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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 10, 2025 has been entered.
Summary
The Applicant’s arguments received on October 10, 2025 are entered into the file. Currently, claims 2-4 are canceled; claim 9 is withdrawn; resulting in claims 1 and 5-8 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/16/2025 has been considered by the examiner.
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.
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, 5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (US 2021/0001611, previously cited) in view of Furuta et al. (JP 7004864, machine translation previously provided) and Tomatsu et al. (WO 2025/041553, machine translation previously provided).
Regarding claim 1, Ueno et al. teaches a decorative sheet (100) comprising a substrate (10; substrate sheet) and a decorative layer (20) including a solid printing layer (21; picture auxiliary layer) and a picture layer (22; picture pattern layer) disposed on the substrate ([0019], see Fig. 2 reproduced below).
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As shown in Figs. 1 and 2, the solid printing layer is formed to entirely cover a first side of the substrate sheet, and the picture layer is formed on a side of the solid printing layer opposite the side contacting the substrate ([0055], [0080]). Ueno et al. further teaches that the decorative layer may be designed to exhibit a wood grain pattern (picture pattern), wherein the solid printing layer may exhibit a wood surface pattern while the picture layer exhibits a vessel pattern and/or a knot pattern ([0081], [0097]).
Ueno et al. teaches that the thickness of the substrate is preferably not less than 20 µm, more preferably not less than 40 µm from the viewpoint of balance between ease of handling and strength, while the upper limit is preferably 200 µm or less, more preferably 100 µm or less [0049]. Ueno et al. therefore teaches a thickness of the substrate which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Although Ueno et al. teaches that a thermoplastic resin such as a polyolefin resin (e.g., polyethylene) is preferably used as the binder resin of the substrate and further teaches that the decorative sheet can be used for an architectural member or structure such as a floor, wall, window, or door; a part or component of a vehicle such as a dashboard, glovebox, instrument panel, and so forth ([0023], [0153]), the reference does not expressly teach that the substrate contains biomass-derived polyethylene or that the substrate has a biomass content of 15% or higher and 40% or lower.
However, in the analogous art of biomass-containing resins for decorative sheets, Furuta et al. teaches a molded article made of a resin composition composed of an olefin mixture containing biomass-derived olefins (a1) and fossil fuel-derived olefins (a2) ([0036]-[0037], [0041]). Similar to Ueno et al., Furuta et al. teaches that the molded article can be used in a variety of applications such as automobile parts, containers, packaging materials, housings for home appliances, instrument panel skins, automotive interior and exterior materials, and the like ([0190]-[0194]). Furuta et al. teaches that when a conventionally known olefin-based polymer is replaced with the resin composition containing a mixture of biomass-derived components and fossil fuel-derived components, the performance of the molded article can be made equivalent even after the replacement, while the replacement makes it possible to reduce the environmental impact (i.e., greenhouse gas emissions) throughout the life cycle of the polymer, from production, processing, use, and disposal [0172].
Furuta et al. further teaches that the olefin mixture contains 10% by weight or more and 69% by weight or less of biomass-derived olefins (a1) and 31% by weight or more and 90% by weight or less of fossil fuel-derived olefins (a2) ([0041], [0056]). Since the production cost of biomass-derived olefins is higher than that of fossil fuel-derived olefins, a resin composition in which the ratio of a1 and a2 is set within the above range can contribute to reducing the environmental load while also promoting the widespread use of cost-reduced polymers [0044]. Furuta et al. therefore teaches that the resin composition has a biomass content of 10% or more and 69% or less, which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
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 decorative sheet taught by Ueno et al. by including a biomass-derived olefin such as a biomass-derived polyethylene in combination with the fossil fuel-derived polyethylene in an amount meeting the claimed biomass content, as suggested by Furuta et al., in order to reduce the environmental impact of the decorative sheet while also ensuring that the production cost of the decorative sheet remains low.
Although Ueno et al. teaches that the substrate can contain an additive such as an antioxidant ([0041]), the combination of references does not expressly teach that the substrate contains a phenol antioxidant and a phosphorous antioxidant.
However, in the analogous art of resin films, Tomatsu et al. teaches a polyethylene-based resin film, a laminate, and a package used to transport a variety of foods, where the polyethylene resin film has a printable laminate layer located on one side thereof ([0001]-[0002], [0012]). Tomatsu et al. teaches that the polyethylene resin composition may contain a heat stabilizer, wherein a commercially available antioxidant such as a hindered phenol-based antioxidant (Irganox 1010) and a phenol-phosphorous-based antioxidant (Sumilizer GP) may be used [0051]. Tomatsu et al. teaches that the heat stabilizers may be used alone or in combination of two or more, where the heat stabilizer serves to suppress defects such as gelation that occur when the resin deteriorates due to heat or oxidation during melt extrusion [0051].
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 decorative sheet taught by Ueno et al. in view of Furuta et al. by selecting an appropriate material, such as a phenol antioxidant and a phosphorous antioxidant as the antioxidant used in the polyethylene-based substrate sheet, as suggested by Tomatsu et al., for the purpose of suppressing defects that occur when the resin deteriorates due to heat or oxidation.
Regarding claim 5, Ueno et al. in view of Furuta et al. and Tomatsu et al. teaches all of the limitations of claim 1 above, and Ueno et al. further teaches that the thickness of the solid printing layer (21; picture auxiliary layer) is preferably 0.5 to 15 µm, preferably 2 to 8 µm, from the viewpoint of a balance between the concealing properties and the moldability [0079]. Ueno et al. therefore teaches a thickness of the solid printing layer which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claims 7 and 8, Ueno et al. in view of Furuta et al. and Tomatsu et al. teaches all of the limitations of claim 1 above, and Ueno et al. further teaches that the decorative sheet further comprises a transparent resin layer (30) disposed on a side of the picture layer (22) opposite the side contacting the solid printing layer (22) ([0019], Fig. 2). The transparent resin layer may include a polyolefin resin and has a thickness preferably not less than 10 µm, more preferably not less than 50 µm from the viewpoint of protecting the decorative layer and enhancing surface properties such as scratch resistance and weatherability, where the upper limit is preferably 150 µm or less, more preferably 100 µm or less, from the viewpoint of handling of the decorative sheet ([0107], [0114]). Ueno et al. therefore teaches a thickness of the transparent resin layer which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (US 2021/0001611, previously cited) in view of Furuta et al. (JP 7004864, machine translation previously provided) and Tomatsu et al. (WO 2025/041553, machine translation previously provided) as applied to claim 1 above, and further in view of Hwang (US 2016/0355687, previously cited).
Regarding claim 6, Ueno et al. in view of Furuta et al. and Tomatsu et al. teaches all of the limitations of claim 1 above. Although Ueno et al. teaches that the solid printing layer (21; picture auxiliary layer) may be formed over 100% of the entire area of the substrate ([0080]), the combination of references does not expressly teach that the picture auxiliary layer is smoothed, i.e., that the picture auxiliary layer has a smooth surface.
However, in the analogous art of decorative sheets, Hwang teaches a glitter sheet (100, 200) comprising a sheet supporter (10; substrate), a coating layer (21, 22; picture auxiliary layer), and printed ink layers (31a, 31b, 32a, 32b) ([0179], [0182], Figs. 1-2). Hwang teaches that the glitter sheet is a sheet that has decorative properties, and that the coating composition for forming the coating layer has good ink printability, such that printed images can be formed thereon by ink layers ([0003], [0033]). Hwang teaches that conventional glitter sheets include a non-smooth surface which has high roughness and is difficult to print, while the glitter sheet of the present invention may use a mirror embossing roller after formation of the coating layer to improve the smoothness of the glitter sheet, thereby improving printability thereof ([0156], [0165]-[0166]).
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 decorative sheet taught by Ueno et al. in view of Furuta et al. and Tomatsu et al. by forming the picture auxiliary layer to have a smooth upper surface, such as by using a mirror embossing roller, as suggested by Hwang, in order to enhance the printability thereof.
Claims 1, 5, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (US 2021/0001611, previously cited) in view of Takahashi et al. (JP 2017-193722, machine translation previously provided) and Fukushima et al. (JP 2010-005948, machine translation previously provided).
Regarding claim 1, Ueno et al. teaches a decorative sheet (100) comprising a substrate (10; substrate sheet) and a decorative layer (20) including a solid printing layer (21; picture auxiliary layer) and a picture layer (22; picture pattern layer) disposed on the substrate ([0019], Figs. 1-2).
As shown in Figs. 1 and 2, the solid printing layer is formed to entirely cover a first side of the substrate sheet, and the picture layer is formed on a side of the solid printing layer opposite the side contacting the substrate ([0055], [0080]). Ueno et al. further teaches that the decorative layer may be designed to exhibit a wood grain pattern (picture pattern), wherein the solid printing layer may exhibit a wood surface pattern while the picture layer exhibits a vessel pattern and/or a knot pattern ([0081], [0097]).
Ueno et al. teaches that the thickness of the substrate is preferably not less than 20 µm, more preferably not less than 40 µm from the viewpoint of balance between ease of handling and strength, while the upper limit is preferably 200 µm or less, more preferably 100 µm or less [0049]. Ueno et al. therefore teaches a thickness of the substrate which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Although Ueno et al. teaches that a thermoplastic resin such as a polyolefin resin (e.g., polyethylene) is preferably used as the binder resin of the substrate ([0023]), Ueno et al. differs from the claimed invention in that the reference does not expressly teach that the substrate contains biomass-derived polyethylene or that the substrate has a biomass content of 15% or higher and 40% or lower.
However, in the analogous art of biomass-containing resins for decorative sheets, Takahashi et al. teaches a polyolefin resin film made of a resin composition containing a biomass-derived polyolefin obtained by polymerizing a monomer containing biomass-derived ethylene [0001]. Takahashi et al. teaches that the resin film may be used for various applications, including as decorative sheets, wherein the thickness of the resin film may vary depending on the application but may be in the range of about 5 to 200 µm ([0063]-[0064]). The resin composition preferably contains 5 to 90 mass%, more preferably 25 to 75 mass% of a biomass-derived polyolefin and may further contain various additives such as color pigments ([0058]-[0059]). Takahashi et al. teaches that the biomass-derived polyolefin resin film is comparable in physical properties to conventional polyolefin resin film obtained from fossil fuels but has the advantage of being carbon-neutral ([0022], [0060]).
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 decorative sheet of Ueno et al. by replacing the conventional polyethylene resin of the substrate with the polyolefin resin film comprising biomass-derived polyethylene and having a biomass content within the claimed range, as taught by Takahashi et al., in order to reduce the carbon footprint of the decorative sheet.
Although Ueno et al. teaches that the substrate can contain an additive such as an antioxidant ([0041]), and Takahashi et al. also teaches that its resin composition can include additives such as antioxidants ([0059]), the combination of references does not expressly teach that the substrate contains a phenol antioxidant and a phosphorous antioxidant.
However, in the analogous art of biomass-based articles, Fukushima et al. teaches a biomass-based plastic molded article used for home appliances, office equipment, and the like ([0001]-[0002], [0012]). Fukushima et al. teaches that these plastic articles are often used for long periods of time in harsh environments so that by the time they become plastic waste, a deterioration in appearance properties such as discoloration or fading and a deterioration in physical properties such as strength and flexibility has occurred [0012]. Fukushima et al. teaches that an antioxidant is therefore included in the biomass-based plastic waste in order to prevent deterioration due to oxidation of the biomass-based plastic molded article, wherein the antioxidant may contain at least one selected from phenol-based antioxidants and phosphorous-based antioxidants from the viewpoints of thermal stability and color stability ([0060]-[0062]). In particular, the plastic may include 0.01 to 5 parts by weight of a phenol-based antioxidant and 0.01 to 5 parts by weight of a phosphorous-based antioxidant [0030].
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 decorative sheet of Ueno et al. in view of Takahashi et al. selecting an appropriate material, such as a phenol antioxidant and a phosphorous antioxidant as the antioxidant used in the substrate sheet, as suggested by Fukushima et al., in order to ensure that the substrate has good thermal stability and color tone stability.
Regarding claim 5, Ueno et al. in view of Takahashi et al. and Fukushima et al. teaches all of the limitations of claim 1 above, and Ueno et al. further teaches that the thickness of the solid printing layer (21; picture auxiliary layer) is preferably 0.5 to 15 µm, preferably 2 to 8 µm, from the viewpoint of a balance between the concealing properties and the moldability [0079]. Ueno et al. therefore teaches a thickness of the solid printing layer which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claims 7 and 8, Ueno et al. in view of Takahashi et al. teaches all of the limitations of claim 1 above, and Ueno et al. further teaches that the decorative sheet further comprises a transparent resin layer (30) disposed on a side of the picture layer (22) opposite the side contacting the solid printing layer (22) ([0019], Fig. 2). The transparent resin layer may include a polyolefin resin and has a thickness preferably not less than 10 µm, more preferably not less than 50 µm from the viewpoint of protecting the decorative layer and enhancing surface properties such as scratch resistance and weatherability, where the upper limit is preferably 150 µm or less, more preferably 100 µm or less, from the viewpoint of handling of the decorative sheet ([0107], [0114]). Ueno et al. therefore teaches a thickness of the transparent resin layer which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ueno et al. (US 2021/0001611, previously cited) in view of Takahashi et al. (JP 2017-193722, machine translation previously provided) and Fukushima et al. (JP 2010-005948, machine translation previously provided) as applied to claim 1 above, and further in view of Hwang (US 2016/0355687, previously cited).
Regarding claim 6, Ueno et al. in view of Takahashi et al. and Fukushima et al. teaches all of the limitations of claim 1 above. Although Ueno et al. teaches that the solid printing layer (21; picture auxiliary layer) may be formed over 100% of the entire area of the substrate ([0080]), the combination of references does not expressly teach that the picture auxiliary layer is smoothed, i.e., that the picture auxiliary layer has a smooth surface.
However, in the analogous art of decorative sheets, Hwang teaches a glitter sheet (100, 200) comprising a sheet supporter (10; substrate), a coating layer (21, 22; picture auxiliary layer), and printed ink layers (31a, 31b, 32a, 32b) ([0179], [0182], Figs. 1-2). Hwang teaches that the glitter sheet is a sheet that has decorative properties, and that the coating composition for forming the coating layer has good ink printability, such that printed images can be formed thereon by ink layers ([0003], [0033]). Hwang teaches that conventional glitter sheets include a non-smooth surface which has high roughness and is difficult to print, while the glitter sheet of the present invention may use a mirror embossing roller after formation of the coating layer to improve the smoothness of the glitter sheet, thereby improving printability thereof ([0156], [0165]-[0166]).
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 decorative sheet taught by Ueno et al. in view of Takahashi et al. and Fukushima et al. by forming the picture auxiliary layer to have a smooth upper surface, such as by using a mirror embossing roller, as suggested by Hwang, in order to enhance the printability thereof.
Response to Arguments
Response-Claim Rejections - 35 USC § 103
In light of the amendments to claim 1 incorporating the limitations of previous claims 2-4, the previous rejections based on Misawa et al. in view of Iio are withdrawn. The Applicant’s arguments directed to the previous rejections based on Ueno et al. in view of Furuta et al. and Tomatsu et al. and to Furuta et al. in view of Takahashi et al. and Fukushima et al. will be addressed below insofar as they apply to the current grounds of rejection.
Applicant's arguments, see pages 9-11 of the remarks filed October 10, 2025, with respect to amended claim 1 have been fully considered but they are not persuasive. In particular, the Applicant asserts that the combined use of a phenolic antioxidant and a phosphorous-based antioxidant results in surprising and superior effects of the claimed invention – namely, the effect of suppressing the occurrence of fisheyes and the discoloration of the base sheet. The Applicant argues that nothing in Tomatsu et al. or Fukushima et al. teaches or suggests any reason why the specifically claimed combination of antioxidants would result in the alleged superior effects of the claimed invention.
These arguments are not persuasive. First, it is noted that the Applicant’s assertion that the combined use of a phenolic antioxidant and a phosphorous-based antioxidant results in unexpected results of the claimed invention are not adequately supported by the data provided by the Applicant. In all of the examples (i.e., Examples 1-6 and Comparative Example 1) shown in Table 1 in the instant specification, the substrate sheets contains both a phenol antioxidant and a phosphorous antioxidant (see paragraph [0078] of the as-filed specification). The Applicant has not provided any data to demonstrate the criticality of the combination of these two antioxidants, for example, showing the effects of using only one or neither of the claimed antioxidants as compared to the examples using both of the claimed antioxidants.
With respect to whether the results are actually unexpected, as noted above, Tomatsu et al. teaches that it is possible to suppress defects such as gelation that occur when the resin deteriorates due to heat or oxidation during melt extrusion, and that commercially available heat stabilizers and antioxidants such as a hindered phenol-based antioxidant, a phosphite treatment stabilizer, and a phenol-phosphorous-based antioxidant may be used alone or in combination [0051]. Based on this disclosure, one of ordinary skill in the art would expect that the use of the claimed combination of phenol and phosphorous-based antioxidants would suppress defects such as gelation, which would otherwise cause print defects such as fisheyes. Fukushima et al. further teaches that it is preferably to use phenol-based antioxidants and phosphorous-based antioxidants from the viewpoints and color stability, wherein the material would otherwise have poor durability, exhibiting discoloration or fading ([0012], [0061]).
Furthermore, it is well known in the art to use a combination of a phenol antioxidant and a phosphorous antioxidant in polyethylene compositions in order to suppress degradative effects such as discoloration and visual defects such as gelation. For example, Zahalka (US 2013/0190434) teaches a polyethylene composition stabilized against thermal decomposition using an antioxidant composition containing a combination of hindered phenol and a liquid phosphite stabilizer, which is well suited for film manufacture and has improved protection against NOx (nitrogen oxide) discoloration and long term oxidation [0002]. In particular, organophosphites in combination with hindered phenols are used in the stabilization of polyolefins as non-discoloring antioxidants ([0007], [0084]). Zahalka further teaches that the combination of phenol and phosphite antioxidants suppresses the gel content of the polyethylene compositions ([0071], [0083], [0085]).
Kleczek et al. (US 2022/0227977) similarly teaches that most polyethylene is sold with an antioxidant system that contains a hindered phenol as a primary antioxidant and a hindered phosphite as a secondary antioxidant, where the antioxidants serve to protect the polyethylene from thermal degradation ([0027], [0060]). The extent of the degradation is measured in part by the gel content, which results in visual physical defects to the film [0069]. One of ordinary skill in the art would recognize that physical defects such as gelation of the polyethylene film form an uneven surface which causes print defects such as fisheyes when a printed ink layer is formed thereon. It is therefore expected based on the prior art that the use of a combination of a phenol antioxidant and a phosphorous antioxidant in the polyethylene film would result in the suppression of discoloration and print defects such as fisheyes.
In light of the above, the allegations of unexpected results are not sufficient to overcome the prima facie case of obviousness over Ueno et al. in view of Furuta et al. and Tomatsu et al. and over Ueno et al. in view of Takahashi et al. and Fukushima et al. because the data does not demonstrate the criticality of the claimed combination of antioxidants, and the results are not significant or unexpected in view of the prior art.
With respect to the Applicant’s argument that nothing in the cited prior art would have provided any reason for one of ordinary skill in the art to utilize the claimed combination of antioxidants without resorting to undue experimentation, and not without any reasonable expectation of success in achieving the superior effects of the claimed invention, it is noted that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the substrate sheet in Ueno et al. in view of Furuta et al. or Ueno et al. in view of Takahashi et al. by incorporating a combination of two antioxidants given that Ueno et al. already discloses the use of additives such as antioxidants in its polyethylene substrate. The selection of the broadly claimed combination of antioxidant materials is well within the level of ordinary skill in the art in light of the guidance provided by Tomatsu et al. and Fukushima et al., and would have predictably achieved the effects of suppressing degradation of the polyethylene (i.e., discoloration and physical defects causing fisheyes). In light of the additional disclosure in Zahalka and Kleczek et al., one of ordinary skill in the art would recognize that the combination of phenol antioxidants and phosphorous antioxidants is commonly used in polyethylene compositions for such purposes.
Conclusion
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/Rebecca L Grusby/Examiner, Art Unit 1785