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 .
Election/Restrictions
Applicant’s election of Group V, claims 8 and 12, in the reply filed on 8/19/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-7, 9-11 and 13-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/19/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
Claims 8 and 12 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for an elongation substrate made of specific polymers at specific thicknesses having the elongation claimed, does not reasonably provide enablement for any material known that has yet to be invented having the elongation claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 8 and 12 can be used as claimed and whether claims 8 and 12 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 8 and 12, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 8 and 12 read on any material having any thickness that has the elongation while the specification discloses only a five polymeric materials and usage of the test JIS K 7127 to determine if they have the elongation claimed. This leads to undue experimentation as it is unclear what the test piece thicknesses/size should be in order to determine whether a material would satisfy the elongation property at the fixed tensile load claimed. Under the fixed tensile load claimed, the thinner one makes the test material, the easier it will be to exhibit the elongation claimed.
(b) There is no direction or guidance presented to determine what materials other than the five polymers disclosed [0049]-[0050] would have the elongation claimed; further, there is no teaching on what thicknesses/sized the material was tested at to determine whether it meets the elongation claimed.
(c) There is an absence of working examples having any of the five polymers disclosed or any other material with test thicknesses/sizes that meets the elongation at the fixed tensile load claimed.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 8 and 12.
Claims 8 and 12 are 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.
In claim 8, the limitations of “elongation substrate elongates 50% or more, when a tensile load of 0.05 N is applied at 90 C” is a functional limitation that renders the claim indefinite. It is unclear what size/thickness test piece is used to determine this elongation property as this will determine whether or not a material will possess the elongation at the fixed tensile load claimed. Currently, this functional limitation is open to any test piece thickness/size. Given that (1) there is not a clear cut indication on how one determines what subject matter is covered by the claim, (2) the language only gives a result to obtain for an elongation substrate without any specific materials for achieve that result, and (3) one of ordinary skill in the art would not know from the claim terms what structures are encompassed by the claim, this means the functional limitations render the claim indefinite.
Claim Rejections - 35 USC § 102
Claims 8 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Noritsune et al. (US 2017/0158919).
With regard to claims 8 and 12, Noritsune at al. teach the sheet 10 of Figure 2, which reads on applicants’ decorative sheet [0115].
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The sheet 10, includes a pressure sensitive adhesive layer 12, which reads on applicants’ adhesive layer, a peeling layer 34, which reads on applicants’ peeling sheet, an ink layer 20 that may be formed by thermal transfer printing, which reads on applicants’ image layer including a digital print image, a PET layer 26, which reads on applicants’ protective layer, and a base material layer 14, which reads on applicants’ elongation substrate [0090] and [0115]-[0119]. The base material layer has a tensile elastic modulus of 5 to 100 MPa as is made of rubbers [0053], [0056] and Table 1.
Given that the elongation property of the claims can be measured at any thickness and the tensile elastic modulus of the base material layer is 100 MPa or less (Table 1 and [0160]), which is a value that will be less than polypropylene, i.e. a polyolefin, wherein polypropylene has a modulus of elasticity of 1100-1300 MPa, the base material layer of Noritsune et al. will inherently have an elongation of 50% or more when tested at a tensile load of 0.05 N at 90 C as claimed. A lower elastic tensile modulus would mean that the rubbers of Noritsune et al. will be more easily elongated under lower stress.
Lastly, the Examiner notes that the image layer being a “digital print image” is a product-by-process limitation. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Given the fact that Noritsune et al. teach an ink layer that can be formed by a thermal transfer printing method, this ink layer will have the same structure as the structure resultant from the product-by-process limitations claimed.
Claim Rejections - 35 USC § 103
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fujii et al. (JP 06-115296).
With regard to claim 8, Fujii et al. teach the transfer film of Figure 1, which reads on applicants’ decorative sheet [0012].
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The transfer film includes a film 1, which reads on applicants’ elongation substrate, an adhesive layer 3, which reads on applicants’ adhesive layer, a film 2, which reads on applicants’ peeling sheet, a pattern layer 5, which reads on applicants’ image layer, and an adhesive layer 6, which reads on applicants’ protective layer as it will intrinsically provide some protection to the image layer and the other layers below it [0013]. The image layer being a “digital print image” is a product-by-process limitation. Given the fact that Fujii et al. teach a pattern that can be formed by a transfer printing method, this pattern will have the same structure as the structure resultant from the product-by-process limitations claimed [0018]. The film 1 having moldability may be a polyvinyl chloride film or a polypropylene film [0014]; however, Fujii et al. do not teach an example with these materials.
It would have been obvious to one having ordinary skill in the art to have made the film 1 from polyvinyl chloride or polypropylene as these materials are specifically suggested in the reference for having excellent moldability, which is the property or reshaping and stretching without breaking. Given the fact that the thickness and the material of the film are identical to the preferential amounts/materials disclosed, it will intrinsically possess an elongation of 50% or more when a tensile load of 0.05 N is applied at 90 C as claimed.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Fujii et al. (JP 06-115296) in view of Yoshino et al. (US 2020/0039209).
Fujii et al. render obvious all of the limitations of claim 1 above. They teach that the image can be formed by a transfer method [0018]; however, they do not specifically teach using a thermal transfer material to form the image.
Yoshino et al. teach that it is known to form images in a receiving layer of a transfer sheet using sublimation dyes [0077]. The method of forming an image using sublimation dyes will use thermal transfer.
Since Fujii et al. and Yoshino et al. are both drawn to transfer images formed in sheets, it would have been obvious to have made the transfer printing process of Fujii et al. use the sublimation dyes in a thermal transfer printing process as taught by Yoshino et al. This would be a simple substitution of known materials that would have had predictable results to one having ordinary skill.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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