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 .
DETAILED ACTION
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-16 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over Tominaga and Orihara (JP 2019/155777 A, published 19 Sep. 2019, priority 14 Mar. 2018, hereinafter Tominaga) in view of Kobayashi et al. (JP 2018/016703 A, published 01 Feb. 2018, hereinafter Kobayashi) and further in view of Tsuji et al. (US Patent Application 2019/0055393 A1, published 21 Feb. 2019, priority 15 Feb. 2016, hereinafter Tsuji) and evidence provided by J-Global (“Tinuvin 1600,” access 18 Aug. 2025, hereinafter J-Global).
Regarding claims 1-16, Tominaga teaches a decorative sheet comprising a base material (Item 136), a transparent thermoplastic resin layer (Item 132), and a surface protective layer (Item 131), which contains a triazine-based ultraviolet absorber (Abstract and Figure 1, reproduced below from original Japanese patent document). Tominaga teaches the inclusion of an adhesive layer between the substrate and the decorative sheet (paragraph 0009). Tominaga teaches the surface protective layer is formed from ionizing radiation curable resin (paragraph 0017). Tominaga teaches his adhesive layer (Item 138) is a two-component curing urethane adhesive (paragraph 0037). Tominaga teaches his decorative sheet comprises a pattern layer (decorative layer) (Item 135) (paragraph 0032). Tominaga teaches his substrate layer (Item 11) is a metal-based material (paragraph 0033). Tominaga teaches use of the triazine-based ultraviolet absorber “TINUVIN 1600”, manufactured by BASF, in his transparent thermoplastic layer (Item 132) (paragraphs 0035-0036). Tominaga teaches that both his transparent thermoplastic resin layer (Item 132) and his surface protective layer (Item 131) contain a triazine-based ultraviolet absorber (paragraph 0030).
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131 Surface protective layer
132 Transparent thermoplastic resin layer
133 Transparent adhesive layer
134 Primer layer
135 Pattern layer
136 Base material layer
137 Primer layer
138 Adhesive layer
11 Substrate
As evidenced by J-Global, the commercial product TINUVIN 1600 is the chemical compound of general formula (I) of claim 1.
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art to use the same triazine compound in the surface protective layer as Tominaga uses in his transparent thermoplastic resin layer.
Tominaga does not disclose that his adhesive layer (Item 138) is moisture curing nor the moisture permeability of his film.
Kobayashi teaches a moisture-curable hot-melt adhesive (Abstract).
Given that Tominaga and Kobayashi are drawn to laminates with a metal layer adhered with a urethane adhesive, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the moisture-curable hot melt adhesive taught by Kobayashi as the adhesive in the decorative sheet of Tominaga. Since Tominaga and Kobayashi are both drawn to laminates with a metal layer adhered with a urethane adhesive, one of ordinary skill in the art would have a reasonable expectation of success in using the moisture-curable hot melt adhesive taught by Kobayashi as the adhesive in the decorative sheet of Tominaga. Further, Kobayashi teaches that his moisture-curable hot melt adhesive has excellent adhesion to metal adherends (paragraphs 0007 and 0032).
Tominaga in view of Kobayashi does not disclose the moisture permeability of his film.
Tsuji teaches a thermoplastic resin film with a moisture permeability of 80 g/day/m2 or less at a temperature of 40°C and relative humidity of 90% measured in accordance with JIS Z 208.
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected moisture permeability rates from the overlapping portion of the range taught by Tsuji because overlapping ranges have been held to be prima facie obviousness.
Given that Tominaga and Tsuji are drawn to polymeric films, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to target the moisture permeability as taught by Tsuji for the decorative film taught by Tominaga in view of Kobayashi. Since Tominaga and Tsuji are both drawn to polymeric films, one of ordinary skill in the art would have a reasonable expectation of success in targeting the moisture permeability as taught by Tsuji for the decorative sheet of Tominaga in view of Kobayashi. Further, Tsuji teaches that when the moisture permeability of film satisfies Tsuji’s requirement for moisture permeability, the influence of moisture on the substrate is reduced, which is preferable (paragraph 0153).
Claims 17-18 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over Tominaga and Orihara (JP 2019/155777 A, published 19 Sep. 2019, priority 14 Mar. 2018, hereinafter Tominaga) in view of Kobayashi et al. (JP 2018/016703 A, published 01 Feb. 2018, hereinafter Kobayashi) and further in view of Tsuji et al. (US Patent Application 2019/0055393 A1, published 21 Feb. 2019, priority 15 Feb. 2016, hereinafter Tsuji)and further in view of Lee and Schloemer (US Patent Application 2008/0032148 A1, published 07 Feb. 2008, hereinafter Lee) and evidence provided by J-Global (“Tinuvin 1600,” access 18 Aug. 2025, hereinafter J-Global).
Regarding claims 17-18, Tominaga teaches a decorative sheet comprising a base material (Item 136), a transparent thermoplastic resin layer (Item 132), and a surface protective layer (Item 131), which contains a triazine-based ultraviolet absorber (Abstract and Figure 1, reproduced above). Tominaga teaches the inclusion of an adhesive layer between the substrate and the decorative sheet (paragraph 0009). Tominaga teaches the surface protective layer is formed from ionizing radiation curable resin (paragraph 0017). Tominaga teaches his adhesive layer (Item 138) is a two-component curing urethane adhesive (paragraph 0037). Tominaga teaches his decorative sheet comprises a pattern layer (decorative layer) (Item 135) (paragraph 0032). Tominaga teaches his substrate layer (Item 11) is a metal-based material (paragraph 0033). Tominaga teaches use of the triazine-based ultraviolet absorber “TINUVIN 1600”, manufactured by BASF, in his transparent thermoplastic layer (Item 132) (paragraphs 0035-0036). Tominaga teaches that both his transparent thermoplastic resin layer (Item 132) and his surface protective layer (Item 131) contain a triazine-based ultraviolet absorber (paragraph 0030). Tominaga teaches his substrate layer (Item 136) is an ethylene-propylene copolymer (paragraph 0011).
As evidenced by J-Global, the commercial product TINUVIN 1600 is the chemical compound of general formula (I) of claim 1.
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art to use the same triazine compound in the surface protective layer as Tominaga uses in his transparent thermoplastic resin layer.
Tominaga does not disclose that his adhesive layer (Item 138) is moisture curing nor the moisture permeability of his film.
Kobayashi teaches a moisture-curable hot-melt adhesive (Abstract).
Given that Tominaga and Kobayashi are drawn to laminates with a metal layer adhered with a urethane adhesive, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the moisture-curable hot melt adhesive taught by Kobayashi as the adhesive in the decorative sheet of Tominaga. Since Tominaga and Kobayashi are both drawn to laminates with a metal layer adhered with a urethane adhesive, one of ordinary skill in the art would have a reasonable expectation of success in using the moisture-curable hot melt adhesive taught by Kobayashi as the adhesive in the decorative sheet of Tominaga. Further, Kobayashi teaches that his moisture-curable hot melt adhesive has excellent adhesion to metal adherends (paragraphs 0007 and 0032).
Tominaga in view of Kobayashi does not disclose the moisture permeability of his film.
Tsuji teaches a thermoplastic resin film with a moisture permeability of 80 g/day/m2 or less at a temperature of 40°C and relative humidity of 90% measured in accordance with JIS Z 208.
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected moisture permeability rates from the overlapping portion of the range taught by Tsuji because overlapping ranges have been held to be prima facie obviousness.
Given that Tominaga and Tsuji are drawn to polymeric films, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to target the moisture permeability as taught by Tsuji for the decorative film taught by Tominaga in view of Kobayashi. Since Tominaga and Tsuji are both drawn to polymeric films, one of ordinary skill in the art would have a reasonable expectation of success in targeting the moisture permeability as taught by Tsuji for the decorative sheet of Tominaga in view of Kobayashi. Further, Tsuji teaches that when the moisture permeability of film satisfies Tsuji’s requirement for moisture permeability, the influence of moisture on the substrate is reduced, which is preferable (paragraph 0153).
Tominaga teaches his substrate layer (Item 136) is an ethylene-propylene copolymer (paragraph 0011).
Tominaga in view of Kobayashi and further in view of Tsuji does not disclose his ethylene-propylene copolymer is a random copolymer with a crystallinity of 40-70%.
Lee teaches a propylene elastomer-containing adhesive blend comprising 25-85 wt.% random ethylene-propylene copolymers have crystallinity of 45-65 wt.% (Abstract and paragraphs 0006 and 0017-0019).
Given that Tominaga and Lee are drawn to ethylene-propylene copolymers in multilayer films, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the propylene elastomer-containing adhesive blend as taught by Lee as the substrate and the adhesive layer (Items 136 and 138) in the decorative film taught by Tominaga in view of Kobayashi and further in view of Tsuji. Since Tominaga and Tsuji are both drawn to ethylene-propylene copolymers in multilayer films, one of ordinary skill in the art would have a reasonable expectation of success in using the propylene elastomer-containing adhesive blend as taught by Lee as the substrate and the adhesive layer for the decorative sheet of Tominaga in view of Kobayashi in view of Tsuji. Further, Lee teaches his blend is suitable for use as tie-layer adhesives used in multi-layer film constructions (Abstract), and Lee teaches his blend can be utilized for bonding plastic to metal substrates (paragraph 0035). Additionally, Lee teaches that random propylene-ethylene copolymers generally have crystallinity contents of from 45 to 65% (paragraph 0019).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2 and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-10 of US Patent 11,958,994. The limitations of the two sets of claims are compared side-by-side in the table below.
Application 18/402,805
US Patent 11,958,994
1. A decorative material comprising an adherend and a decorative sheet, wherein further comprising an adhesive layer between the decorative sheet and the adherend, an adhesive to constitute the adhesive layer is a moisture curing adhesive, the decorative sheet having at least a substrate layer and a surface protective layer, and containing a hydroxyphenyltriazine compound represented by the following general formula (I) in at least any layer of the decorative sheet, and a moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS A0208: 1976, of 1.5 g/m2·24 h or more and 45 g/m2·24 h or less.
The decorative material according to claim 1, wherein the surface protective layer contains a hydroxyphenyltriazine compound represented by the general formula (I).
6. The decorative material according to claim 1, wherein the moisture curing adhesive is a urethane adhesive.
7. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 10 g/m2·24 h or more and 45 g/m2·24 h or less.
9. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 1.5 g/m2·24 h or more and 40 g/m2·24 h or less.
10. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 1.5 g/m2·24 h or more and 35 g/m2·24 h or less.
11. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 1.5 g/m2·24 h or more and 20 g/m2·24 h or less.
12. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 2.5 g/m2·24 h or more and 20 g/m2·24 h or less.
13. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 4.5 g/m2·24 h or more and 20 g/m2·24 h or less.
14. Claim The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 1.5 g/m2·24 h or more and 10 g/m2·24 h or less.
15. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 2.5 g/m2·24 h or more and 10 g/m2·24 h or less.
16. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208:1976, of 4.5 g/m2·24 h or more and 10 g/m2·24 h or less.
1. A decorative sheet having at least a substrate layer and a surface protective layer, and containing a hydroxyphenyltriazine compound represented by the following general formula (I) in at least any layer of the decorative sheet:wherein the decorative sheet having a moisture permeability, as measured according to a moisture permeability
test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208:1976, of 7 g/m2 24 h or more and 45 g/m2 24 h or less.
7. A decorative material having an adherend and a decorative
sheet of claim 1.
8. The decorative material according to claim 7, having an adhesive layer composed of a urethane adhesive, between the decorative sheet and the adherend.
9. The decorative material according to claim 8, wherein the urethane adhesive is a moisture-curable adhesive.
8. The decorative sheet according to claim 1, wherein the surface protective layer contains a cured product of a curable resin composition.
10. The decorative material according to claim 7, wherein the adherend is a metal member or a resin member.
In summary, the claims of US Patent 11,958,994 teach all the limitations of the claims of the current invention as listed in the table above. The only difference is that the present claims require moisture permeability of 1.5 g/m2 24 hr or more and 45 g/m2 24 hr (or other overlapping ranges for moisture permeability in claims 7 and 9-16), while US Patent 11,958,994 discloses moisture permeability of 7 g/m2 24 hr or more and 45 g/m2 24 hr or less. However, it is obvious to one of ordinary skill in the art that the moisture permeability of US Patent 11,958,994 overlaps that of the presently claimed values.
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected moisture permeability values from the overlapping portion of the range of the present claims because overlapping ranges have been held to be prima facie obviousness.
Claims 1-2 and 6-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-8 of US Patent 12,187,879. The limitations of the two sets of claims are compared side-by-side in the table below.
Application 18/402,805
US Patent 12,187,879
1. A decorative material comprising an adherend and a decorative sheet, wherein further comprising an adhesive layer between the decorative sheet and the adherend, an adhesive to constitute the adhesive layer is a moisture curing adhesive, the decorative sheet having at least a substrate layer and a surface protective layer, and containing a hydroxyphenyltriazine compound represented by the following general formula (I) in at least any layer of the decorative sheet, and a moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS A0208: 1976, of 1.5 g/m2·24 h or more and 45 g/m2·24 h or less.
The decorative material according to claim 1, wherein the surface protective layer contains a hydroxyphenyltriazine compound represented by the general formula (I).
6. The decorative material according to claim 1, wherein the moisture curing adhesive is a urethane adhesive.
7. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 10 g/m2·24 h or more and 45 g/m2·24 h or less.
9. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 1.5 g/m2·24 h or more and 40 g/m2·24 h or less.
10. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 1.5 g/m2·24 h or more and 35 g/m2·24 h or less.
11. The decorative material according to claim 1, wherein the moisture
permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 1.5 g/m2·24 h or more and 20 g/m2·24 h or less.
12. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 2.5 g/m2·24 h or more and 20 g/m2·24 h or less.
13. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 4.5 g/m2·24 h or more and 20 g/m2·24 h or less.
14. Claim The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method
(Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 1.5 g/m2·24 h or more and 10 g/m2·24 h or less.
15. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 2.5 g/m2·24 h or more and 10 g/m2·24 h or less.
16. The decorative material according to claim 1, wherein the moisture permeability of the decorative sheet, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208:1976, of 4.5 g/m2·24 h or more and 10 g/m2·24 h or less.
1. A decorative sheet having at least a substrate layer and a surface protective layer, wherein: in the surface protective layer, the content of all the UV absorbents relative to 100 parts by mass of a resin therein is 10 parts by mass or less, and the surface protective layer satisfies the following [1] or [2]:
[1] the layer contains a hydroxyphenyltriazine compound represented by the following general formula (I) and a hydroxyphenyltriazine compound represented by the following general formula (II) as UV absorbents, and the content of the hydroxyphenyltriazine compound represented by the following general formula (II) is 50% by mass or less relative to 100% by mass of the total of the content of the hydroxyphenyltriazine compound represented by the following general formula (I) and the content of the hydroxyphenyltriazine compound represented by the following general formula (II); [2] the layer contains a hydroxyphenyltriazine compound represented by the following general formula (I) and a hydroxyphenyltriazine compound represented by the following general formula (III) as UV absorbents: and wherein the decorative sheet has a moisture permeability, as measured according to a moisture permeability test method (Cup Method) for moisture-resistant wrapping materials prescribed in JIS Z0208: 1976, of 0.75 g/m2·24 h or more and 45 g/m2 24 h or less.
5. A decorative material having an adherend and a decorative sheet of claim 1.
The decorative material according to claim 5, having an adhesive layer composed of a urethane adhesive, between the decorative sheet and the adherend.
7. The decorative material according to claim 6, wherein the urethane adhesive is a moisture-curable adhesive.
8. The decorative sheet according to claim 1, wherein the surface protective layer contains a cured product of a curable resin composition.
8. The decorative material according to claim 5, wherein the adherend is a metal member or a resin member.
In summary, the claims of US Patent 12,187,879 teach all the limitations of the claims of the current invention as listed in the table above. There are only two differences between the sets of claims.
First, the present claims require moisture permeability of 1.5 g/m2 24 hr or more and 45 g/m2 24 hr (or other overlapping ranges for moisture permeability in claims 7 and 9-16), while US Patent 11,958,994 discloses moisture permeability of 7 g/m2 24 hr or more and 45 g/m2 24 hr or less. However, it is obvious to one of ordinary skill in the art that the moisture permeability of US Patent 11,958,994 overlaps that of the presently claimed values.
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected moisture permeability values from the overlapping portion of the range of the present claims because overlapping ranges have been held to be prima facie obviousness.
Second, the claims of US Patent 12,187,879 requires additional UV absorber and discloses that the surface protective layer comprises 100 parts by mass of a resin and 10 parts by mass or less of UV absorbent. However, in light of the open language of the present claims “containing”, nothing excludes the presence of the additional UV absorbent or resin disclosed by US Patent 12,187,879. Further, it would have been obvious to one of ordinary skill in the art that the specific surface protective layer disclosed by US Patent 12,187,879 would fall within the broad surface protective layer presently claimed.
Response to Arguments
Applicant's arguments filed 15 Dec. 2025 have been fully considered, but they were not persuasive. Applicant’s amendments have necessitated new grounds of rejection, which are presented above.
Applicant amended claim 1 and added claims 9-18.
Applicant argues that their data shows the critical moisture permeability range of 1.5 to 45 g/m2-24 hr.
However, the data is not commensurate with the scope of the current claims. The decorative material of claim 1 may contain layers of any composition as long as the adhesive layer is moisture curing and the triazine compound exists in any of the layers, whereas the data comprises compositions with two different resins in the surface protective layer, a substrate that is either polypropylene or a propylene-ethylene copolymer, and single polymer systems for each of the other layers, besides the amount and type of UV absorber. Further, there are no limitations in the current claims regarding the thicknesses of any of the layers, whereas the data covers laminates comprising layers of specific thicknesses.
Applicant argues that the prior art fails to teach a laminate with a moisture permeability range of 1.5 to 45 g/m2-24 hr.
However, as presented above, Tsuji teaches a thermoplastic resin film with a moisture permeability of 80 g/day/m2 or less at a temperature of 40°C and relative humidity of 90% measured in accordance with JIS Z 208, which overlaps with the claimed range for moisture permeability.
Applicant argues that, given the differences in moisture permeability ranges for the claims of the current invention and the ranges in the issued patents, the double patenting rejections have been overcome.
However, as presented above, the moisture permeability ranges taught by the issued patents overlap the moisture permeability range in the claims of the current invention; therefore, the double patenting rejections have not been overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. DeNicola et al. (US Patent 5,414,027, published 09 May 1995) teaches a high melt strength propylene polymer comprising a random ethylene-propylene copolymer with a crystallinity of 20 to 60 wt.%. Gahleitner et al. (US Patent Application 2010/0093939 A1, published 15 Apr. 2010) teaches an improved transparent polypropylene composition comprising a random propylene-ethylene copolymer with a crystallinity of 20 to 55%.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET. 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, Callie 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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/JOHN VINCENT LAWLER/
Primary Examiner, Art Unit 1787
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