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 Objections
Claim 9 is objected to because of the following informalities:
Claim 9, line 3: “a transparent pressure-sensitive adhesive e film” should most likely read “a transparent pressure-sensitive adhesive film”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 9, the claim recites the limitation "the transparent adhesive layer" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, which claim 9 depends from, does not recite “a transparent adhesive layer”. Therefore, claim 9 lacks antecedent.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5-8, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Dellock et al. (US 2020/0377040 A1, “Dellock”).
With respect to claims 1, 5-8, 12, and 14, Dellock discloses vehicle appliques made from a base structure and a polymeric coating ([0003]). The polymeric coating is optically clear (i.e., is optically transparent) and includes a self-healing polyurethane ([0031]). The appliques are used in vehicle interiors including a glove box door, cup holder, or interior door cover (i.e., a partition or sidewall) ([0029]). The polymeric coating is scratch resistant and UV resistant ([0053]); given that the polymeric coating is UV resistant, it would necessarily contain a UV resistant material. Further, given the applique is only applied to a specific part of the car, the interior would necessarily have a first region with the polymeric coating and a second region adjacent without the polymeric coating where the polymeric coating would necessarily be configured to coat the entirety of the structure surface exterior first region. Furthermore, given that vehicles are used by drivers/passengers on a daily basis, each component of the vehicle interior would inherently be a high-risk damage area. While there may be no explicit disclosure from Dellock regarding the partial outer coating layer comprising a UV/visible light transmittance value ranging from about 0% to about 20% UV/visible light transmittance for UV/visible light wavelengths ranging from about 180 nm to about 800 nm, given that Dellock discloses an otherwise identical partial outer coating layer made from an otherwise identical self-healing polyurethane that is UV/visible light-resistant as that presently claimed, it is clear that the partial outer coating layer of Dellock would necessarily inherently have a UV/visible light transmittance value ranging from about 0% to about 20% UV/visible light transmittance for UV/visible light wavelengths ranging from about 180 nm to about 800 nm, absent evidence to the contrary. Further, while there may be no explicit disclosure from Dellock regarding the partial outer coating being self-adhering, given that Dellock discloses an otherwise identical partial outer coating layer made from an otherwise identical self-healing polyurethane as that presently claimed, it is clear the partial outer coating of Dellock would necessarily inherently be self-adhering. Given that Dellock does not disclose the polymeric coating is multilayered, then the polymeric coating of Dellock is a single layer film layer.
In light of the overlap between the claimed vehicle cabin interior structure and that taught by Dellock, it would have been obvious to one of ordinary skill in the art to use a vehicle cabin interior structure that is both taught by Dellock and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Claims 1-3, 5-8, 11-15, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Young et al. (US 2021/0269138 A1, “Young”) in view of Hwang et al. (KR 10-1347245 B1, “Hwang”). It is noted that the teachings of Hwang are based off a machine translation of the reference included with the action mailed 10 September 2025.
With respect to claims 1-3, 5-8, and 11-15, Young discloses a decorative laminate for interior structural components of a vehicle including aircraft and automobiles ([0036]). The decorative laminate comprises a first laminate layer 162a, second laminate layer 163b, decorative layer 176, and adhesive layer 190 ([0039], [0049], [0058]). The outer first laminate layer is transparent (i.e., is optically transparent) ([0024]) . Given that the decorative laminate is applied to a structural component of a vehicle or aircraft, it is clear that the interior would necessarily have a first region with the decorative laminate thereon and a second region adjacent to the first region without the decorative laminate where the decorative laminate would necessarily be configured to coat the entirety of the structure surface exterior first region. For instance, from Fig. 2, it can be seen that when the decorative laminate 10 is applied to a storage bin 16 (the first region), the area surrounding and in between each storage bin (the second region) would not have a decorative laminate applied. All interior structural components of automobiles and aircraft would be considered a high-risk damage area given that automobiles and aircraft are used every day by numerous passengers.
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However, Young does not disclose that the decorative laminate comprises a self-adhering and self-healing material.
Hwang teaches a self-healing polyurethane composition for automobile interior materials such as instrument panels and door trims ([0001]). The polyurethane is a thermoplastic polyurethane (page 5, line 10). The composition also comprises an ultraviolet blocker (page 7, line 12) (i.e., the composition is a UV resistant material). The composition has scratch resistance and scratch self-healing properties (page 5, lines 1-5).
Young and Hwang are analogous inventions in the field of laminates applied to vehicle interiors.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the outer first laminate layer 162a of Young to include the polyurethane composition containing a UV blocker as taught by Hwang in order to provide interior structural components with scratch-resistance and scratch self-healing properties (Hwang, page 5, lines 1-5).
Regarding the partial outer coating layer being self-adhering, while there may be no explicit disclosure from Young in view of Hwang regarding the partial outer coating layer being self-adhering, given that Young in view of Hwang discloses an otherwise identical partial outer coating layer made from an otherwise identical thermoplastic polyurethane as that presently claimed, it is clear the partial outer coating of Young in view of Hwang would necessarily inherently be self-adhering, absent evidence to the contrary.
Regarding the partial outer coating layer having a Young’s modulus ranging from about 10 MPa to about 120 MPa, while there may be no explicit disclosure from Young in view of Hwang regarding the partial outer coating layer having this property, given that Young in view of Hwang discloses an otherwise identical partial outer coating layer made from an otherwise identical thermoplastic polyurethane as that presently claimed, it is clear that the partial outer coating layer of Young in view of Hwang would necessarily inherently have a Young’s modulus ranging from about 10 MPa to about 120 MPa, absent evidence to the contrary.
Regarding the partial outer coating layer comprising a UV/visible light transmittance value ranging from about 0% to about 20% UV/visible light transmittance for UV/visible light wavelengths ranging from about 180 nm to about 800 nm, while there may be no explicit disclosure from Young in view of Hwang regarding the partial outer coating layer having this property, given that Young in view of Hwang discloses an otherwise identical partial outer coating layer made from an otherwise identical thermoplastic polyurethane that is UV/visible light-resistant as that presently claimed, it is clear that the partial outer coating layer of Young in view of Hwang would necessarily inherently have a UV/visible light transmittance value ranging from about 0% to about 20% UV/visible light transmittance for UV/visible light wavelengths ranging from about 180 nm to about 800 nm, absent evidence to the contrary.
With respect to claim 31, while there may be no explicit disclosure from Young in view of Hwang regarding the partial outer coating layer being configured to self-heal at a temperature of about 70°F to about 120°F, given that Young in view of Hwang discloses an otherwise identical partial outer coating layer made from an otherwise identical thermoplastic polyurethane as that presently claimed, it is clear the partial outer coating of Young in view of Hwang would necessarily inherently be configured to self-heal at a temperature of about 70°F to about 120°F, absent evidence to the contrary.
With respect to claim 32, while there may be no explicit disclosure from Young in view of Hwang regarding the partial outer coating layer being configured to self-heal at a temperature of about 100°F to about 140°F, given that Young in view of Hwang discloses an otherwise identical partial outer coating layer made from an otherwise identical thermoplastic polyurethane as that presently claimed, it is clear the partial outer coating of Young in view of Hwang would necessarily inherently be configured to self-heal at a temperature of about 100°F to about 140°F, absent evidence to the contrary.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Young et al. (US 2021/0269138 A1, “Young”) in view of Hwang et al. (KR 10-1347245 B1, “Hwang”) as applied to claim 1 above, and further in view of Sutou et al. (US 2018/0043653 A1, “Sutou”) and the evidence provided by SpecialChem (Thermoplastic Polyurethanes (TPU): How to select the right grade?). It is noted that the teachings of Hwang are based off a machine translation of the reference included with the action mailed 10 September 2025.
With respect to claim 9, while Young in view of Hwang discloses the use of an adhesive layer as set forth in the above rejection of claim 1, Young in view of Hwang does not disclose wherein the adhesive layer is a transparent adhesive layer comprising at least one of a transparent pressure-sensitive adhesive film layer and a spray adhesive, wherein the spray adhesive is configured to dry into the transparent adhesive layer.
Sutou teaches a decorative resin molded article for vehicle interiors comprising a decorative sheet on a resin molded article ([0002], [0303]). An adhesive is provided to improve adhesion between the decorative sheet and the resin molded article ([0092], [0244]). The adhesive is made from thermoplastic polyurethane ([0246]) which is well known, as evidenced by SpecialChem, to have a crystal clear transparency (page 9, “Sports and leisure”). Given that the adhesive would necessarily dry into a transparent adhesive layer, it would necessarily be considered a spray adhesive.
Young in view of Hwang and Sutou are analogous inventions in the field of decorative articles for vehicle interiors.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the adhesive layer of Young in view of Hwang to be the transparent thermoplastic polyurethane adhesive of Sutou in order to provide an adhesive that improves the adhesion between the decorative laminate and the structural component to which the laminate is applied.
Response to Arguments
Due to the cancellation of claims 4 and 10, the 35 U.S.C. 102(a)(1), 35 U.S.C. 102(a)(2), and 35 U.S.C. 103 rejections of claims 4 and 10 are withdrawn.
Due to the amendments filed 30 October 2025, the previous 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) rejections are withdrawn.
Applicant's arguments filed 30 October 2025 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 103 rejections over Dellock, Applicant argues the claimed properties are not inherently present in Dellock, and that the Office failed to establish how Dellock inherently discloses the claimed properties. The examiner respectfully disagrees for the following reasons.
In response to Applicant’s arguments regarding Dellock, this argument is not found persuasive because Dellock discloses an identical thermoplastic polyurethane as the one presently claimed in claim 3. The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the reference. However, the reference teaches all of the claimed components (i.e., teaches a thermoplastic polyurethane as claimed). Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not.
Regarding the 35 U.S.C. 103 rejections over Young in view of Hwang, Applicant argues Young fails to disclose a self-healing material. Applicant further argues the Office’s position of inherency regarding Young in view of Hwang inherently disclosing the claimed Young’s modulus is incorrect. The examiner respectfully disagrees for the following reasons.
In response to Applicant’s argument that Young fails to disclose a self-healing material, this is not found persuasive. The examiner acknowledges Young fails to disclose a self-healing material; however, Young is not being used to meet this limitation. Rather, Hwang is used; as set forth above, Hwang teaches a self-healing polyurethane composition for automobile interior materials such as instrument panels and door trims ([0001]). The polyurethane is a thermoplastic polyurethane (page 5, line 10). The composition also comprises an ultraviolet blocker (page 7, line 12) (i.e., the composition is a UV resistant material). The composition has scratch resistance and scratch self-healing properties (page 5, lines 1-5). Young and Hwang are analogous inventions in the field of laminates applied to vehicle interiors. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the outer first laminate layer 162a of Young to include the polyurethane composition containing a UV blocker as taught by Hwang in order to provide interior structural components with scratch-resistance and scratch self-healing properties (Hwang, page 5, lines 1-5).
In response to Applicant’s argument that the Office’s position of inherency is incorrect, this is not found persuasive. The basis for inherency is not based on mere possibility or probability, but based on the fact that the prior art references explicitly meet all the claim limitations. It is the examiner’s position that a sound basis has been set forth for believing that the product of the prior art is the same as that claimed. The Office realizes that the claimed properties are not positively stated by the references. However, the references teach all of the claimed components (i.e., Young in view of Hwang discloses a thermoplastic polyurethane as presently claimed). Therefore, the claimed properties would inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) persuasive evidence would need to be provided to support this position; and (2) it would be the Office’s position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed components. Given that it is the examiner’s position that a sound basis has been provided in the rejections of record for believing that the products of the Applicant and the prior art are the same, one would expect the claimed properties to necessarily be present (i.e., naturally flow from the prior art), and thus, the burden is properly shifted back to Applicant to show that they are not.
Applicant’s request for rejoinder has been considered but is denied because no claims are presently allowable.
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 Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787