DETAILED ACTION
This is an Office action based on application number 18/530,528 filed 6 December 2023, which is a divisional of application number 17/932,804, which is a continuation of application number 14/569,946, which claims priority to US Provisional Application No. 61/921,600 filed 30 December 2013. Claims 1-2 and 4-8 are pending. Claims 3 and 9 are canceled.
Amendments to the claims, filed 2 December 2025, have been entered into the above-identified application.
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 .
Withdrawn Rejections
The 35 U.S.C. §112(b) rejection, made of record in the previous Office action, is withdrawn due to Applicant’s amendment.
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 (i.e., changing from AIA to pre-AIA ) 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries 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.
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.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Chacko et al. (US Patent Application Publication No. US 2012/00088054 A1) (Chacko) in view of Bacon, Jr. et al. (US 2011/0228391 A1) (Bacon 391).
Regarding instant claim 1:
Chacko discloses an advertising or informational graphic comprising at least a printable substrate having promotional indicia provided thereon, and a transparent film provided on the printable substrate, wherein the transparent film comprising a top layer that comprises a polyurethane or polyurethane-acrylic blend (Claim 12).
Chacko discloses a method wherein the transparent film is applied over another substrate that has been printed or imaged previously (paragraph [0045]).
Chacko further discloses that the film provides suitable outdoor durability (paragraph [0025]), which is construed to mee the claimed function of protecting the advertising substrate from exposure to the outdoor environment.
Chacko further teaches that an object of the invention is to produce a film and film laminate possessing suitable conformability, tensile elongation, and tensile strength (paragraph [0025]).
Chacko further teaches that a non-conformable film, i.e., a film which does not have sufficient elongation or flexibility, may not follow the contour of the subject or surface to which it is applied; conversely, Chacko teaches that too much elongation may deform the film and potentially cause distortion of the printed indicia. Chacko also teaches that films with to low tensile strength may cause the film to break easily when stretched such as when the film is applied to a non-planar surface (paragraph [0004]).
Chacko does not disclose the claimed polyurethane mixture.
However, Bacon 391 discloses an overlay structure bearing a graphic that is buried with respect to the front surface of the overlay (Claim 3).
Bacon 391 discloses that front a barrier layer composes the front surface of the overlay (Claim 13).
Bacon 391 further discloses that het barrier layer provides a flexible, printable, and stain resistant layer to the overlay and ultimate to whatever substrate to which the overlay is coupled. The barrier layer is formed of a variety of thermoset or thermoresistive materials, which may be rigid or flexible to meet or exceed the in-use requirements of the intended final product that comprises the overlay coupled to a substrate. Examples of the suitable materials for the barrier layer include polyurethanes, polyacrylates, or a combination thereof. Particularly, the barrier layer can include the combination of a hard component and a soft component (paragraph [0062]).
Bacon 391 further discloses that the hard component can include at least one of a thermoplastic polyurethane, acrylic polymer, and a mixture thereof and can have a percent elongation up to about 150%. The soft component can include a polyurethane having a percent elongation of at least about 200% (paragraph [0063]).
It is noted that the claimed range of an “ultimate elongation of more than 400%” recited by the claim lies within the range disclosed by Bacon 391; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
While Bacon 391 does not disclose the relative amounts hard and soft components, since the instant specification is silent to unexpected results, the specific amounts of hard component and soft components are not considered to confer patentability to the claims. As rigidity and flexibility desired to meet or exceed the in-use requirements of the overlay and the substrate to which the overlay is applied are variables that can be modified, among others, by adjusting the relative amounts of hard and soft components, the precise amounts 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 hard and soft components in Bacon 391 to obtain the desired rigidity and/or 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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the barrier layer of Bacon 391 as the top layer of the transparent film of Chacko. The motivation for doing so would have been that the barrier film meets the composition desired by Chacko (i.e., one comprising a polyurethane or polyurethane-acrylic blend) that provides flexibility/rigidity, printability, and stain resistance to a substrate that it overlays.
Both Chacko and Bacon 391 are silent with regard to an amount of polyvinyl chloride based polymer present in the respective transparent film and barrier film; therefore, the prior art meets the limitation o a transparent protective film being free or substantially free of polyvinyl chloride based polymer.
Therefore, it would have been obvious to combine Bacon 391 with Chacko to obtain the invention as specified by the instant claim.
Regarding instant claim 2:
Chacko discloses that the transparent film comprises a polyurethane or polyurethane-acrylic blend (Claim 12).
Similarly, Examples of the suitable materials for the barrier layer include polyurethanes, polyacrylates, or a combination thereof (paragraph [0062]).
Regarding instant claim 4:
Chacko further discloses that the film includes an adhesive layer meant to contact a printed indicia layer (paragraph [0049]).
Regarding instant claim 5:
Chacko further discloses that the top layer is created from waterborne dispersions in order to be environmentally friendly (paragraph [0032]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to form the polyurethane-based barrier layer of Bacon 391 from a waterborne dispersion as taught by Chacko. The motivation for doing so would have been that waterborne dispersions are environmentally friendly.
Regarding instant claim 6:
Chacko further discloses that the polyurethane layer has a thickness from about 0.3 mils to about 2 mils (paragraph [0027]).
Regarding instant claim 7:
Chacko further discloses that the coating films are subjected rivet testing wherein test samples are applied over painted aluminum panels having Brazier rivet heads uniformly distributed over the aluminum panel, and the test films are conformed around each rivet. The sample is then dwelled for 24 hours at ambient condition and a diameter of a lifted portion around the film is measured and recorded. The sample is then subjected to 1000 hours underneath a UVB bulb, and then the diameter of the film lifted around the rivets is measured again. Chacko stipulates that when the change in diameter is less than 0.0625 inch (1.58 mm), the sample passes said rivet test (paragraph [0077]).
Chacko discloses that conformability is preferable for the coating film because it allows the film to follow the contours of the subject or surface to which it is applied, thereby avoiding bubbles or gaps between the surface and the film (paragraph [0004]). One of ordinary skill in the art would readily conclude that by passing the rivet test (i.e., conformation to the rivet heads over a period of time without a significant change in size), a coating film exhibits the desired conformation.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to select a coating composition within the scope of Bacon 391 that passes the rivet test of Chacko. The motivation for doing so would have been that a coating composition that passes the rivet test exhibits desirable conformation.
Regarding instant claim 8:
Chacko further discloses that the composition is subjected to a shrinkage test wherein a sample is coated with a pressure sensitive adhesive attached to a clean aluminum panel, and dwelled at ambient condition for 24 hours. A 5 inch cross hatch in both machine direction (MD) and cross-machine direction (CD) are made on a film, the film is aged at 160° for 48 hours, and the dimension change in the MD and CD are measured. The sample is deemed to pass said shrinkage test if the shrinkage is less than 0.33% in both directions (paragraph [0079]).
Chacko disclose that conformability is preferable for the coating film because it allows the film to follow the contours of the subject or surface to which it is applied, thereby avoiding bubbles or gaps between the surface and the film (paragraph [0004]). One of ordinary skill in the art would readily conclude that by passing the shrinkage test (i.e., a minimal change in shape when applied over an aluminum panel over a period of time), a coating film exhibits the desired conformation.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to select a coating composition within the scope of Bacon 391 that passes the shrinkage test of Chacko. The motivation for doing so would have been that a coating composition that passes the rivet test exhibits desirable conformation.
Answers to Applicant’s Arguments
Applicant’s arguments are fully considered but are unpersuasive because they are not commensurate in scope with the prior art rejections of record.
Applicant appears to traverse the reliance of the US Patent No. 6,723,433 B2 to Bacon by arguing that it teaches away from the claimed ranges. However the prior art rejections of record rely upon the disclosure of Chacko in view of US Patent Application Publication No. US 2011/0228391 A1 also to Bacon. Although similar, the Bacon 391 reference does not include those disclosures that Applicant contends teach away from the claimed ranges.
Conclusion
THIS ACTION IS MADE FINAL. 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 Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 03/03/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788