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 with traverse of Group I, claims 1-8, in the reply filed on 07 January 2026 is acknowledged. The traversal is on the grounds that there is no undue search burden. This is not found persuasive for the following reasons.
In response to Applicant’s argument, this is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice. See MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I-III do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth on pages 4-5 of the action mailed 07 November 2025.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07 January 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ho et al. (US 2010/0032082 A1, “Ho”) in view of Hütt (US 2012/0308773 A1).
With respect to claims 1-2 and 6, Ho discloses a multilayer film 10 having a first polyurethane layer 12, a second thermoplastic polyurethane (TPU) layer 14, and a pressure sensitive adhesive (PSA) layer 16 ([0040], Fig. 1). A releasable (i.e., removable) carrier web or liner 18 is atop the polyurethane layer 12, and the PSA layer 16 has a releasable liner 20 to protect it ([0040]). The first polyurethane layer 12 is made by a method (i) involving the use of a polyester polyol or polycarbonate polyol ([0042], [0045]); thus, the first polyurethane layer 12 is a polyester-based polyurethane or polycarbonate-based polyurethane. The polyurethane layer 12 is at least partially crosslinked ([0048], [0053]) and therefore corresponds to the claimed polyurethane layer (a). The PSA layer 16 corresponds to the claimed adhesive layer (d).
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However, Ho does not disclose wherein the releasable carrier web or liner 18 has a corona treated or plasma treated surface.
Hütt teaches a matt layer having good release effect (i.e., a releasable layer) ([0010]) which is subjected to a corona treatment having a surface tension of 35-50 mN/m ([0065]) in order to provide a layer having desired surface roughness, adhesive strength, and releasing behavior ([0019]).
Ho and Hütt are analogous inventions in the field of multilayer structures having releasable layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the release carrier of Ho to be subjected to a corona treatment having a surface tension of 35-50 mN/m as taught by Hütt in order to provide a release layer having desired surface roughness, adhesive strength, and releasing behavior (Hütt, [0019]). The modified release carrier of Ho in view of Hütt corresponds to the claimed removable cover film having a corona treated surface.
Regarding the film being a decorative film, there is no explicit disclosure from Ho in view of Hütt regarding the film being a decorative film. However, Ho discloses the film is used to protect painted surfaces of vehicle parts (Abstract), which is considered decorative. Alternatively, while there may be no explicit disclosure from Ho in view of Hütt regarding the film being a decorative film, given that Ho in view of Hütt discloses an identical film made from identical layers made from identical materials as that presently claimed, it is clear the film of Ho in view of Hütt would necessarily inherently function as a decorative film, absent evidence to the contrary.
With respect to claim 3, while there may be no explicit disclosure from Ho in view of Hütt regarding a peel strength of the removable cover film being 0.15-1.0 N/50mm, given that Ho in view of Hütt discloses an otherwise identical film made from identical layers made from identical materials as that presently claimed, it is clear the peel strength of the removable cover film of Ho in view of Hütt would necessarily inherently have a peel strength of 0.15-1.0 N/50 mm, absent evidence to the contrary.
With respect to claim 4, while there may be no explicit disclosure from Ho in view of Hütt regarding a surface tension of the surface of the removable cover film opposite to the corona treated surface being less than 40 mN/m, given that Ho in view of Hütt discloses an otherwise identical film made from identical layers made from identical materials as that presently claimed, it is clear the surface tension of the surface of the removable cover film opposite to the corona treated surface would necessarily inherently be less than 40 mN/m, absent evidence to the contrary.
Claims 5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ho et al. (US 2010/0032082 A1, “Ho”) in view of Hütt (US 2012/0308773 A1) as applied to claim 1 above, and further in view of Suzuki et al. (US 2019/0225838 A1, “Suzuki”).
With respect to claim 5, while Ho in view of Hütt discloses the use of a release liner that is a polyester (Ho, [0074]), Ho in view of Hütt does not disclose wherein the polyester is polyethylene terephthalate.
Suzuki teaches a multilayer film having a release liner ([0007]). Suzuki further teaches polyesters include polyethylene terephthalate (PET) ([0033]) and exemplifies a PET release liner ([0176]).
Ho in view of Hütt and Suzuki are analogous inventions in the field of multilayer films having release liners.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the release liner of Ho in view of Hütt to be made from PET as taught by Suzuki and thereby arrive at the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
With respect to claim 7, while Ho in view of Hütt discloses the multilayer film is colored by including a pigment or other coloring agent in one or more of its layers (Ho, [0055]), Ho in view of Hütt does not disclose wherein the base layer has a multilayer structure including a decorative layer.
Suzuki teaches a laminate having first and second sheets ([0027]). The sheets are made from resin films and include polyurethanes ([0034-0035]). The sheets include supplemental layers including a colored layer or printed layer (i.e., decorative layer) in order to provide a desirable appearance ([0045]).
Ho in view of Hütt and Suzuki are analogous inventions in the field of multilayer laminates having polyurethane substrates and pressure sensitive adhesives.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyurethane layer 14 of Ho in view of Hütt to contain supplemental layers including a colored layer or printed layer (i.e., a decorative layer) as taught by Suzuki in order to provide a multilayer article having desired appearance (Suzuki, [0045]).
With respect to claim 8, Ho in view of Hütt does not disclose wherein the decorative film is a roll which has been wound.
Suzuki teaches a multilayer film having a release liner ([0007]) that is wound into a roll in order to provide a handleable item that is conveniently stored and transported ([0005]).
Ho in view of Hütt are analogous inventions in the field of multilayer films having release liners.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the multilayer film of Ho in view of Hütt to be wound into a roll as taught by Suzuki in order to provide a handleable multilayer film that is conveniently stored and transported (Suzuki, [0005]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571) 272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787