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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/05/2026 has been considered by the examiner.
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.
The factual inquiries 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.
Claims 1, 4, 6-7, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (US 2018/0022076) in view of Shimizu (JP H10-217407) and Aoki (JP 2019-123121).
Regarding claim 1, Ueno teaches a decorative sheet which is formed from, in order, a base sheet (“a substrate sheet”), a decorative layer (“a picture layer”), a transparent resin layer (“a transparent resin layer”), and a surface protective layer (“ surface protective layer”) (Paragraph [0018], [0059]; Fig. 1). The decorative layer may include woodgrain patterns (“the picture layer having a wood-grain pattern including a characteristic portion and a non-characteristic portion”) (Paragraph [0043]). The base sheet may be formed from a polyester resin, such as PET, or polyolefin resins, both of which may be colored (Paragraphs [0019]-[0025]). PET and polyolefin resins are designated as being a suitable material for a “non-halogen thermoplastic resin and showing softer behavior in a high-temperature environment than in an ambient-temperature environment” (Instant Specification, PGPUB, Paragraph [0044]). The decorative sheets may be formed with recesses in order to improve the tactile impression of the sheet which extend to each of the layers of the decorative sheet (Paragraph [0067]).
Ueno is silent with respect to the recesses harmonizing with the characteristic portion of the picture layer on a side opposite to a side facing the picture layer.
Shimizu teaches a decorative sheet which comprises a base sheet, a printed ink layer, a transparent olefin-based thermoplastic elastomer resin layer and a surface protective resin coat, in that order (Paragraphs [0005]; [0009]; Figs. 1-2). The printed ink layers are designed to be the same or similar to vessels of a wood grain pattern (Paragraphs [0001]; [0040]; [0042]). The surface protective coat and the transparent olefin-based thermoplastic elastomer resin layer are provided with a recessed pattern that matches, and is in harmony with, the design of the printed ink layer (Paragraphs [0004]-[0005]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the recesses to match the woodgrain characteristics of in order to provide the decorative sheet with improved tactile impressions along with a harmonized design.
Ueno is silent with respect to the base sheet having a modulus of elasticity in a machine direction of 350 MPa or higher and 600 MPa or lower in an environment of 40°C.
Aoki teaches a decorative sheet formed with a stretch film which ensures mechanical strength (Paragraph [0010]). The stretch film is preferably formed from a highly crystalline polypropylene in order to improve the tensile modulus of the stretch film (Paragraph [0019]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the base sheet from a highly crystalline polypropylene in order to improve the tensile modulus of the stretch film as taught by Aoki. Furthermore, one of ordinary skill in the art would have found it obvious to optimize the tensile modulus of the highly crystalline polypropylene to be 350 MPa or higher and 600 MPa or lower in an environment of 40°C such that a colored polyolefin resin material is preferred for the substrate sheet of the claimed invention and the base sheet teaches a highly crystalline polypropylene resin in order to improve tensile moduli properties, as discussed above (PGPUB, Paragraph [0054]). MPEP 2144.05 (II)(A): "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Ueno is silent with respect to the decorative sheet having an elongation rate in a machine direction of 6% or higher and 10% or lower at a loading rate of 50 mN/min in an environment of 120°C, relative to a length in an environment of 20°C, in thermomechanical analysis.
However, one of ordinary skill in the art would recognize that identical products which are formed from identical methods must have identical properties. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the decorative sheets require each of the layers as required by instant claim 1. The substrate sheet is preferably a colored polyolefin (PGPUB, Paragraphs [0040]-[0059]). Furthermore, the thermomechanical properties, being the required elongation rate, are taught to controlled by adjusting the degree of crystallinity of the polyolefin of the substrate sheet (PGPUB, Paragraph [0058]). Additionally, the picture layer is formed from the inks in a matrix, as described in paragraphs [0060]-[0082], and the transparent resin layer is preferably a thermoplastic resin formed from lamination methods, as described in paragraphs [0083]-[0100]). The surface protective layer is formed from either a two-component curable resin or an ionizing radiation curable resin (Paragraph [0105]). Lastly, the methods of forming the decorative sheets include lamination and embossing (Paragraph [0180]).
The combination of Ueno, Shimizu and Aoki teaches each of the preferred materials as discussed above, including the decoration layer including an ink in a binder resin, the resin layer is a thermoplastic resin, and the surface protective layer is an ionizing radiation curable resin (Paragraphs [0032]-[0061]). The base sheet of Ueno is formed from the highly crystalline polypropylene as taught by Aoki. Lastly, the methods of forming the decorative sheets of Ueno are lamination and embossing (Paragraphs [0071]; [0075]-[0086]).
Therefore, one of ordinary skill in the art would recognize the decorative sheets of Ueno, Shimizu and Aoki are formed from identical materials and methods as applicant’s invention, resulting in identical properties, including sheet having an elongation rate in a machine direction of 6% or higher and 10% or lower at a loading rate of 50 mN/min in an environment of 120°C, relative to a length in an environment of 20°C, in thermomechanical analysis.
Regarding claim 4, Ueno teaches the decorative sheet as discussed above with respect to claim 1.
Ueno is silent with respect to the decorative sheet having a modulus of elasticity in a machine direction and a modulus of elasticity in a cross direction of the decorative sheet are both 750 MPa or higher and 1100 MPa or lower in an environment of 20°C, and the modulus of elasticity in the machine direction and the modulus of elasticity in the cross direction give a ratio of 1.00 or higher and 1.20 or lower.
However, one of ordinary skill in the art would recognize that identical products which are formed from identical methods must have identical properties. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the decorative sheets require each of the layers as required by instant claim 1. The substrate sheet is preferably a colored polyolefin (PGPUB, Paragraphs [0040]-[0059]). Furthermore, the thermomechanical properties, being the required elongation rate, are taught to controlled by adjusting the degree of crystallinity of the polyolefin of the substrate sheet (PGPUB, Paragraph [0058]). Additionally, the picture layer is formed from the inks in a matrix, as described in paragraphs [0060]-[0082], and the transparent resin layer is preferably a thermoplastic resin formed from lamination methods, as described in paragraphs [0083]-[0100]). The surface protective layer is formed from either a two-component curable resin or an ionizing radiation curable resin (Paragraph [0105]). Lastly, the methods of forming the decorative sheets include lamination and embossing (Paragraph [0180]).
The combination of Ueno, Shimizu and Aoki teaches each of the preferred materials as discussed above, including the decoration layer including an ink in a binder resin, the resin layer is a thermoplastic resin, and the surface protective layer is an ionizing radiation curable resin (Paragraphs [0032]-[0061]). The base sheet of Ueno is formed from the highly crystalline polypropylene as taught by Aoki. Lastly, the methods of forming the decorative sheets of Ueno are lamination and embossing (Paragraphs [0071]; [0075]-[0086]).
Therefore, one of ordinary skill in the art would recognize the decorative sheets of Ueno, Shimizu and Aoki are formed from identical materials and methods as applicant’s invention, resulting in identical properties, including sheet having a modulus of elasticity in a machine direction and a modulus of elasticity in a cross direction of the decorative sheet are both 750 MPa or higher and 1100 MPa or lower in an environment of 20°C, and the modulus of elasticity in the machine direction and the modulus of elasticity in the cross direction give a ratio of 1.00 or higher and 1.20 or lower.
Regarding claim 6, Ueno teaches the decorative sheet as discussed above with respect to claim 1. The base sheet has a thickness of 40 to 90 microns and is formed from a colored polyolefin (Paragraph [0019]-[0025]).
Regarding claim 7, Ueno teaches the decorative sheet as discussed above with respect to claim 1. The thickness of the resin layer is 20 to 130 microns and the thickness of the surface protective layer is 2 to 25 microns (Paragraph [0054]; [0060]).
Regarding claim 15, Ueno teaches the decorative sheet as discussed above with respect to claim 4. The base sheet has a thickness of 40 to 90 microns and is formed from a colored polyolefin (Paragraph [0019]-[0025]).
Regarding claim 17, Ueno teaches the decorative sheet as discussed above with respect to claim 4. The thickness of the resin layer is 20 to 130 microns and the thickness of the surface protective layer is 2 to 25 microns (Paragraph [0054]; [0060]).
Claims 5 and 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (US 2018/0022076) in view of Shimizu (JP H10-217407) and Aoki (JP 2019-123121) as applied to claims 1 and 4 above, and further in view of Vanhooydonck (US 2020/0230989).
Regarding claims 5 and 14, Ueno teaches the decorative sheet as discussed above with respect to claim 1. As discussed above, Shimizu teaches the printed ink layers are designed to be the same or similar to vessels of a wood grain pattern.
Ueno and Shimizu are silent with respect to the decorative layer having a color difference between the characteristic portion and non-characteristic portion of 1.3 or more.
Vanhooydonck teaches decorative panels that look and feel like wood (Paragraph [0002]). The panels are provided with contrasting colors which simulate the wood pattern on a background color producing a high delta E in CIELab (Paragraphs [0062]-[0067]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the wood grain pattern of the decorative layer such that a contrast color is produced on a background color having a highest possible delta E in order to produce a realistic wood grain pattern as taught by Vanhooydonck. Furthermore, one of ordinary skill in the art would optimize the delta E to be as high as possible in order to produce the realistic wood pattern, including having a delta E greater than 1.3. MPEP 2144.05 (II)(A): "[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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-7, 14-15 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 16-18 and 20 of copending Application No. 17/794,762 (‘762) in view of Ueno et al. (US 2018/0022076), Shimizu (JP H10-217407), Aoki (JP 2019-123121) and Vanhooydonck (US 2020/0230989).
Application ‘762 teaches a decorative sheet as required by claim 1. Claims 3 and 4 further require a surface protective layer and the picture layer to comprise a wood-grain pattern.
Application ‘762 is silent with respect to the substrate of the decorative sheet of claim 1 to contain a non-halogen thermoplastic resin and showing softer behavior in a high-temperature environment than in an ambient-temperature environment.
Ueno teaches a decorative sheet including a base sheet which is formed from PET or a polyolefin which are both suitable as a non-halogen thermoplastic resin and showing softer behavior in a high-temperature environment than in an ambient-temperature environment (Paragraph [0091]-[0025]; Instant Specification, PGPUB, Paragraph [0044]).
Therefore, it would have been obvious to one of ordinary skill in the art to form the substrate of application ‘762 from PET or a polyolefin which are both suitable as a non-halogen thermoplastic resin and showing softer behavior in a high-temperature environment than in an ambient-temperature environment which is taught to be a suitable material for a base sheet of a decorative sheet as taught by Ueno.
‘762 is silent with respect to the substrate having a modulus of elasticity in a machine direction of 350 MPa or higher and 600 MPa or lower in an environment of 40°C and the decorative sheet having an elongation rate in a machine direction of 6% or higher and 10% or lower at a loading rate of 50 mN/min in an environment of 120°C, relative to a length in an environment of 20°C, in thermomechanical analysis.
However, these limitations are taught by Ueno, Shimizu and Aoki as discussed above in the 35 U.S.C 103 rejection of claim 1.
Claims 4-7, 14-15 and 17 are further taught by application ‘762, Ueno, Shimizu, Aoki and Vanhooydonck as applied to the 35 U.S.C 103 rejections above.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 03/26/2026 have been fully considered but they are not persuasive.
On pages 5-7, applicant argues that the amendments to claim 1, now requiring the limitations of claims 2-3, overcomes the rejection in view of Ueno, Shimizu and Aoki. Specifically, none of the references teaches the substrate sheet having an elastic modulus between 350 and 600 MPa and the decorative sheet having an elongation rate in a machine direction of 6% to 10%. Specifically, the examples in the instant specification show that when these properties are met, superior design stability is met. Furthermore, applicant argues that the methods of forming the decorative sheets are not taught by the prior art such that the instant specification describes annealing the base sheet. Therefore, the combination fails to teach identical methods to that of applicant’s invention.
The examiner finds these arguments unpersuasive.
Firstly, the examiner notes that the examples do not illustrate values both fully outside of the claimed ranges (above and below) nor do the examples encompass the entirety of the claimed ranges. MPEP 716.02(d): To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
In the instant case, the elastic moduli values for the substrate sheet at 40°C for examples 1-4 are only 408 MPa which does not encompass the range of 350 to 600. Therefore, the examples are not commensurate in scope with the claims. Additionally, comparative example 1 only illustrates a modulus value of 348 MPa, just below the claimed range. However, there are no values above the claimed range (i.e. just above 600 MPa). As such, the arguments regarding the elastic modulus of the substrate sheet are unpersuasive such that the examples are not commensurate in scope and do not establish criticality of the claimed range.
Similarly, applicant’s arguments indicating the examples attempt to establish criticality of the elongation rate of the decorative sheets are unpersuasive as well. Examples 5-8 have an elongation rate of 7.2% to 7.5%, which does not encompass the range of 6% to 10%. Comparative example 2 only has an elongation rate of 4.2%, which still provides a gap to the lower limit of 6% and there are no examples with an elongation rate of above 10%. Therefore, the examiner contends that the examples in the instant specification do not establish criticality of the amended ranges of claim 1.
Concerning applicant’s arguments regarding the combination of Ueno, Shimizu and Aoki failing to teach the method of annealing, the examiner notes that this argument is unpersuasive as well. Firstly, applicant argues that the method of annealing is essential to achieving the claimed invention. However, this does not appear to be the case such that is not description of a specific annealing process in the instant specification. The only description is of a general heating process or general annealing (Instant Specification, PGPUB, Paragraphs [0056]; [0058]; [0209]). The annealing process is not performed to any designed temperature or time. As such, the annealing process is not deemed to be vital to the formation of the above properties such that any heating would meet the described annealing. Ueno teaches a method of heating (Paragraph [0097]). Shimizu teaches embossing through heat and pressure (Paragraph [0040]). Aoki teaches lamination through heat and pressure (Paragraphs [0038]-[0039]). As such, each of the references teach the application of some form of heat to the decorative sheets, meeting an annealing process similar to those described in applicant’s specification.
Even further, applicant’s specification describes the annealing process to affect the crystallinity of the substrate sheet (Instant Specification, PGPUB, Paragraph [0056]; [0058]). This is taught by Aoki such that the stretch films are highly crystalline polypropylenes which improve the tensile modulus of the films (Paragraph [0019]).
Therefore, the examiner contends that the instant specification fails to indicate that a specific annealing process is key to achieving the claimed elastic modulus of the substrate sheet such that no specific process is described and the final product including the stretched films of Aoki achieve an identical final product being a highly crystalline polypropylene to improve tensile moduli values.
The current rejection is made FINAL in view of the amendments to the claims.
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 DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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