear coat layer is comprised of a polyurethane that is at least partially crosslinked [col 7, ln 15-20].
Claim 8: Ho teaches the surfacing film of claim 7, wherein the polyurethane of the second clear coat layer is a water-borne polyurethane [col 2, ln 55-60].
Claim 9: Ho teaches the surfacing film of any one of claim 1, wherein the isocyanate is an aliphatic isocyanate [col 4, ln 51].
Claim 10: Ho teaches the surfacing film of any one of claim 1, wherein the bulk layer comprises an aliphatic thermoplastic polyurethane [col 6, ln 5-10].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho.
Teaching of the prior art is aforementioned.
Claim 3: Ho teaches the surfacing film of claim 2, wherein the polyol has a functionality of from greater than 2 [col4, ln 50-55], where it would have been obvious to one of ordinary skill in the art that such a range overlaps with the claimed range of 5 to 50. The claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (See MPEP 2144.05.I).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho in view of Rische [US 20050182188].
Teaching of the prior art is aforementioned, but does not appear to teach the claimed weight average molecular range. Rische is provided.
Claim 4: Rische teaches the surfacing film of claim 1, wherein the polyol has a weight average molecular weight of from 400 to 8000 g/mol which overlaps with 250 g/mol to 30000 g/mol [abstract]. The claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (See MPEP 2144.05.I).
It would have been obvious to one of ordinary skill in the art to use the claimed weight average molecular range since Rische teaches molecular weights are operable for polyurethane coating systems.
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho in view of Van Riel [US 20190232620].
Teaching of the prior art is aforementioned, but does not appear to teach the bulk layer further comprises a colored (opaque) thermoplastic polyurethane layer and a transparent polyurethane layer.
Claim 11: Van Riel teaches the surfacing film of claim 10, wherein the bulk layer further comprises a colored thermoplastic polyurethane layer and a transparent or translucent thermoplastic polyurethane layer disposed thereon [0017; Fig. 1a]. It would have been obvious to one of ordinary skill in the art at the time of the invention was made to provide a base layer with colorant and a transparent layer disposed thereon since Van Riel teaches such as combination is well known in the polyurethane multilayer coating systems for the same field as Ho (e.g. automotive parts) [0002-0003].
Claim 12: Ho teaches the surfacing film of claim 11, wherein the colored thermoplastic polyurethane layer comprises a colored sublayer that is translucent and a base sublayer that is substantially opaque [0017; Fig. 1a; Claim 14].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim 1-3, 5-10 rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11267993. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claim in the instant application fully encompass the subject matter of the claims of US Patent No. 11267993 or alternatively the claims of US Patent No. 11267993 anticipates the claim in the instant application.
Claim 4 rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1-15 of U.S. Patent No. US Patent No. 11267993 in view of Rische. US Patent does not appear to teach the claimed weight average molecular range. Rische is provided.
Claim 4: Rische teaches the surfacing film of claim 1, wherein the polyol has a weight average molecular weight of from 400 to 8000 g/mol which overlaps with 250 g/mol to 30000 g/mol [abstract]. The claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (See MPEP 2144.05.I).
It would have been obvious to one of ordinary skill in the art to use the claimed weight average molecular range since Rische teaches molecular weights are operable for polyurethane coating systems.
Claim 11-12 rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1-15 of U.S. Patent No. US Patent No. 11267993 in view of Van Riel. US Patent does not appear to teach the bulk layer further comprises a colored (opaque) thermoplastic polyurethane layer and a transparent polyurethane layer. Van Riel is provided.
Claim 11: Van Riel teaches the surfacing film of claim 10, wherein the bulk layer further comprises a colored thermoplastic polyurethane layer and a transparent or translucent thermoplastic polyurethane layer disposed thereon [0017; Fig. 1a]. It would have been obvious to one of ordinary skill in the art at the time of the invention was made to provide a base layer with colorant and a transparent layer disposed thereon since Van Riel teaches such as combination is well known in the polyurethane multilayer coating systems for the same field as Ho (e.g. automotive parts) [0002-0003].
Claim 12: Ho teaches the surfacing film of claim 11, wherein the colored thermoplastic polyurethane layer comprises a colored sublayer that is translucent and a base sublayer that is substantially opaque [0017; Fig. 1a; Claim 14].
Response to Arguments
Applicant's arguments filed 04/09/2026 have been fully considered but they are not persuasive. Applicant’s arguments that Ho fails to teach a polyol that contains both the styrene repeat unit and hydroxyl-containing (meth)acrylate repeat unit as required by claim 1; however, Ho appears in fact teaches this limitation (hydroxy-functional silicone poly(meth)acrylate that can have more than one hydroxyl group such as poly(meth)acrylate polyol, and the silicone polymethacrylate can contain any of a variety of repeat units including hydroxyethyl methacrylate…styrene,…and combinations thereof) [col 5, ln 15-23].
Conclusion
THIS ACTION IS MADE FINAL. 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 MANDY C LOUIE whose telephone number is (571)270-5353. The examiner can normally be reached Monday to Friday 1:00PM to 4:00PM PT.
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, Timothy Meeks can be reached at (571)272-1423. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MANDY C LOUIE/Primary Examiner, Art Unit 1718
Prosecution Insights