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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/02/2026 has been considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claim requires “and wherein the patterned ink is printed on a polyvinyl chloride (PVC) film material or on a clear graphic film comprising polyethylene terephthalate (PET) film material.” However, the originally filed specification fails to teach an ink layer provided on a PVC film and only appears to describe an ink layer on a PET film (Paragraphs [0008]-[0011]; [0059]). Therefore, the claim is rejected for failing to comply with the written description requirement.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires the tie layer to be formed from a clear maleic anhydride grafter ethylene methyl acrylate encapsulant material. Claim 4 depends from claim 1 and requires the tie layer to be comprise at least one of grafted homo or co-polymers of ethylene, propylene, or butene, each optionally mixed with maleic anhydride, maleic acid, or glycidyl methacrylate, which is already required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires the tie layer to be formed from a clear maleic anhydride grafter ethylene methyl acrylate encapsulant material. Claim 5 depends from claim 1 and requires the tie layer to be comprise at least one of olefinic, non-olefinic, thermoplastic adhesive, and combinations thereof, which is already required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires the tie layer to be formed from a clear maleic anhydride grafter ethylene methyl acrylate encapsulant material. Claim 6 depends from claim 1 and requires the tie layer to be comprise i)homo or copolymers or terpolymers of olefinic polymers grafted with maleic anhydride or glycidyl acrylate or methacrylate or amine groups or (ii)polyurethanes or polyamides or epoxy resins, which is already required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 27 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires the tie layer to be formed from a clear maleic anhydride grafter ethylene methyl acrylate encapsulant material. Claim 27 depends from claim 1 and requires the tie layer to be manufactured using at least one of modified olefin, polyester, polyamide or thermoplastic urethane (TPU), which is already required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-9 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Shih et al. (US 2014/0242316) in view of Sutton et al. (US 9,855,731), Brickner (US 2017/0044778), Maier et al. (US 2017/0217121) and Su (US 7,695,822).
Regarding claim 1, Shih teaches film laminates including a print film (“a functional layer”), an overlaminate layer (“an optics enabled surface layer”) and an adhesive layer between the two (“a tie layer”) (Paragraphs [0027]-[0029]). The print film may be formed from a print layer formed from an ink (“an ink layer”), a support layer (“a print carrier layer”) and an adhesive layer (“a graphic effect layer”) (Paragraph [0031]; [0042]). The print layer may be an ink provided on a print film formed from a PVC (“the patterned ink layer is printed on a PVC film material or on a clear graphic film comprising PET film material”) (Paragraphs [0036]; [0042]). The overlaminate layer may be formed from a non-PVC material and may further include additives such as nano sized zinc oxide (“non-ionomer”& “non-silica hardener”) (Paragraph [0055]). The overlaminate layer may be formed from a urethane or urethane-acrylic hybrid and may include additives such as fire retardants (Paragraphs [0041]; [0056]-[0062]). The adhesives may be any suitable adhesive (Paragraph [0044]).
Shih is silent with respect to the ink of the print layer to be patterned so as to define open spaces which allow light to pass through.
Sutton teaches decorative resin panels (Col. 1, Lines 19-23). The panels include ink layers which may have intermittent areas that are left blank in order to allow bonding sites during lamination without cracking or damaging the ink (Col. 12, Line 60-Col. 13, Line 7; Fig. 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the inks of Shih to have intermittent areas that are left blank in order to allow bonding sites during lamination without cracking or damaging the ink as taught by Sutton.
Shih is silent with respect to the overlaminate layers including an impact modifier including copolymers of styrene-butadiene rubbers and acrylonitrile-butadiene-styrene copolymers.
Brickner teaches polymeric flooring panels including a wear layer (Paragraph [0006]). The wear layers are provided with impact modifiers in order to offset any weaknesses in the polymers of the wear layer and the impact modifiers may be acrylonitrile-butadiene-styrene polymers (Paragraphs [0018]-[0023]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the overlaminate layers of Shih to further include an impact modifier being ABS polymers in order to impart further impact resistance as taught by Brickner.
Shih is silent with respect to the overlaminate layer comprising an embossed pattern.
Maier teaches an embossed multilayer composite film including a polymer layer, a tie layer and a decorative layer (Paragraph [0009]). The films include embossed patterns which are synchronized with the decorative layer in order to provide a texture which matches the optical pattern (Paragraph [0022]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the overlaminate layer of Shih to further provide an embossed pattern in order to provide a texture which matches the optical pattern as taught by Maier.
Shih is silent with respect to the adhesive layer having a thickness of less than 2 mils and being formed from a clear maleic anhydride grafted ethylene methyl acrylate copolymer.
Su teaches laminate films including tie layers of ethylene-methyl acrylate-maleic anhydride copolymers which are used as very effective tie layers having thicknesses of between 0.1 and 5 microns (Col. 5, Lines 24-43; Col. 6, Lines 62-65).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the adhesive layers of Shih to be formed from of ethylene-methyl acrylate-maleic anhydride copolymers which are used as very effective tie layers having thicknesses of between 0.1 and 5 microns as taught by Su.
Regarding claim 2, Shih teaches the laminates as discussed above with respect to claim 1. The support layer may be formed from a polyurethane (Paragraph [0043]).
Regarding claim 3, Shih teaches the laminates as discussed above with respect to claim 1. As discussed above, the overlaminate layer may be formed from a urethane or a urethane-acrylic hybrid.
Regarding claim 4, Shih teaches the laminates as discussed above with respect to claim 1. As discussed above, the adhesive layer is formed from ethylene-methyl acrylate-maleic anhydride copolymers.
Regarding claim 5, Shih teaches the laminates as discussed above with respect to claim 1. As discussed above, the adhesive layer is formed from ethylene-methyl acrylate-maleic anhydride copolymers.
Regarding claim 6, Shih teaches the laminates as discussed above with respect to claim 1. As discussed above, the adhesive layer is formed from ethylene-methyl acrylate-maleic anhydride copolymers.
Regarding claim 7, Shih teaches the laminates as discussed above with respect to claim 1. The print layer may have a thickness of 0.8 to 2 mils and the support layer may have a thickness of 0.1 to 5 mils, resulting in a range of 0.9 to 7 mils (Paragraphs [0071]-[0072]). The thickness of the overlaminate layer may be 0.4 to 10 mils (Paragraph [0073]). The thickness of the laminates may be up to 15 mils (0.381 mm) (Paragraph [0070]).
Regarding claim 8, Shih teaches the laminates as discussed above with respect to claim 1. As discussed above, the overlaminate layer is provided with an embossed surface to provide a texture with the design of the ink layer.
Regarding claim 9, Shih teaches the laminates as discussed above with respect to claim 1. The overlaminate layer provides a desired layer of protection for the layers underneath and provides the laminates with suitable outdoor durability, scratch resistance, gloss, conformability, tensile elongation and tensile strength. One of ordinary skill in the art would recognize that the design of these overlaminate layers would be durable, thermoformable, chemical resistant, UV resistant, moisture resistant, impact resistant, scratch resistant, and has outdoor weatherability and have soft feel.
Regarding claim 27, Shih teaches the laminates as discussed above with respect to claim 1. As discussed above, the adhesive layer is formed from ethylene-methyl acrylate-maleic anhydride copolymers.
Response to Arguments
Applicant’s arguments, see pages 8-9, filed 03/27/2026, with respect to the rejection of claim 1 under 35 U.S.C 103 have been fully considered and are persuasive.
On pages 8-9, applicant argues that the combination of McDonald, Brickner and Shih fails to teach the amendments to claim 1, specifically, the limitations concerning the functional layer including an ink layer, a print carrier layer and a graphic effect layer in addition to the tie layer being formed from the specific maleic anhydride grafted ethylene methyl acrylate material.
The examiner concedes in that the amendments overcome the previous rejection in view of McDonald which fails to teach the required layer structure. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Shih, Sutton, Brickner, Maier and Su as discussed above.
The current rejection is made FINAL in view of the amendments to the claims.
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 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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