DETAILED ACTION
Applicant’s amendment submitted on February 4, 2026 (“amendment”) in response to the Office action mailed on November 12, 2025 (“previous OA”) have been fully considered.
Support for the amendments to claim 1 can be found in paragraphs 0016, 0023, and 0054 of the published application. Support for new claim 27 can be found in paragraphs 0042 and 0052 of the published application.
In view of the amendment, the objection to claims 1, 6, and 11, as set forth in the previous OA is withdrawn.
In view of the amendment, the rejection of claim 3 under the 35 USC 112(b), as set forth in the previous OA is withdrawn. The examiner submits that claim 2 was intended to be rejected under the 35 USC 112(b) instead of claim 3. The examiner regrets any inconvenience to applicant.
In view of the amendment, the art rejections of record are modified.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 10, this claim recites “crosslinker at 10% or less in number-OH equivalent”. This recitation is indefinite because it is unclear what is meant by it. Specification does not provide any guidance as to what is meant by “10% or less in number-OH equivalent”.
As to applicant’s argument on page 6 of the amendment, the examiner respectfully submits that while stoichiometric equivalent amounts of polyisocyanate to polyol is understood in PU art, the claimed invention recites “the reaction product further comprises a crosslinker at 10% or less in number -OH equivalence of the reaction product”, which is not the same as the stoichiometric equivalent amounts of polyisocyanate to polyol. The crosslinker is in addition to the diol and diisocyanate of claim 1. Further, the examiner respectfully submits that the cited references of Fuchs and Johnson as pointed out by applicant do not explain what is meant by the recitation in claim 10. As such, applicant’s argument is not found persuasive.
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 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 1-11, 13-15, 18, 19, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Ho et al. (WO 2016018749 A1; US 10590303 B2 to Ho et al. is relied upon as equivalent reference in the rejection) in view of Johnson et al. (US 20150086762 A1).
As to claim 1, Ho discloses a composite film (multilayered paint film) comprising in order a hard coat layer comprising thermoplastic polyurethane (TPU), an intermediate layer that is color coat or ink coat (colored layer), and an adhesive layer (column 11, 10-11, column 11, lines 40-45, and column 12, lines 40-50). Ho further discloses a base layer between the hard coat layer and the adhesive, wherein the base layer is acrylic color coat (colored polymeric resin layer including a colorant) (column 4, lines 5-25).
Further, as to claim 1, Ho discloses that the hard coat layer comprises thermoplastic polyurethane (TPU) having hard segment content of e.g. at most 81% to at most 90% relative to the overall weight of the TPU (column 7, lines 20-25).
Further, as to claim 1 recitation “the thermoplastic polyurethane is a reaction product of: a) diisocyanate…chain extender…comprises cyclic structure”, the examiner submits that this recitation is a product by process limitation. Product by process claims are not limited to the manipulations of the recitation steps, only the structure implied by the step. See MPEP 2113 (I). At present, there is no unobvious difference between the claimed hard coat layer comprising TPU and having hard segment content of 80% or more and the hard coat layer of Ho as set forth previously, which also includes a TPU and has a hard segment content of more than 80%. The examiner submits that the hard coat layer comprising TPU as disclosed by Ho functions in the same manner as the hard coat disclosed in the claimed invention.
Further, as to claim 1, Ho discloses that the adhesive layer includes pressure sensitive adhesive (PSA) or hot melt adhesive (HMA) (column 11, lines 45-50).
As to claim 1, the difference between the claimed invention and the prior art of Ho is that Ho is silent as to the thickness of a colored polymeric resin layer comprising a colorant in the range of 50-250 µm.
Johnson discloses a paint film composite comprising a sheet metal, a color layer (colored polymeric resin layer comprising colorant), and an optional protective layer (abstract). Further, the color layer of Johnson includes a colorant and a polymeric material (0125). Moreover, Johnson discloses that the color layer can have any thickness, however, typically the thickness is in the range of from about 0.3 mil (8 µm) to about 20 mils (736 µm) (0156). The claimed thickness range of 50-250 µm overlaps or lies within the thickness range disclosed by Johnson such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 1, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the colored polymeric layer comprising a colorant with the thickness as disclosed by Johnson in the composite film of Ho as the intermediate layer, motivated by the desire to form the composite film of Ho, because Ho desires intermediate layer of color (column 4, lines 45-50). Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form the colored polymeric resin layer comprising colorant of Ho with the thickness as claimed and as rendered obvious by Johnson, motivated by the desire to form the composite film of Ho and Ho desires a polymeric color layer.
As to claim 2, Ho discloses that one or more intermediate layer such as a primer can be provided between any two adjacent layers in the composite film (column 5, lines 10-20). Thus, Ho suggests a primer disposed between the hard coat layer and the colored resin layer or it would be obvious to provide such a primer layer in order to increase bonding between the hard coat layer and the colored resin layer.
As to claim 3, Ho discloses that one or more intermediate layer “may be interposed” between any two adjacent layer (column 5, lines 10-15). Further, Ho in Figure 2 discloses a composite film that where the colored polymeric layer and the hard coat layer is in intimate contact (read as direct contact by the examiner) (column 4, lines 40-45).
As to claim 4, Ho is silent as to disclosing the amount of colorant as claimed. Johnson discloses that typically the amount of colorant will be less than about 20 wt% (0126). Claimed range of the colorant of at least 2wt% overlaps or lies within the range of the colorant disclosure by Johnson such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 5, Ho is silent as to disclosing claimed colorant. Johnson discloses that colorant includes e.g. titanium dioxide (inorganic pigment), carbon black (inorganic pigment), metal black etc. (0125).
As to claim 6, Ho discloses that the hard coat layer can comprise multiple hard coat layers. Further, Ho discloses that like the hard coat layer, any of the other layers described in the invention can be dyed or pigmented to alter the outward appearance of the composite film (column 5, lines 30-40). Ho further discloses that the hard coat layer includes at least one pigment (column 12, lines 30-35). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide a second colored polymeric resin layer comprising a second colorant, motivated by the desire to form the composite film of Ho and to alter the outward appearance of the composite film, and Ho desires such a colored polymeric resin layer.
As to claim 7, Ho discloses that the exposed surface of the adhesive layer includes a release liner (column 4, line 65 to column 5, line 5).
As to claim 8, Ho discloses that the PSA comprises polyacrylate ((meth)acrylic) (column 9, lines 54-55).
As to claim 9, Ho discloses that the HMA includes acrylics, ethylene vinyl acetate, and polyurethane (column 10, lines 5-10).
As to claim 10, Ho discloses that the TPU can be crosslinked to a small degree (column 6, lines 50-55). While Ho does not explicitly disclose a crosslinker at 10% or less in number OH equivalent, given that Ho desires small degree of crosslinking, a person having ordinary skill in the art would have found it obvious to select a crosslinker and its suitable amount, including the claimed, motivated by the desire to crosslink the TPU of Ho, motivated by the desire to provide increase stain resistance, chemical resistance, and UV stability (column 2, lines 5-10 of Ho).
As to claim 11, Ho as set forth previously discloses that the TPU includes hard segment content of at most 90% relative to the overall weight of the TPU (column 7, lines 20-25).
As to claim 13, as set forth previously, the claim limitation “the thermoplastic polyurethane is a reaction product of: a) diisocyanate” is a product by process limitation.
As to claim 14, Ho as set forth previously discloses diol chain extender such as 1,4 butane diol (Table 1), which suggests claimed diol chain extender.
As to claim 15, as set forth previously, this limitation part of the product by process limitation (see rejection of claim 1).
As to claim 19, the recitation “substantially free of solvent” is interpreted to mean less than 2 wt% of solvent (see 0036 of the published application). Ho is silent as to disclosing presence of solvent in the multilayer paint film.
As to claim 27, as set forth previously, this limitation part of the product by process limitation (see rejection of claim 1).
Response to Arguments
Applicant's arguments submitted in the amendment have been fully considered but they are not persuasive.
As to applicant’s argument on page 7 of the amendment (“The presently claimed thermoplastic polyurethane not only recites a thermoplastic polyurethane…cyclic structure.”, the examiner respectfully submits that the claim limitation “the thermoplastic polyurethane is a reaction product of: a) diisocyanate…chain extender…comprises cyclic structure.” is a product by process claim limitation. Product by process claims are not limited to the manipulations of the recitation steps, only the structure implied by the step. See MPEP 2113 (I). At present, there is no unobvious difference between the claimed hard coat layer comprising TPU and having hard segment content of 80% or more and the hard coat layer of Ho as set forth previously, which also includes a TPU and has a hard segment content of more than 80%. The examiner submits that the hard coat layer comprising TPU as disclosed by Ho functions in the same manner as the hard coat disclosed in the claimed invention. As such, applicant’s argument is not found persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Iwazumi et al. (US 20120308828 A1) discloses an antifog PU coating.
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 ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
February 26, 2026