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.
Claims 1-12 rejected under 35 U.S.C. 103 as being unpatentable over Otomo et al (JP2009282471A) in view of Yoshikata et al (US2006/0166023A1). Otomo is read from an English machine translation which has been placed in the application file.
With regards to claim 1, Otomo discloses a graphics structure for the interior of a vehicle (i.e., decorative film for a vehicle interior), comprising a transparent film formed of polyethylene terephthalate (PET) and an acrylic white pressure-sensitive adhesive layer (i.e., a colored adhesive layer), the acrylic white pressure-sensitive adhesive layer comprising an amino group-containing (meth)acrylic polymer, a carboxy group-containing (meth)acrylic polymer, and white pigment (i.e., a colorant) (Otomo - Translation: abstract; page 2, “The graphics structure of the invention can provide an image…”; page 4, “As the transparent film, for example…”). The graphics structure of Otomo is further disclosed as having a total calorific value for 20 minutes after the start of heating measured in accordance with ISO 5660-1 cone calorie meter heat resistance test of 8 MJ/m2 or less (Otomo: page 5, “In this aspect, it is preferable that…”).
Otomo does not appear to disclose its polyethylene terephthalate film layer as biaxially stretched.
Yoshikata is directed to a protective sheet comprising a decorating agent and a biaxially stretched polyethylene terephthalate film (i.e., a decorative sheet comprising a biaxially stretched polyethylene terephthalate film) (Yoshitaka: para. [0162], [0246], and [0256]). As best understood, Yoshikata uses biaxial stretching to aid in incorporation of ultraviolet absorbers and photostabilizers, and to allow for the formation of a heat-resistant film (Yoshikata: para. [0165]). Further, it is clear from Yoshikata that biaxial stretching is a well-known post-processing method within the art (Yoshikata: para. [0165]). Otomo and Yoshikata are analogous art in that they are related to the same field of endeavor of decorative materials comprising polyethylene terephthalate. A person of ordinary skill in the art would have found it obvious to have biaxially stretched the polyethylene terephthalate of Otomo, since biaxially stretching is known in the art, and since such a process results in improved incorporation of additives and heat resistance (see above discussion).
Regarding the claimed pencil hardness, tensile strength, and elongation properties, it is noted that Otomo and Yoshikata teach a product which is substantially identical in composition to that of the claimed invention (see above discussion). In further support, the adhesive composition of Otomo is found to select a carboxyl group-containing polymer comprising butyl acrylate, 2-ethylhexyl acrylate, acrylonitrile, and acrylic acid at a 58:36:2:4 mass ratio and an amino group-containing polymer comprising methyl methacrylate, butyl methacrylate, and dimethylaminoethyl methacrylate at a 60:34:6 mass ratio – these materials are identical to the combination of (meth) acrylic polymer 1 and tacky polymer 1 disclosed in Applicant’s specification (i.e., the polymers of Otomo are identical to that of the present specification) (Otomo: page 5, “Preparation of carboxyl group-containing monomer” and “Preparation of amino group-containing monomer”). It has been held that a composition’s properties are inseparable from its properties, per MPEP 2112. Therefore, the product of Otomo and Yoshikata is expected to possess the claimed pencil hardness, tensile strength, and elongation properties (see above discussion).
With regards to claim 2, the biaxially stretched polyethylene terephthalate film of Otomo Yoshikata includes an ultraviolet absorber in order to enhance ultraviolet resistance (see above discussion).
With regards to claim 3, Otomo and Yoshikata do not mention an inclusion of a flame retardant (i.e., the film is substantially free of a flame retardant).
With regards to claim 4, the decorative film consists of the biaxially stretched polyethylene terephthalate film layer and the colored adhesive layer (see above discussion).
With regards to claim 5, Otomo and Yoshikata teach a film which is substantially identical to that of the claimed invention, and therefore, the film of Otomo is and Yoshikata is expected to exhibit the claimed total light transmittance (see above discussion).
With regards to claim 6, the film of Otomo and Yoshikata has a thickness of 130 microns or less, which overlaps the claimed range of 270 microns or less, thereby establishing a prima facie case of obviousness, per MPEP 2144.05 (Otomo: claim 11).
With regards to claim 7, Otomo discloses a graphics structure for the interior of a vehicle (i.e., the film is an anti-scatter film, as it is capable of transmitting an image through a transparent layer), comprising a transparent film formed of polyethylene terephthalate (PET) and an acrylic white pressure-sensitive adhesive layer (i.e., a colored adhesive layer), the acrylic white pressure-sensitive adhesive layer comprising an amino group-containing (meth)acrylic polymer, a carboxy group-containing (meth)acrylic polymer, and white pigment (i.e., a colorant) (Otomo - Translation: abstract; page 2, “The graphics structure of the invention can provide an image…”; page 4, “As the transparent film, for example…”). The graphics structure of Otomo is further disclosed as having a total calorific value for 20 minutes after the start of heating measured in accordance with ISO 5660-1 cone calorie meter heat resistance test of 8 MJ/m2 or less (Otomo: page 5, “In this aspect, it is preferable that…”).
Otomo does not appear to disclose its polyethylene terephthalate film layer as biaxially stretched.
Yoshikata is directed to a protective sheet comprising a decorating agent and a biaxially stretched polyethylene terephthalate film (i.e., a decorative sheet comprising a biaxially stretched polyethylene terephthalate film) (Yoshitaka: para. [0162], [0246], and [0256]). As best understood, Yoshikata uses biaxial stretching to aid in incorporation of ultraviolet absorbers and photostabilizers, and to allow for the formation of a heat-resistant film (Yoshikata: para. [0165]). Further, it is clear from Yoshikata that biaxial stretching is a well-known post-processing method within the art (Yoshikata: para. [0165]). Otomo and Yoshikata are analogous art in that they are related to the same field of endeavor of decorative materials comprising polyethylene terephthalate. A person of ordinary skill in the art would have found it obvious to have biaxially stretched the polyethylene terephthalate of Otomo, since biaxially stretching is known in the art, and since such a process results in improved incorporation of additives and heat resistance (see above discussion).
Regarding the claimed pencil hardness, tensile strength, and elongation properties, it is noted that Otomo and Yoshikata teach a product which is substantially identical in composition to that of the claimed invention (see above discussion). In further support, the adhesive composition of Otomo is found to select a carboxyl group-containing polymer comprising butyl acrylate, 2-ethylhexyl acrylate, acrylonitrile, and acrylic acid at a 58:36:2:4 mass ratio and an amino group-containing polymer comprising methyl methacrylate, butyl methacrylate, and dimethylaminoethyl methacrylate at a 60:34:6 mass ratio – these materials are identical to the combination of (meth) acrylic polymer 1 and tacky polymer 1 disclosed in Applicant’s specification (i.e., the polymers of Otomo are identical to that of the present specification) (Otomo: page 5, “Preparation of carboxyl group-containing monomer” and “Preparation of amino group-containing monomer”). It has been held that a composition’s properties are inseparable from its properties, per MPEP 2112. Therefore, the product of Otomo and Yoshikata is expected to possess the claimed pencil hardness, tensile strength, and elongation properties (see above discussion).
With regards to claim 8, the biaxially stretched polyethylene terephthalate film of Otomo Yoshikata includes an ultraviolet absorber in order to enhance ultraviolet resistance (see above discussion).
With regards to claim 9, Otomo and Yoshikata do not mention an inclusion of a flame retardant (i.e., the film is substantially free of a flame retardant).
With regards to claim 10, the decorative film consists of the biaxially stretched polyethylene terephthalate film layer and the colored adhesive layer (see above discussion).
With regards to claim 11, Otomo and Yoshikata teach a film which is substantially identical to that of the claimed invention, and therefore, the film of Otomo is and Yoshikata is expected to exhibit the claimed total light transmittance (see above discussion).
With regards to claim 12, the film of Otomo and Yoshikata has a thickness of 130 microns or less, which overlaps the claimed range of 270 microns or less, thereby establishing a prima facie case of obviousness, per MPEP 2144.05 (Otomo: claim 11).
Response to Arguments
Applicant's arguments filed June 8th, 2026, have been fully considered but they are not persuasive.
On pages 2-3, Applicant summarizes aspects of the present grounds of rejection, and argues that the Examiner has not demonstrated inherency. Specifically, Applicant argues that Otomo does not disclose a biaxially stretched PET, and in contrast, Yoshikata’s biaxially stretched PET film is used as a substrate for vapor deposition in solar battery module protective sheets, which is different in application. Applicant argues that the adhesive composition of Otomo alone is insufficient to meet inherency. While the Examiner is persuaded that a biaxially stretched PET film is required to meet the claimed properties, the Examiner submits that Yoshikata still teaches a biaxially stretched PET film in a manner which obviates the claimed invention. Applicant’s arguments do not appear to address the cited reasoning for Otomo and Yoshikata having a common field of endeavor, namely, decorative articles. While Yoshikata may use its material in a solar battery module, it may specifically be a solar battery module modified to have a specific design or decorative effect, and therefore, the invention of Otomo, which is directed to graphics structures generally, remains pertinent. It is additionally noted that the scope of Otomo is rather broad, and as best understood, is directed to any outdoor product mounted with a unit which interacts with light, and therefore, technically, a solar battery module (such as that of Yoshikata) is not excluded from the purview of Otomo.
On page 3, Applicant argues that Yoshikata discusses incorporating ultraviolet absorbers into polyolefin resin films, and not PET films. Applicant argues that the PET film of Yoshikata is used as a substrate for vapor deposition of silicon oxide, and further, the reasoning that biaxial stretching aids in incorporation of ultraviolet absorbers is drawn from paragraph [0165], which relates to polyolefin films, and not PET films. These arguments are not found persuasive as paragraph [0096] of Yoshikata discloses the resin films and sheets of Yoshikata as including, for example, polyethylene terephthalate (PET), and paragraph [0101] of Yoshikata teaches the disclosed resin films or sheets as including an additive, and paragraph [0102] of Yoshikata discloses the additive as including an ultraviolet absorber. Therefore, Yoshikata teaches a PET film including an ultraviolet absorber. Paragraph [0165], as acknowledged by Applicant, notes that stretching of PET would have been obvious from the viewpoint of incorporating the ultraviolet absorbers of Yoshikata.
On page 3, Applicant argues that the previous action does not adequately discuss the transitional phrase “consists of”. The previous grounds of rejection are noted as acknowledging the transitional phrase “consists of”. Applicant’s arguments as the layers denoted by Otomo are those of the claims (i.e., no other layers were mentioned in the rejection with respect to the phrase “consisting of”, since there are no other layers in the structure of Otomo, and hence, by default, the phrase “consisting of” is met). Alternatively, since the structure of Otomo requires no additional layers other than those applied in the present grounds of rejection, claimed invention remains obvious.
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.
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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/ Supervisory Patent Examiner, Art Unit 1783
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