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.
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.
Claims 1-8, 11 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 111391462) in view of Beacham et al. (US 4,207,225).
Regarding claim 1, Zhang teaches a flexible transparent composite material including an inner protective layer, a barrier layer and an outer protective layer (“a substantially transparent multilayer film”) (Paragraph [0009]). The barrier layer is formed from PET and the inner and outer layers may be formed from PVC which are flame retardant (“comprising a polyester (PET) layer sandwiched between two flame-retardant polyvinyl chloride (PVC) layers”) (Paragraphs [0009]; [0031]). The protective layers may be provided with flame-retardant substances in order to improve the flame-retardance and maintain high transparency (Paragraph [0009]).
Additionally, one of ordinary skill in the art would recognize that the limitation of “such that said film has a resistance to fire, a resistance to ultraviolet aging, a low heat shrinkage, and a low elongation under load” fails to set any ranges for these properties and any film would have some value for each of the properties. Therefore, the composites of Zhang would teach a resistance to fire, a resistance to ultraviolet aging, a low heat shrinkage, and a low elongation under load.
Zhang is silent with respect to the protective layers comprising 25% to 45% of a plasticizer wherein the plasticizer comprises phosphate.
Beacham teaches a composition of a mixture of a plasticizer A, present in a weight of 50 to 80 parts, and a plasticizer B, present in a weight of 20 to 50 parts by weight, and PVC wherein the mixture is present in an amount ranging from 30 to 150 parts by weight based on 100 parts by weight of PVC (Col. 3, Lines 9-21). The composition is heat stable and may be extruded without decomposition to give products characterized by excellent low temperature flexibility and flame resistance (Col. 3, Lines 9-21). The plasticizer A may be an octyl diphenyl phosphate or a triphenyl phosphate (Col. 3, Lines 22-40). The plasticizer B may be a tris(alkoxyalkyl) phosphate (Col. 3, Lines 41-50).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the PVC protective layers of Zhang with the compositions of Beacham which provide a composition which is heat stable and may be extruded without decomposition to give products characterized by excellent low temperature flexibility and flame resistance. The compositions include a mixture of a plasticizer A, present in a weight of 50 to 80 parts, and a plasticizer B, present in a weight of 20 to 50 parts by weight, and PVC wherein the mixture is present in an amount ranging from 30 to 150 parts by weight based on 100 parts by weight of PVC. The resulting weight of the plasticizer A, being octyl diphenyl phosphate or a triphenyl phosphate, 12% to 48% by weight which overlaps with the claimed range.
Zhang is silent with respect to the level of phosphorus being between 0.3 and 1.0% by weight with respect to the total weight of the flexible film. However, one of ordinary skill in the art would recognize that this property would be expected or, at the very least, have an overlapping range for the phosphorus level should the thicknesses of the layer and the content of a plasticizer containing the phosphate. MPEP 2112.01: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
As discussed above, the PVC layers include an overlapping range which includes 12% to 48% by weight of either octyl diphenyl phosphate or a triphenyl phosphate. Furthermore, the preferred thicknesses of the claimed invention are 5 and 100 microns for the PET layer and 100 to 400 microns for the PVC layers (Instant Specification, PGPUB, Paragraphs [0014]-[0015]). Zhang further teaches the thicknesses of the barrier/PET layer being 10 to 1000 microns, the inner protective layer being 50 to 1500 microns, the outer protective being 80 to 2000 microns (Paragraph [0028]).
Therefore, one of ordinary skill in the art would recognize that the use of identical materials in a significantly overlapping range wherein each of the layers have significantly identical thicknesses, would also result in phosphate levels which, at the very least, overlap with the claimed range of 0.3 to 1.0 weight percent based on the total weight of the films.
Regarding claim 2, Zhang teaches the composite materials as discussed above with respect to claim 1. As discussed above, the barrier layer is formed from PET.
Regarding claim 3, Zhang teaches the composite materials as discussed above with respect to claim 1. As illustrated in figure 1, the composite materials further include resin films between the barrier layer and the inner and outer protective layers (“functionalisation layer”) (Paragraph [0036]).
Regarding claim 4, Zhang teaches the composite layers as discussed above with respect to claim 1. As discussed above, the plasticizer A includes a phenyl group (“at least one aromatic cycle”).
Regarding claims 5 and 6, Zhang teaches the composite layers as discussed above with respect to claim 1. As discussed above, the thicknesses of the barrier/PET layer being 10 to 1000 microns, the inner protective layer being 50 to 1500 microns, the outer protective being 80 to 2000 microns (Paragraph [0028]).
Regarding claim 7, Zhang teaches the composite layers as discussed above with respect to claim 1. As discussed above, the thicknesses of the barrier/PET layer being 10 to 1000 microns, the inner protective layer being 50 to 1500 microns, the outer protective being 80 to 2000 microns (Paragraph [0028]). The resulting total thickness is from 140 to 4500 microns.
Regarding claim 8, Zhang teaches the composite layers as discussed above with respect to claim 1. As discussed above, the plasticizer A may be octyl diphenyl phosphate or a triphenyl phosphate.
Regarding claim 11, Zhang teaches the composite materials as discussed above with respect to claim 1. The inner and outer protective layers may be the same (Paragraph [0028]).
Regarding claim 16, Zhang teaches the composite materials as discussed above with respect to claim 1. As discussed above, the materials of Zhang/Beacham and those of the instantly claimed invention are identical and would have identical properties, including wherein the resistance to ultraviolet aging is such that the change of color of the film, measured by the standard ASTM G154-4 (QUV) at a duration equal to 875 hours according to the grey scale (standard ISO105-A03), is equal to 5, 4-5, or 4.
Regarding claim 17, Zhang teaches the composite materials as discussed above with respect to claim 1. As discussed above, the materials of Zhang/Beacham and those of the instantly claimed invention are identical and would have identical properties, including wherein the low heat shrinkage is between 0 and -1% in a cross-machine direction and in the machine direction, measured under the conditions of 80°C for 10 minutes.
Regarding claim 18, Zhang teaches the composite materials as discussed above with respect to claim 1. As discussed above, the materials of Zhang/Beacham and those of the instantly claimed invention are identical and would have identical properties, including wherein the low elongation under load is between 10% and 20% under load and between 5% and 10% residually, measured by the standard EN 15977:2011.
Regarding claim 19, Zhang teaches the composite materials as discussed above with respect to claim 1. As discussed above, the materials of Zhang/Beacham and those of the instantly claimed invention are identical and would have identical properties, including wherein the normal visible transmission and the hemispheric normal visible transmission are each greater than 80%.
Regarding claim 20, Zhang teaches the composite materials as discussed above with respect to claim 1. As discussed above, the materials of Zhang/Beacham and those of the instantly claimed invention are identical and would have identical properties, including wherein the resistance to fire is such that the film meets the standard EN ISO 11925-2 with a flame height less than 150 mm, and the result of the SBI test according to the standard ISO 13501-1 is B-s2-d0.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 111391462) in view of Beacham et al. (US 4,207,225) as applied to claim 1 above, and further in view of Bouchard et al. (WO 2019/233592).
Regarding claims 9 and 10, Zhang teaches the composite materials as discussed above with respect to claim 1. Beacham further teaches the plasticizer B being an aliphatic phosphate (Col. 3, Lines 41-43).
Zhang and Beacham are silent with respect to the aliphatic phosphate comprising chlorine and being one of those which are required by the claim.
Bouchard teaches a PVC-based coating which is formed using a primary and secondary plasticizer which impart flame resistance to the PVC compositions (Pg. 3, Lines 10-15). The primary plasticizer is preferably tris(2-chloro-isopropyl) phosphate in combination with a phenyl based phosphate providing flame resistance and the secondary plasticizer is preferably diisononylphthalate in a sufficient amount to control the viscosity of the composition (Pg. 2, Lines 8-12; Pg. 3, Line 28-Pg. 4, Line 11).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the PVC protective layers of Zhang with the plasticizers of Beacham such that the aliphatic plasticizer is preferably tris(2-chloro-isopropyl) phosphate in order to improve flame retardancy and further includes diisononylphthalate in a sufficient amount to control the viscosity of the composition as taught by Bouchard.
Response to Arguments
Applicant’s arguments, see pages 5-6, filed 06/17/2026, with respect to the 35 U.S.C. 112 rejections of claims 2 and 11 have been fully considered and are persuasive. The rejections of 02/23/2026 have been withdrawn.
Applicant's arguments filed 06/17/2026 have been fully considered but they are not persuasive.
On pages 6-10, applicant argues that the combination of Zhang and Beacham fail to teach or render each of the limitations of claim 1 as obvious. Specifically, the combination fails to teach the limitation of the level of phosphorus being between 0.3 and 1.0 wt% by weight with respect to the total weight of the flexible film. The rejection fails to provide any calculation or technical reasoning as to why the films of Zhang would have this claimed level of phosphorus. Additionally, Beacham is not considered analogous art such that the claimed invention is directed to a flexible film and Beacham is directed to plasticizing compositions. Additionally, Beacham fails to address any of the problems identified by the applicant.
The examiner is unpersuaded such that the combination of Zhang and Beacham ultimately teach an identical structure to applicant’s claimed flexible films. This includes identical materials for each of the claimed layers. Specifically, Zhang teaches a PET inner layer sandwiched between two outer PVC layers (Paragraphs [0009]; [0031]). The PVC layers are further taught to include flame retardant substances (Paragraph [0009]). Beacham further teaches the content of the plasticizers containing phosphate in the range of 12% to 48%, significantly overlapping with the claimed range of 25% to 45% (See Rejection Above). Lastly, the plasticizers containing phosphate appear to preferably be octyl diphenyl phosphate or a triphenyl phosphate, both of which are taught by Beacham. Therefore, the examiner contends that while the combination is silent with respect to the phosphorus levels being between 0.3% and 1.0%, one of ordinary skill in the art would recognize that the substantially identical components, most specifically the content of octyl diphenyl phosphate or a triphenyl phosphate, would result in a substantially identical phosphorus content as well. Furthermore, applicant has failed to argue as to why these identical structures would not have identical phosphorus levels as well.
Concerning applicant’s arguments regarding Beacham not being analogous art, the examiner notes that the combination is still proper such that Zhang is considered analogous art and teaches protective PVC layers. Beacham is relied upon in the rejection in order to improve the protection resistance of the outer PVC layers by using the specific plasticizers in order to improve flame resistance (Col. 3, Lines 9-21). Therefore, while Beacham might not teach a flexible film, the reference does teach a PVC composition which may be used to improve the films of Zhang.
Ultimately, the examiner contends that the combination of Zhang and Beacham is still proper and teaches each of the limitations of claim 1. The current rejection is made FINAL.
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 DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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