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 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 and 3-11 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 claim 1, 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).
Response to Arguments
Applicant's arguments filed 05/06/2026 have been fully considered but they are not persuasive.
Applicant points to table 1 in the specification and argues that even if the composition of the TPU is similar, the desired effects cannot be achieved when the MFI and elongation at break fall outside the specified ranges. However, it is noted that the data is not persuasive given that the data is not commensurate in scope with the scope of the present claim. The examples disclose specific compositions while claim broadly recites any TPU composition with any thickness. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range.
Applicant argues that since Tanaka does not even measure MFI or elongation at break, there is no basis whatsoever for concluding that the TPU of Tanaka satisfies ranges of the present invention. However, 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) and 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. The Patent and Trademark Office can require Applicant to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on Applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 U.S.P.Q. 431 (CCPA 1977).
Applicant argues that Saito relates to a method for producing a PC-TPU that exhibits excellent low temperature properties and flexibility with no tendency towards crystallization, using a polycarbonate polyol comprising specific diol units while in the present invention, the first layer goes beyond being simply a flexible material, it serves as a functional skin layer that not only realizes a luxurious texture similar to artificial leather. However, note that while Saito does not disclose all the features of the present claimed invention, Saito is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely polycarbonate based polyurethane composition for films or sheets having excellent physical property, flexibility and low temperature characteristics, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that Tanaka relates to a general purpose TPU material and contains no disclosure whatsoever regarding a vehicle crash pad or airbag deployment. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a vehicle crash pad or airbag deployment) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that the proposed combination of Tanaka in view of Saito does not work. However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicant argues that Tanaka is directed to a TPU composition for general purpose molded articles with no mention of vehicle crash pads, airbag deployment or vacuum forming. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., vehicle crash pads, airbag deployment or vacuum forming) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that if a person of ordinary skill in the art had somehow identified both references as relevant, there would have been no reasonable expectation of success. According to MPEP 2143.02, “A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art.” Also, MPEP 2143.02, II, states “Obviousness does not require absolute predictability, however, at least some degree of predictability is required.” Applicant’s argument regarding whether one of ordinary skill in the art would be “reasonably assured” is interpreted by the Examiner as "predictability". In the present case, the Examiner believes some degree of predictability is present, i.e., one of ordinary skill in the art would have reason to believe using the polycarbonate based polyurethane composition of Saito in the PU based first polymer of Tanaka to obtain excellent physical property, flexibility and low temperature characteristics. One of ordinary skill in the art would expect to use PC based TPU as disclosed by Saito (0009, 0012). The difference between Takeda reference and Saito reference would not be sufficient to reduce the level of predictability below that required for obviousness by one of ordinary skill in the art.
Applicant argues that the rejection is based on impermissible hindsight reconstruction. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The rejection is not based on hindsight but rather on motivation to combine found in the references themselves. Further, it is the examiner's position that the combination is not based on hindsight but rather on motivation to combine found in (reference name) itself, namely, polycarbonate based polyurethane composition for films or sheets having excellent physical property, flexibility and low temperature characteristics.
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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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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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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