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 .
Election/Restrictions
Applicant’s election of group I in the reply filed on 11/14/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups II-III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/14/2025.
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.
Claims 6-8 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.
Regarding claims 6-8, it is not clear what is meant by “a certain laminate”. Also, it is not clear what type of laminate is defined as a certain laminate.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (US 2015/0210799) in view of Saito et al. (JP H09-151233).
Regarding claims 1-2, Tanaka discloses a laminate (0098) comprising layer X as an intermediate layer between two layers of Y, i.e. one Y layer corresponds to base layer, layer X corresponds to second layer on the base layer and second Y layer corresponds to first layer positioned on the second layer, (0106) wherein the second layer comprises a thermoplastic polyurethane composition (0099) and the first layer comprises polyurethane other than the thermoplastic polyurethane of X layer (0109). Tanaka discloses the thermoplastic polyurethane comprises organic diisocyanate with an amount of 27 mass % or less (0020, 0043), chain extender in an amount of 30 mass % or less (0038-0039, 0043), and polymer polyol such as polyester polyol and/or polyether polyol in an amount of 39 mass % or more (0021-0022, 0025, 0043, 0048, 0049, 0061-0063, table 1) (calculated). Given that the thermoplastic polyurethane of Tanaka discloses the same composition as disclosed in the present specification, it is clear that the thermoplastic polyurethane of Tanaka would inherently have the same properties as claimed in present claims.
Takada does not disclose that the first layer comprises polycarbonate based polyurethane.
Saito discloses polycarbonate based polyurethane composition for films or sheets (0009, 0027) having excellent physical property, flexibility and low temperature characteristics (0009, 0012).
It would be obvious to one of ordinary skill in the art to use the specific polycarbonate based polyurethane composition of Saito in the polyurethane based first layer of Tanaka to obtain excellent physical property, flexibility and low temperature characteristics.
Regarding claim 3, Tanaka in view of Saito discloses a laminate of claim 1 wherein the second layer comprises phosphorus based flame retardant (0082, 0090). Tanaka does not disclose any specific amount of the flame retardant.
Since the instant specification is silent to unexpected results, the specific amount of phosphorus based flame retardant is not considered to confer patentability to the claims. As the flame retardancy is a variable that can be modified, among others, by adjusting the amount of phosphorus based flame retardant, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of phosphorus based flame retardant in the laminate including the second layer of Tanaka in view of Saito to obtain the desired flame retardancy (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claims 4-5 and 10, Tanaka in view of Saito discloses a laminate of claim 1 but fails to disclose specific thickness for each layer. Since the instant specification is silent to unexpected results, the specific thickness of each layer is not considered to confer patentability to the claims. As the flexibility is a variable that can be modified, among others, by adjusting the thickness of each layer, the precise thickness would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed thickness for each layer cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the thickness of each layer in the laminate of Tanaka in view of Saito to obtain the desired flexibility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claims 6-9, Tanaka in view of Saito discloses a laminate of claim 1, wherein Saito discloses the polycarbonate based polyurethane comprises polycarbonate polyol (0020), polyisocyanate component (0021) and chain extender (0022). Given that Saito discloses the same polycarbonate based polyurethane composition as disclosed in the present specification, it is clear that the polycarbonate based polyurethane of Tanaka in view of Saito would have the same properties as claimed in present claims.
Regarding claim 11, Tanaka in view of Saito discloses a laminate of claim 1 wherein Tanaka discloses adhesive layer between the base layer and the second layer (0116).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787