DETAILED ACTION
Claim Rejections - 35 USC § 112
Claims 4-7 and 21-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 recites “a patterned layer on a base layer”. The original filing does not provide support for the broad recitation of “a patterned layer”. The originally filed specification more narrowly discloses “a laser pattern” (e.g., “Particular embodiments relate to a primer coating composition for coating a laser pattern […]” at [0010]) and “a printing layer” comprising the laser pattern (e.g., “a printing layer located on a base layer and including a laser pattern” at [0015]). The specification at [0049] further states the laser pattern is formed specifically from light emitting panels: “The printing layer 40 may include light sources, such as light emitting panels. In the printing layer 40, the light sources may be arranged to form the laser pattern 41.” These narrow disclosures do not provide support for the broad recitation of any “patterned layer” as presently claimed, which encompasses forms of patterned layers other than the originally narrowly disclosed printing layer comprising a laser pattern. Dependent claims are rejected for the same reason.
Claims 4-7 and 21-32 are 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.
Claim 4 recites “the primer layer comprising a primer coating composition comprising” CPO, a modified polyester, and a hydrocarbon-based solvent. The claim is indefinite because it is not clear if the claim encompasses an article wherein the primer layer is “wet” (i.e., still contains solvent, as during a wet-on-wet process before final curing) or dry (i.e., the layer no longer contains solvent and the solvent feature refers to a product-by-process limitation). Additionally, dependent claims 6 and 7 also recite “non-volatile (NV) content” of components of the primer layer is less than 100% (i.e., implying there is volatile content). Claims that depend from claim 4 are rejected for the same reason.
Claim 22 recites “the clear layer comprises: a main agent part”. The claim is indefinite because it is not clear what is meant or encompassed by the term “main” in this context. For example, it is not clear if it is intended to refer to a component that represents 50% by weight or more of the layer. The specification provides no specific definition for the term. Additionally, the claim recites “main agent part” can comprise only “a catalyst,” which one of ordinary skill in the art would recognize is used in small quantities. For purposes of examination, the term “main” is interpreted to not require any particular amount of the described part, but rather is simply a name for the part (similar to “a first agent part”).
Claims 25, 28, and 31 recite additional layers, wherein the layers comprise “a main agent part”. These claims are indefinite for the same reasons described above with regard to claim 22.
Claim 23 recites “the main agent part and the hardening agent part of the clear layer are mixed in a weight ratio of 2 to 5:1.” The claim is indefinite because it is not clear what elements should be considered to be “the main agent part” for purposes of calculating the weight ratio. As noted above, parent claim 22 sets forth the main agent can comprise only “a catalyst”. It is not clear how, e.g., a catalyst can be used in amounts of 2 to 5 times as much as the hardening agent. This may imply other elements must be included in the ratio, but it is not clear which elements are included.
Claims 26 and 29 recite ratios of the main agent part and the hardening agent part. These claims are indefinite for the same reasons described above with regard to claim 23.
Claim Rejections - 35 USC § 103
Claim(s) 1 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Merritt et al. (US 2003/0229179).
Regarding claims 1 and 33:
Merritt discloses an adhesion promoter or primer comprising a chlorinated polyolefin (CPO) and an olefin-based block copolymer comprising at least one polyester block (i.e., a modified polyester) [abstract; 0002; 0007; 0011]. The primer further comprises hydrocarbon solvents [0051]. The CPO has a molecular weight of 2,000-150,000 g/mol, preferably 65,000-80,000 g/mol [0042]. In some embodiments, the primer comprises only the CPO and the copolymer as resinous “vehicle” components, wherein the amount of each component is at least 0.001% by weight or at least 3% by weight [0049; 0053]. The amount of solvent is 0.01-99% by weight of the composition [0058].
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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of the CPO, the copolymer comprising a polyester block, and solvent, including over amounts falling within the presently claimed ranges, to provide the desired combination of properties (e.g., adhesion and viscosity) for a given end use.
Claim(s) 3 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Merritt et al. (US 2003/0229179) in view of Haruta et al. (US 2003/0039839).
Regarding claim 3:
Merritt discloses an adhesion promoter or primer as discussed above.
Merritt is silent with regard to the glass transition temperature of the copolymer.
One skilled in the art would have recognized the importance of adjusting this property to be within desired limits. For example, Haruta discloses a decorative film comprising a laminate comprising a polyolefin base film layer and a primer layer thereon [abstract; 0002; 0010-0014]. Haruta teaches it was known that the glass transition temperature of the primer affects its adhesiveness and crack resistance on folding (i.e., hardness), and so can be set within the range of 20-70°C [0018; 0021].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to adjust the glass transition temperature of Merritt’s copolymer, including over values within the claimed range, to adjust the overall glass transition temperature of the primer to provide the desired adhesiveness, hardness, etc. for a given end use.
Regarding claim 34:
As explained in the rejection of claim 1, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the relative amounts of nonvolatile polyester and solvent (volatile), including over amounts falling within the presently claimed ranges, to provide the desired combination of properties (e.g., adhesion and viscosity) for a given end use.
Claim(s) 4-6 and 21-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Merritt et al. (US 2003/0229179) in view of Johnson et al. (US 2003/0041962).
Regarding claim 4:
Merritt discloses an adhesion promoter or primer comprising a chlorinated polyolefin (CPO) and an olefin-based block copolymer comprising at least one polyester block (i.e., a modified polyester) [abstract; 0002; 0007; 0011]. The primer further comprises hydrocarbon solvents [0051]. The CPO has a molecular weight of 2,000-150,000 g/mol, preferably 65,000-80,000 g/mol [0042]. In some embodiments, the primer comprises only the CPO and the copolymer as resinous “vehicle” components, wherein the amount of each component is at least 0.001% by weight or at least 3% by weight [0049; 0053]. The amount of solvent is 0.01-99% by weight of the composition [0058].
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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of the CPO, the copolymer comprising a polyester block, and solvent, including over amounts falling within the presently claimed ranges, to provide the desired combination of properties (e.g., adhesion and viscosity) for a given end use.
Merritt further discloses applying the primer to a substrate (base layer) and subsequently applying topcoats, including a clearcoat [0003; 0011; 0049; 0052; 0062; 0065].
Merritt is silent with regard to a patterned layer on the base layer.
Such layers were known in the art to have utility. For example, Johnson discloses shaped polymeric sheets and laminates having printed images for use in automotive parts [abstract; 0001-0002; 0037]. In one embodiment, the laminate comprises a thermoformable polymeric backing sheet 22 (base layer), a print layer 24, a primer 28, and a clear topcoat 26, wherein the primer layer bonds the print layer and the topcoat and the order protects the print layer [0033; 036; Fig. 2]. The print layer comprises a pattern as desired [0028; 0041].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a patterned print layer as disclosed in Johnson in combination with the primer taught by Merritt to provide a decorative element as known in the art.
Regarding claim 5:
Merritt teaches polycarbonate substrates [0067].
Regarding claim 6:
As discussed above, Merritt teaches an amount of CPO is at least 0.001% by weight of the resinous (i.e., non-volatile) components [0053]. 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). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the mount of non-volatiles of amounts of the CPO, including over amounts falling within the presently claimed range, to provide the desired combination of properties (e.g., adhesion and viscosity) for a given end use.
Regarding claim 21:
Merritt teaches its coating compositions can be applied to a dry film thickness of about 0.01-5.0 mils (about 0.25-127 µm) [0065]. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thickness of the coating, including over values falling within the claimed range, to provide a coating in accordance with Merritt’s teaching and further provide the desired physical dimensions and desired adhesiveness for a given end use.
Regarding claim 22:
Merritt teaches its composition can be used as a clearcoat [0052; 0062]. The composition comprises a catalyst, a flow control agent (leveling agent), a surfactant (wetting agent), a dispersing agent, or a UV absorber [0057; 0060]. The composition can further comprise a curing agent, including hexamethylene diisocyanate trimer [0050]. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use one or more of the agents disclosed by Merritt, including those falling within the scope of the claimed composition, to provide the known properties of those agents to the composition, and thereby arrive at the claimed invention.
Regarding claim 24:
Merritt teaches its coating compositions can be applied to a dry film thickness of about 0.01-5.0 mils (about 0.25-127 µm) [0065]. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thickness of the coating, including over values falling within the claimed range, to provide a coating in accordance with Merritt’s teaching and further provide the desired physical dimensions, desired adhesiveness, and protection for a given end use.
Regarding claim 25, 28, and 31:
Merritt is silent with regard to a binder layer between the base layer and the patterned layer as claimed. Johnson, however, discloses one or more additional layers can be placed between the base layer and the patterned layer, including tie coat layers, adhesive layers, color coats, and additional clear coats [0036-0039; Figs. 2-5]. Merritt teaches its composition can be used for as a basecoat, a topcoat, and a clearcoat, and further as a paint coating comprising pigment [0048; 0052; 0064]. As noted above, the composition comprises a catalyst, a flow control agent (leveling agent), a surfactant (wetting agent), a dispersing agent, or a UV absorber [0057; 0060]. The composition can further comprise a curing agent, including hexamethylene diisocyanate trimer [0050]. Before the effective filing date of the claimed invention, it would have been obvious to one or more additional layers, including those corresponding to a binder layer and coating layer as presently claimed, to provide additional adhesion, color, or clear coat protection as desired for a given use and disclosed by Johnson. Furthermore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to one of ordinary skill in the art to use one or more of the agents disclosed by Merritt, including those falling within the scope of the claimed composition, to provide the known properties of those agents to the composition, and thereby arrive at the claimed invention.
Regarding claims 23, 26, and 29:
Each of the present claims are indefinite because it is not clear what constitutes the parts to calculate a relative weight ratio as described in the rejections under 35 USC 112. Merritt discloses compositions comprising the same materials as presently claimed. Although the present claims are unclear, in the interest of compact prosecution, the examiner notes that one of ordinary skill in the art would be motivated to adjust the amount of curing agent as needed to provide the desired degree of cure for a composition, and a relative ratio depends on what materials are included in the ratio. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of components, including over those resulting in a ratio presently claimed, to provide a composition according to Merritt and further provide the desired degree of curing as needed for a given end use.
Regarding claim 27, 30, and 32:
Merritt teaches its coating compositions can be applied to a dry film thickness of about 0.01-5.0 mils (about 0.25-127 µm) [0065]. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thickness of the coatings, including over values falling within the claimed range, to provide coatings in accordance with Merritt’s teaching and further provide the desired physical dimensions, desired adhesiveness, and protection for a given end use.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Merritt et al. (US 2003/0229179) in view of Johnson et al. (US 2003/0041962) as applied above, and further in view of Haruta et al. (US 2003/0039839).
Regarding claim 7:
Merritt discloses an adhesion promoter or primer as discussed above. Merritt teaches an amount of olefin-based block copolymer comprising at least one polyester block (i.e., a modified polyester) is at least 0.001% by weight of the resinous (i.e., non-volatile) components [0053]. 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). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the mount of non-volatiles of amounts of the copolymer comprising a polyester block, including over amounts falling within the presently claimed range, to provide the desired combination of properties (e.g., adhesion and viscosity) for a given end use.
Merritt is silent with regard to the glass transition temperature of the copolymer.
One skilled in the art would have recognized the importance of adjusting this property to be within desired limits. For example, Haruta discloses a decorative film comprising a laminate comprising a polyolefin base film layer and a primer layer thereon [abstract; 0002; 0010-0014]. Haruta teaches it was known that the glass transition temperature of the primer affects its adhesiveness and crack resistance on folding (i.e., hardness), and so can be set within the range of 20-70°C [0018; 0021].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to adjust the glass transition temperature of Merritt’s copolymer, including over values within the claimed range, to adjust the overall glass transition temperature of the primer to provide the desired adhesiveness, hardness, etc. for a given end use.
Response to Arguments
Applicant's arguments filed 5/21/2026 have been fully considered but they are not persuasive.
Regarding previous rejections of claim 4 under 35 USC 112, Applicant argues the rejections should be withdrawn in view of the amendments to the claim (p6).
The indefiniteness rejections based on the recitation of “a printing layer” and “a laser pattern” have been withdrawn in view of the deletion of these phrases from claim 4. The amendments, however, introduced the broad phrase “a patterned layer” which lacks support in the original filing as described in the new rejections under 35 USC 112(a) above.
The indefiniteness rejections based on the claim’s ambiguity as to whether the primer layer is wet or dry remains. The amendments did not address this issue and Applicant has provided no argument against the rejection. Therefore, the rejections are maintained.
Regarding the rejection of claim 1 based on Merritt, Applicant argues the reference does not provide a range of nonvolatile components within the claimed range as rejected by the examiner (p7). In particular, after sample calculations, Applicant concludes claim 1 requires 52-86 wt% of CPO relative to the total nonvolatile content, which is at least 2.6 times higher than the upper limit of 20% by taught by Merritt (p7).
The examiner respectfully disagrees. First, the examiner notes claim 1 does not require 52-86 wt% of CPO relative to the total nonvolatile content of the composition. Applicant’s sample calculation is based on the assumption that only CPO, polyester, and solvent are present in the composition, but the claim does not require these components to make up 100 wt% of the composition and the claims use inclusive language (“comprising”), which leaves the claims open to unrecited elements. Furthermore, it is noted that volatiles include solvents. The claim, therefore, is written in a pseudo-product-by-process form that describes the components of the composition prior to a mixing step, e.g., the claim requires 20-25 wt% of a CPO resin, which in turn contains 15-25 wt% of non-volatiles and, implicitly, 75-85 wt% volatiles, or, more concretely, 15-25 wt% of solid polymer and 75-85 wt% of solvent. (See, for example, [0074] of Merritt, which discloses a CPO resin comprising 20% nonvolatiles in a mixture of solvents.) This implied solvent is accounted for by Merritt because it teaches solvent is 0.01-99% by weight of the final composition (i.e., after all components have been mixed) [0058].
Additionally, Applicant’s sample calculation demonstrates Merritt’s disclosed amount of CPO overlaps with the claimed NV content. In Applicant’s calculation, 100 grams of composition comprises 3-6.25 g of CPO and 1-2.8 g of polyester in terms of nonvolatile portions. Applicant states Merritt teaches 0.001-20% by weight of each polymer relative to the total weight of the nonvolatile portion of its composition. Thus, 100 g of Merritt’s composition would contain 0.001-20 g of each polymer in solids, which demonstrates the ranges overlaps the claimed ranges. Therefore, the examiner maintains the rejections.
Applicant argues new claim 33 requires the CPO to be 43-76 wt% of the total nonvolatile content, which is at least 2.15 times the upper limit taught by Merritt (p7).
The examiner respectfully disagrees for the same reasons described above with respect to claim 1. The claim does not require 43-76 wt% of CPO relative to the total nonvolatile content of the composition, and the claim remains open to other components. Furthermore, Applicant’s sample calculation demonstrates Merritt’s ranges do overlap with the claimed ranges as demonstrated above.
Applicant argues Merritt and Kim does not disclose a primer layer on a patterned layer on a base layer (p8).
Applicant’s amendments to the claim resulted in the withdrawal of Kim, and so Applicant’s arguments are moot. The examiner submits Merritt in view of Johnson meets the claimed requirements for the reasons described above.
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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