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 .
Status of the Claims
Claims 1-20 are currently pending.
Claims 8-17 are withdrawn from consideration.
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-7 and 18-20, in the reply filed on 06/08/2026 is acknowledged.
Claims 8-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/08/2026.
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 3-6 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.
Regarding claims 3 and 6,
The term “soft” in the phrase “soft film” is a relative term which renders the claim indefinite. The term “soft” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what is required for a film to be considered “soft”. For examination purposes, a “soft” film will be considered any film that is capable of having a surface or the film structure to be shaped or changed.
Regarding claims 4 and 5,
Claims 4 and 5 are rejected due to their dependency on claim 3. Additionally, claims 4 and 5 are indefinite for the phrase “acrylate-type” monomers. The addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955). See MPEP 2173.05(b) II E.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 6-7, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimada et al. (JP 2010/046961 A; machine translation).
Regarding claim 1,
Shimada teaches a projecting writing and erasing film (Shimada: abstract; par. 0002, 0005, 0007, and 0010), comprising a surface clear layer having a structured surface (a surface structured layer) with a glossiness being suppressed and said structure layer may be a coating (a matte coating), a film base material layer, and an adhesive layer (an installation layer) (Shimada: abstract; par. 0006-0009 and 0023).
Regarding claim 3,
Shimada teaches the projection writing and erasing film required by claim 1. Shimada further teaches the surface structured layer is a curable coating and is shaped to have a thickness and uneven surface shapes on the surface (Shimada: par. 0023-0028).
The limitations requiring the structured layer to be “formed by compounding a projection writing and erasing curable coating and a soft film with a roughened surface structure, curing and shaping, and then separating the projection writing and erasing curable coating from the soft film” are product-by-process limitations and are thus not given patentable weight. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In th is case, there appears to be no structural difference between the final structure of the claimed projection writing and erasing film comprising a surface structured layer and the projection writing and erasing film comprising a surface structured layer coating taught by Shimada.
Regarding claim 6,
Shimada teaches the projection writing and erasing film required by claim 3. The limitations requiring the soft film with a roughened surface structure to comprise at least one polymer composition is also part of the product by process limitations required by claim 3.
When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In th is case, there appears to be no structural difference between the final structure of the claimed projection writing and erasing film comprising a surface structured layer and the projection writing and erasing film comprising a surface structured layer coating taught by Shimada.
Regarding claim 7,
Shimada teaches the projection writing and erasing film required by claim 1. Shimada further teaches the base film layer (the base material layer) comprises a polyethylene terephthalate film, a polyvinyl chloride film, or an acrylic-based film (Shimada: par. 0031).
Regarding claim 20,
Shimada teaches the projection writing and erasing film required by claim 1. Shimada further teaches the surface structured layer has a thickens of from about 2 to about 6 µm, which is within the claimed range of 1 to 20 µm (Shimada: par. 0030).
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 2 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Shimada.
Regarding claim 2,
Shimada teaches the projection writing and erasing film required by claim 1. Shimada further teaches the surface structure layer may have a 60-degree specular gloss of less than or equal to 30% or less which would overlap with the claimed range when converted to surface gloss claimed range of less than or equal to 30° (Shimada: par. 0023).
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Regarding claim 18,
Shimada teaches the projection writing and erasing film required by claim 1. Shimada further teaches the surface structured layer has an Ra of from about 1 to about 5 µm, which overlaps with the claimed 0.10 to 1.0 µm (Shimada: par. 0025).
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Regarding claim 19,
Shimada teaches the projection writing and erasing film required by claim 1. Shimada further teaches the surface structured layer has an Rt of about 1 to about 30 µm, which overlaps with the claimed 1.0 to 5 µm (Shimada: par. 0025).
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Shimada in view of Chen et al. (CN 112876980 A; machine translation).
Regarding claims 4 and 5,
Shimada teaches the projection writing and erasing film required by claim 3. Shimada further teaches the projection writing and erasing curable coating comprises the following preparation components: a base material comprising acrylate prepolymers and acrylate monomers and a photoinitiator (Shimada: par. 0009-0012).
Shimada does not explicitly teach the addition of an antibacterial agent and a writing and erasing aid that is a fluorosilicone co-modified polyacrylate resin formed by the claimed components in the claimed proportions.
Chen teaches an antibacterial ultraviolet curing writing coating composition with antibacterial properties and improved curing properties to obtain a good writing effect (Chen: abstract; pgs. 1-2, and pg. 3, par. 1).
The coating composition comprises: 25 to 55 parts of acrylate resin prepolymer, which matches the range in the claims; 12 to 48 of an acrylic ester monomer (an acrylate-type monomer), matches the range for the acrylate-type monomers in the claim; 2.5 to 8 parts of a photoinitiator, which overlaps with claimed 1 to 4 parts; 1 to 8 parts of an antibacterial agent, which matches the claimed range; 1 to 5 parts of an erasing auxiliary agent (an erasing aid), which matches the claimed range (Chen: pg. 3, par. 6). The erasing aid comprises the following preparation components in parts by mass: 8 to 12 parts of hydrogen-containing silicon oil; 3 to 8 parts of silane monomer; 20 to 55 parts of double-functional (methyl)acrylate monomer; 1 to 3 parts of fluorine-containing (meth)acrylate monomer; 7x10-4 to 1.5x10-3 parts of a catalyst; and 0.3 to 0.6 parts of a polymerization inhibitor all of which matches the claimed ranges (Chen: pg. 4, par. 2). A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Shimada and Chen are in the corresponding field of writing coating compositions. Therefore, it would be obvious to one of ordinary skill in the art to utilize the writing coating composition components in the claimed ranges of Chen in the curable coating of Shimada to provide improved writing, curing, and antibacterial properties as taught by Chen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Travis M Figg whose telephone number is (571)272-9849. The examiner can normally be reached M-F 9am-5pm.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783
