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 .
Note
Applicant’s response along with the Request for Continued Examination (RCE) filed on 07/02/2026 has been fully considered. Claims 1 and 15 are amended, claims 4 and 5 are cancelled and claims 1-3 and 6-22 are pending. Claims 19-22 are currently withdrawn from consideration as non-elected invention.
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.
Claims 1-3, 6 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hiroyasu (JP 2000141402 A) in view of Harima et al. (US 2021/0198845 A1) and Merry et al. (US 2006/0197337 A1).
Claim 1: Hiroyasu teaches an illuminated decorative sheet 2 comprising a metal thin film layer 6, a light shielding colored layer 3, a translucent colored layer 4, a translucent white layer 8, a transparent or translucent film 7 and an adhesive layer 5 in the order thereof, wherein an anchor layer is provided between the metal thin film layer 6 and the light shielding colored layer 3 (¶124 and ¶81). The illuminated decorative sheet 2 meets the claimed decorative film, the anchor layer meets the claimed first top layer, the light shielding colored layer 3 meets the claimed design layer and the translucent colored layer 4 meets the claimed second top layer. Hiroyasu teaches the anchor layer includes two-component curable urethane resin and acrylic resin (¶81) but does not teach ionizing radiation-curable resin. However, Harima teaches a bonding material comprising a bonding resin including two-component curable urethane resin and curable resin such as an ionizing radiation curable resin [0032]. Harima shows that ionizing radiation curable resin is an equivalent resin known in the decorative material art. Therefore, because these two resins were art-recognized equivalents before the effective filing date of the invention, one of ordinary skill in the art would have found it obvious to substitute ionizing radiation curable resin for two-component curable urethane resin.
Hiroyasu teaches the decorative film 2 comprises the metal thin film layer 6 partially formed on the anchor layer (¶79-¶80). A plurality of parts of the anchor layer not covered by the metal thin film layer 6 meets the claimed surface of the decorative film.
Hiroyasu does not teach or suggest the anchor layer and the translucent colored layer 4 are laminated. However, Merry teaches an opaque core 18 in an identification card 10, wherein the opaque core is embedded and laminated between two synthetic transparent layer 20 and 22 [0029]. Hiroyasu and Merry are analogous art because they are from the same field of endeavor that is the decorative sheet art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the teaching of Merry, (i.e., embedding the light shielding colored layer 3 between the anchor layer and the translucent colored layer 4) with the invention of Hiroyasu, and the motivation for combining would be, as Merry suggested, to provide enhanced security features [0012].
Claim 2: Hiroyasu teaches etching the metal thin film layer 6 (¶79-¶80) and the light shielding color layer 3 (¶35) to expose the translucent colored layer 4 (¶57).
Claim 3: The transparent or translucent film 7 of Hiroyasu meets the claimed thermoplastic resin layer. Hiroyasu teaches polyphenylene sulfide resin, polycarbonate resin, polypropylene resin, polyethylene resin, polyamide resin, polyester resin, acrylic resin, polyvinyl chloride resin and a polyarylate resin as suitable examples of materials for making the transparent or translucent film 7 (¶65). It is well established that polyphenylene sulfide resin, polycarbonate resin, polypropylene resin, polyethylene resin, polyamide resin, polyester resin, acrylic resin, polyvinyl chloride resin and a polyarylate resin known thermoplastic materials.
Claim 6: Hiroyasu teaches acrylic resin as one of suitable examples of materials for making the translucent colored layer 4 (¶51).
Claim 9: Hiroyasu does not teach more than one layer of the anchor layer. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to duplicate the anchor layer, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 10 and 11: Hiroyasu teaches etching the metal thin film layer 6 (¶79-¶80). The unetched parts of the metal thin film layer 6 meet the claimed projection layer {instant claim 10} and surface unevenness {instant claim 11}. With respect to the thickness of the metal thin film layer 6, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the thickness of the metal thin film layer 6, and the motivation would be to control the flexibility and metallic luster of the sheet. A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215.
Claim 12: The translucent white layer 8 of Hiroyasu (¶76, ¶77 and ¶124) meets the claimed second design layer.
Claim 13: Hiroyasu teaches a molded article comprising the illuminated decorative sheet 2 laminated onto a molding resin 9 (¶28 to ¶30).
Claim 14: Hiroyasu teaches the molded article is for a vehicle-mounted telephone, a home telephone, or a mobile telephone (¶4).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hiroyasu (JP 2000141402 A), Harima et al. (US 2021/0198845 A1) and Merry et al. (US 2006/0197337 A1) as applied to claim 1 above, and further in view of Hayes et al. (US 2009/0174121 A1).
Hiroyasu, Harima and Merry teach the claimed invention as set forth above.
Claim 7: Hiroyasu teaches polycarbonate resin as one of suitable examples of materials for making the translucent colored layer 4 (¶51). Hayes teaches a colored layer in a decorative product, wherein the colored layer can be made of a polycarbonate or an acrylonitrile-butadiene-styrene [0079]. Hayes shows that the acrylonitrile-butadiene-styrene is an equivalent material known in the decorative product art [0079]. Therefore, because these two materials were art-recognized equivalents before the effective filing date of the invention, one of ordinary skill in the art would have found it obvious to substitute acrylonitrile-butadiene-styrene for polycarbonate.
Hiroyasu does not teach more than one layer of the translucent colored layer 4. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to duplicate the translucent colored layer 4, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hiroyasu (JP 2000141402 A) in view of Harima et al. (US 2021/0198845 A1) and Merry et al. (US 2006/0197337 A1).
Claims 15 and 16: Hiroyasu teaches an illuminated decorative sheet 2 comprising a metal thin film layer 6, a light shielding colored layer 3, a translucent colored layer 4, a translucent white layer 8, a transparent or translucent film 7 and an adhesive layer 5 in the order thereof, wherein an anchor layer is provided between the metal thin film layer 6 and the light shielding colored layer 3 (¶124 and ¶81). The illuminated decorative sheet 2 meets the claimed decorative film, the anchor layer meets the claimed first top layer, the light shielding colored layer 3 meets the claimed design layer and the translucent colored layer 4 meets the claimed second top layer. Hiroyasu teaches etching the metal thin film layer 6 (¶79-¶80) and the light shielding color layer 3 (¶35) to expose the translucent colored layer 4 (¶57) {instant claim 16}. Hiroyasu teaches a molded article comprising the illuminated decorative sheet 2 laminated onto a molding resin 9 (¶28 to ¶30). Hiroyasu teaches the molded article is for a vehicle-mounted telephone, a home telephone, or a mobile telephone (¶4).
Hiroyasu teaches the anchor layer includes two-component curable urethane resin and acrylic resin (¶81) but does not teach ionizing radiation-curable resin. However, Harima teaches a bonding material comprising a bonding resin including two-component curable urethane resin and curable resin such as an ionizing radiation curable resin [0032]. Harima shows that ionizing radiation curable resin is an equivalent resin known in the decorative material art. Therefore, because these two resins were art-recognized equivalents before the effective filing date of the invention, one of ordinary skill in the art would have found it obvious to substitute ionizing radiation curable resin for two-component curable urethane resin.
Hiroyasu teaches the decorative film 2 comprises the metal thin film layer 6 partially formed on the anchor layer (¶79-¶80). A plurality of parts of the anchor layer not covered by the metal thin film layer 6 meets the claimed surface of the decorative film.
Hiroyasu does not teach or suggest the anchor layer and the translucent colored layer 4 are laminated. However, Merry teaches an opaque core 18 in an identification card 10, wherein the opaque core is embedded and laminated between two synthetic transparent layer 20 and 22 [0029]. Hiroyasu and Merry are analogous art because they are from the same field of endeavor that is the decorative sheet art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the teaching of Merry, (i.e., embedding the light shielding colored layer 3 between the anchor layer and the translucent colored layer 4) with the invention of Hiroyasu, and the motivation for combining would be, as Merry suggested, to provide enhanced security features [0012].
Claim 17: In Hiroyasu, the thickness of the molding resin 9 is larger than the thickness of the translucent colored layer 4 (Figs. 1, 9 and 10).
Claim 18: The vehicle-mounted telephone, home telephone and mobile telephone of Hiroyasu meet the claimed light source.
Response to Arguments
Applicant’s arguments with respect to claims 1-3 and 6-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Merry teaches embedding the light shielding colored layer 3/design layer between the anchor layer/first top layer and the translucent colored layer 4/second top layer using a lamination process.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETELHEM SHEWAREGED whose telephone number is (571)272-1529. The examiner can normally be reached Monday -Friday 7am-4:30pm.
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BS
August 8, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights