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 .
Specification
The disclosure is objected to because of the following informalities: the CROSS-REFERENCE TO RELATED APPLICATIONS section of the Specification does not provide parent application Serial No. 17/327,413 in its current status as an issued patent, i.e., as U.S. Patent No. 12,163,277 issuing on December 10, 2024. Appropriate correction is required.
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.
Claims 1, 3-5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Korean Patent Application Publication No. 2017-0054136 A to Park et al. (an English translation obtained from the PE2E database is referenced herein) (“Park”) in view of German Patent Application Publication No. 102016007281 A1 to Schaefer et al. (an English translation obtained from the PE2E database is referenced herein) (“Schaefer”) and U.S. Patent Application Publication No. 2015/0354133 to Yan et al. (“Yan”).
With regard to Claims 1, 3-5, 7, and 8, Park discloses a process of producing an artificial leather that is substantially free of volatile organic compounds, i.e. solvents, by forming a skin layer comprising a polyurethane composition onto a release paper, heating and curing the skin layer, applying a second polyurethane resin layer onto the cured skin layer to provide a binder layer, then removing the release paper from the multilayered resin composite. See, e.g., Abstract, entire document. Park discloses that the using a solventless polyurethane eliminates the need for volatile organic compounds. Page 2. Park discloses that the skin layer can be cured at a temperature of 150 degrees C. Page 5. Park teaches that an additional layer in the form of a fibrous monolayer can be provided to the binder layer prior to it being cured. Page 6. Park does not disclose the thickness of the skin layer to be 0.1 to 0.4 mm or the thickness of the adhesive layer to be 0.01 to 0.15 mm. Schaefer is also related to a method of producing a multilayer structure for artificial leather comprising a fibrous substrate, an adhesive comprising a polyurethane dispersion, and top layer. See, e.g., Abstract, entire document. Schaefer teaches that an appropriate thickness dimension for thinner adhesive layers is up to about 0.06 mm and an appropriate thickness dimension for the resin polyurethane skin layer is up to about 0.11 mm. Page 3. Moreover, with specific respect to the pre-skin layer that is in addition to the skin layer in Claim 1, Schaefer discloses that aqueous polyurethane dispersion layers can be provided optionally across several layers to provide distinct thickness values. Page 3. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the skin layer of Park with a thickness in the range of 0.1 to 0.4 mm and the adhesive layer of Park with a thickness in the range of 0.01 to 0.15 mm in order to provide suitable thickness dimensions for those materials in the use of an artificial adhesive, as shown to be known by Schaefer. Furthermore, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an additional pre-skin layer with a thickness in the range of 0.05 to 0.15 mm to the composite of Park because Schaefer teaches that the thickness of the material can be optimized using multiple skin layers. “[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 (CCPA 1955). Park does not disclose a drying step prior to curing the adhesive layer. Yan is also related to multilayer composite materials comprising polyurethane dispersions useful in the manufacture of artificial leather. See, e.g., Abstract, entire document. Yan teaches that drying steps at a temperature as low as 90 degrees C. are useful in the manufacture of artificial leather to remove water from layers containing water to avoid contamination from water vapor during bonding or curing stages. Paragraphs [0082] and [0083]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to dry the adhesive polyurethane layer disclosed by Park at a temperature in the range of 60 to 90 degrees C. prior to curing in order to remove water from the composite to avoid water vapor in the curing and bonding steps, as shown to be known by Yan.
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Schaefer and Yan, as applied to Claims 1 and 5 above, and further in view of Korean Patent Application Publication No. 2018-0103307 A to Kang et al. (an English translation obtained from the PE2E database is referenced herein) (“Kang”).
With regard to Claims 2 and 6, while Park teaches avoidance of volatile organic compounds, Park does not disclose applying a lacquer layer made from polyurethane or polyacrylate dispersion. Kang is also related to artificial leather material comprising a polyurethane skin layer. See, e.g., Abstract, entire document. Kang discloses that after a polyurethane skin layer is peeled from release paper, it can be coated with a wetting composition comprising a polyurethane resin to enhance the gloss of the surface. Page 7. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to apply a lacquer layer made from polyurethane or polyacrylate dispersion to the polyurethane skin layer disclosed by Park in order to provide enhanced surface characteristics, such as improved gloss, as shown to be well known in the art of artificial leather by Kang.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-22 of U.S. Patent No. 12,163,277 (“the ‘277 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘177 Patent also claims a method of producing a composite structure by coating a polyurethane dispersion free of volatile organic compounds on a carrier at a similar thickness, coating an adhesive composition and drying and curing the adhesive composition at a similar temperature range, adding a support layer in the form of a fabric on the adhesive, then removing the carrier layer.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789