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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) are:
"means for" in claim 1, Lines 5, 12, 19 and 24. The corresponding structures described in the specification are found in Fig. as elements 4, 7, 9 and 11 described in the specification in paragraph [0062] (PGPub US2024/0384362);
“means for” in claim 2, line 1 of the corresponding element 12 as shown in Fig. ([0072] (PGPub US2024/0384362));
“means for” in claim 4, line 1 of the corresponding element 16 as shown in Fig. ([0063] (PGPub US2024/0384362));
“means for” in claim 5, line 1 of the corresponding element 4 as shown in Fig. ([0062] (PGPub US2024/0384362));
“means for” in claim 8, line 1 of the corresponding element 9 as shown in Fig. ([0062] (PGPub US2024/0384362));
“means for” in claim 12, line 1 of the corresponding element 4 as shown in Fig. ([0062] (PGPub US2024/0384362)).
Because this claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1-18 are objected to because of the following informalities:
In claims 2-18, line 1, respectively, ‘System’ should read “The system”
In claims 1, 2, 3, 4, 5, 10, 11, 12, 14, 15, and 16, multiple numbers are following the terms ‘means’. These numbers should be removed.
Appropriate correction is required.
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 1-2, 5, 6, 7, 8, 10, 11, 12, 17, 18 are rejected under 35 U.S.C. 103 as being unpatentable over Watson (US 3,542,617) in view of Agosti (WO2018158657) and Connett (US 3,930,921).
Regarding claims 1, 7, 10, 11, 12, 18, Watson discloses that, as illustrated in Fig., a flexible substrate 10 (i.e., a supporting element) is coated with a viscous solution of polymer 14 (i.e., by a coating applicator 12 as the first application means). In a solvent removal zone 18 (i.e., by the application of heat through the second application means), the applied coating is heated to remove the solvent (col. 2, lines 19-28). Then, release sheet 20 is applied onto the surface of the plastic polymer. The resulting laminate is then passed to a compression zone such as a calendar 24 (i.e., as the third application means) comprising one or more pressure rollers 25 (i.e., for embossing), plate press or the like pressure application means (col. 2, lines 36-46). In the curing zone 28, laminate 26 proceeds to a further solvent evaporation through heating (col. 2, lines 50-64). On the completion of the curing, release sheet 20 is stripped from the polymer surface (col. 2, lines 65-66). Watson discloses that, at least 50 percent or more of the solvent is removed (col. 5, lines 46-47) (overlapping the claimed range of between 20 and 80% of the amount of solvent).
For one of ordinary skill in the art at the time the invention was filed would have considered the invention to have been obvious because the range taught by Watson overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Though, Watson discloses that, the most preferred finely divided solvent materials incorporate in the coating composition are water or alcohol soluble compounds which do not fuse, decompose or volatilize at the curing temperature utilized to cure the coating composition (col. 4, lines 33-38).
However, Watson does not explicitly disclose water in the solvent. In the same field of endeavor, laminate, Agosti discloses, as illustrated in Figs. 1, 1A-1E, a method for making an upgraded and embossed laminar supporting element (item 1, Fig. 1G (page 16, lines 17-20)) comprising a supporting element (item 9, Fig. 1B (page 9, lines 25-26) (a leather (related to claim 18))) provided with several layers, comprising the following steps:
application means 18 (page 10, line 12; it is noticed that, the application means 18 preferably comprises a plurality of spray nozzles 18a (page 10, lines 14-15) (related to claim 10)) applying at least one base layer of an aqueous coating (items 10, 11, Fig. 1 (page 10, lines 27-35; page 11, lines 1-25 (i.e., the definition of “absolute moisture” is used to indicate the water content in the synthetic substance 11 (lines 21-25)))) to a surface of the supporting element;
heat treatment means 7 (page 11, lines 8-9) treating said at least one layer so as to evaporate from said at least one layer between 20% and 80% of the amount of water and optional solvent initially present (page 11, lines 16-20 (i.e., the thermal treatment (i.e., by the heat treatment means 7 (page 11, lines 7-9)) is carried out to have a water content from 12% to 25% (or evaporate between 75% to 88% (overlapping the claimed range of 20% to 80%))));
it is noticed that, at least the heat treatment unit 7 in the teachings of Agosti is provided the partial evaporation of water in the coating layer 10 as shown in Fig. 1 (related to claim 12);
laminar element 5 (page 12, lines 8-12) applying on the thus dried coating at least one layer of a protective substance (page 12, lines 11-12 (i.e., a protective substance 4 (as shown in Fig. 1A)));
downstream heating means 19a, 19b (page 13, lines 9-23) treating said at least one layer so as to evaporate from said at least one layer between 20% and 80% of the amount of water and/or solvent initially present (page 13, lines 17-20 (i.e., by the heating suited to heat the external surface of one or both of the cylinders 18a, 19b); page 4, lines 26-28 (i.e., the absolute moisture is included between 15% to 23% (or evaporate between 77% to 85% (overlapping the claimed range of 20% to 80%))));
It is noticed that, the combination of the laminar element 5 and the pair of the cylinders 19a, 19b in the teachings of Agosti is provided to at least the function of a roller coater of the protection layer (related to claim 11);
laminar element 5 applying on the thus dried protective layer at least one layer of foil (page 4, lines 7-8 (i.e., a supporting film (or item 12 in Fig. 1A (page 12, lines 11-12))));
pressing cylinder 20a (page 10, line 7) exerting a pressure on the combination of supporting element (page 4, lines 15-21 (embossing) (by a cylinder 20a (Fig. 1D or page 10, lines 5-8) which is considered as a embossing element providing a pattern 102 (or morphological characteristics))) provided with said aqueous base coating layer, said protective layer and said foil layer in such a way so as to emboss the coated surface with morphological characteristics wherein the means for applying said pressure comprises an embossing pattern (item 102, Fig. 1D (page 10, lines 1-4));
winding cylinder 51 (page 16, lines 15-16) removing said at least one layer of foil (page 16, lines 12-16 (by using the winding cylinder 51 to recover the supporting film 12 (as shown in Fig. 1G))).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Watson to incorporate the teachings of Agosti to provide the aqueous coating having the amount of water (i.e., reduction of VOCs). Doing so would be possible to produce less expensive products, as recognized by Agosti (page 1, lines 23-27).
However, both Watson and Agosti do not explicitly disclose that, the protective layer is a lacquer (finish coating) having anti-sticking properties. In the same field of endeavor, finishing leather, Connett discloses that, as illustrated in Figs. 1, 2, the top coat of the leather finish comprises a nitrocellulose lacquer. Finishes thus provided bond readily and permanently to the leather while simultaneously defining a hard, non-tacky finish thereon (col. 3, lines 1-7).
It is noticed that, in Example 1, the topcoat is produced by deposition of a layer from the following dispersion including 10 parts of water (col. 8, lines 35-63) (related to claim 7).
It is noticed that, as illustrated in Figs. 1, 2 in the teachings of Connett, leather substrates 11 to be finished are placed between a backing or supporting layer 12 and a release or transfer layer 13. … The release layer 13, on the other hand, is generally the composite of a carrier 15 desirably constituted of a paper or similar sheet material, and a permanent release stratum 16 having a transferable finish coating 17 thereon (col. 5, lines 60-68).
Here, the release layer 13 including the release stratum 16 (i.e., including 16a and 16b (col. 6, lines 8-14)) can be equivalence to the claimed release foil.
It is noticed that, Connett discloses that, as illustrated in Fig. 1 (especially in Stage A), the releasable finish coating 17 may comprise any of the above noted leather finishing compositions. Preferably, the finish coating incorporates a first or outer stratum 17a constituted of the aforesaid thermoplastic adhesive acrylic polymer coating for forming the base finish coat on the leather, and a second or inner stratum (17b) constituted of the hard, non-tacky nitrocellulose lacquer for forming the top coat of the finish (col. 6, lines 23-30).
Thus, Connett discloses that, at least the one side of the lacquer coat or finish on the leather provide the required releasable function (i.e., anti-sticking properties) to the release paper or web (or the foil).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified either Watson or Agosti to incorporate the teachings of Connett to provide that the top coating of the leather is hard, non-tacky nitrocellulose lacquer (coating). Doing so would be possible to provide sufficient flexibility to the leather to prevent cracking or rupturing, as recognized by Connett (col. 3, lines 1-16).
Regarding claim 2, either Watson or Agosti does not disclose drying the lacquer coating layer on the supporting elements. Connett discloses that, as illustrated in Fig. 2, after thus coating the finish (i.e., including the lacquer layer 17b (col. 6, lines 28-30)) upon the leather substrates (i.e., item 11 (col. 5, line 60)) the supporting web carrying the same is passed through the nip of a further heated roll 31 and adjustable pressure roll 32 (col. 7, lines 28-31).
It would have been obvious to use the apparatus of either Watson or Agosti to have the coating on the supporting elements as Connett teaches that it is known to have the drying or heating process on the lacquer layer. It has been held that the combination of known technique to improve similar device is likely to be obvious when it does not more than yield predictable results to one of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Regarding claim 5, Watson discloses that, at least 50 percent or more of the solvent is removed (col. 5, lines 46-47) (overlapping the claimed rang of 25% to 70%).
Further, Agosti discloses the amount of evaporated water in the coating of the leather (page 11, lines 16-18, evaporate between 75% to 88%). However, Agosti does not explicitly disclose that, the amount of water and optional solvent evaporated from the at least one aqueous base coating is between 25% and 70%.
Titanium Metals Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed. Cir. 1985)
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
Agosti discloses the claimed invention except for the amount of water and optional solvent evaporated from the at least one aqueous base coating is between 25% and 70%. It would have been obvious to one having ordinary skill in the art at the time the invention was made to Agosti since the claimed ranges (25% and 70%) and the prior art ranges (75% to 88%) are close enough that one skilled in the art would have expected them to have the same properties and further being motivated to improve consolidation/polymerization during the heat treatment.
Regarding claim 6, the base reference Watson discloses that, producing a leather-like material by applying a relatively thick film (or coating) of a viscous solution of a polyurethane elastomer to a flexible substrate (col. 1, ABSTRACT, lines 1-3).
Further, Agosti discloses, the application of one or more layers of a synthetic material typically consisting of polyurethane (page 1, lines 33-35). Agosti discloses that, the definition of “absolute moisture” is used to indicate the water content in the synthetic substance 11 (page 11, lines 21-25).
Agosti discloses that, the at least one layer of an aqueous base coating (items 10 and 11, Fig.1 or 1C), the at least one-layer protective substance (item 4, Fig. 1A; it is noticed that, the protective layer is based on a polyurethane) and at least one optional top coat layer (page 4, line 7) are applied by using a spraying application or by means of a roller coater (as shown in Figs. 1, 1A-1G).
Regarding claim 8, Agosti discloses that, preferably, during the embossing step the temperature has a value included between 100 C and 180 C (overlapping the claimed range of 50 C to 150 C) (page 5, lines 33-34).
For one of ordinary skill in the art at the time the invention was filed would have considered the invention to have been obvious because the range taught by Watson overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Reagrding claim 17, both Watson and Agosti do not explicitly disclose that, the protective layer is a nitrocellulose lacquer (coating). Connett discloses that, as illustrated in Figs. 1, 2, the top coat of the leather finish comprises a hard, non-tacky nitrocellulose lacquer. Finishes thus provided bond readily and permanently to the leather while simultaneously defining a hard, non-tacky finish thereon (col. 3, lines 1-7).
Claims 3-4, 9 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Watson (US 3,542,617), Agosti (WO2018158657), and Connett (US 3,930,921) as applied to claim 1 above, further in view of Steven (US 217,1389).
Regarding claims 3-4, the combination does not explicitly disclose a fourth application means suited to apply at least one layer of top coat on the surface of the coated supporting element.
In the same field of endeavor, coating of lacquer, Steven discloses that, if desired it is also possible to use a plurality of priming layers of different compositions (page 1, right col., lines 8-9).
Further, Steven discloses that, according to the invention it is possible to obtain a very fine surface by imparting to the lacquer coating , …, and covering the said layer with a coating of wax (page 2, left column, lines 3-10). Steven discloses that, since this coating of wax will penetrate more or less into the micro-porous coating of lacquer there will be formed a perfect unit (page 2, left col., lines 44-47). Here, the coating of wax can be considered as one of the top coats on the surface of the coated supporting element. Further, Steven discloses that, after the coating of wax has dried, it may be heated (e.g., by a heater) in such a manner that the light color disappears, without the wax being entirely melted (page 2, left col., lines 51-54) (related to claim 4).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination to incorporate the teachings of Steven to provide at least one layer of top coat (e.g., the coat of wax) on the surface of the coated supporting element. Doing so would be possible to provide a very good covering and reinforcement for the coat of lacquer underneath, as recognized by Steven (page 2, left col., lines 33-42).
Regarding claim 9, Agosti discloses that, as illustrated in Fig. 1A, an optional top coat (item 4, Fig. 1A (the protective substance)) is an aqueous coating (page 12, 28-29 (i.e., by suitable emulsions)) based on a polyurethane dispersion (page 12, line 24). Agosti discloses that, applying at least one layer of a protective substance (page 4, line 7). Thus, Agosti discloses at least the one layer of the optional top coat (for protection).
Further, Steven discloses that, (at least) for the adhesive layer, a mixture of a rubber dispersion, a solution of polymerized acrylic acid ester (i.e., one type of polyacrylate resin) or of a similar artificial resin (page 1, right col., lines 32-36).
Steven individually teaches the multiple coats on the surface of a leather as claimed. Each of these configurations is utilized to improve the production of the leather. It would have been obvious for one of ordinary skilled in the art to combine each of these embodiments into one configuration logically flows from their having been individually taught in the prior art as being known for achieving the same purpose.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wason (US 3,542,617), Agosti (WO2018158657) and Connett (US 3,930,921) as applied to claim 1 above, further in view of Grzesiak et al. (US 2014/0162073).
Regarding claims 13-14, the combination does not explicitly disclose the base aqueous coating has a viscosity of between 5 and 120 seconds on Ford Cup and the at least one layer of the base aqueous coating is applied in a small thickness of between 1.5 and 4.5 gram of dried matter per square foot. In the same field of endeavor, aqueous leather coating, Grzesiak discloses that, the aqueous leather coating composition can have a Ford 4 viscosity of less than or equal to 50 seconds ([0061], lines 6-8) (overlapping the claimed range of between 5 and 120 seconds on Ford Cup). Grzesiak discloses that, typical application rates of the aqueous leather coating treatment composition are in the range of 2.0 to 100 gram dry weight per square meter (i.e., 0.2 to 10.o gram dry weight per square foot) (overlapping the claimed range of between 1.5 and 4.5 gram of dried matter per square foot (related to claim 14)).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination to incorporate the teachings of Grzesiak to provide that the base aqueous coating has a viscosity of between 5 and 120 seconds on Ford Cup and the at least one layer of the base aqueous coating is applied in a small thickness of between 1.5 and 4.5 gram of dried matter per square foot. Doing so would be possible to have the coating leather with storage stability, mechanical properties, minimal embrittlement, and low fresh tack, as recognized by Grzesiak ([0002]).
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Wason (US 3,542,617), Agosti (WO2018158657) and Connett (US 3,930,921) as applied to claim 1 above, further in view of Kuwabara et al. (US 5,676,707).
Regarding claims 15-16, the combination of Agosti, Wason, and Connett does not explicitly disclose that, the lacquer layer is applied in a small thickness of below 1.0 gram of dried matter per square foot or the optional top coat layer is applied in a small thickness of below 0.5 and 1.5 gram of dried matter per square foot. In the same field of endeavor, leather treatment process, Kuwabara discloses that, as illustrated in Fig. 7, the leather 91 gone through the leather coloring is subsequently further subjected to a treatment to spray a base coating material, followed by drying, and then coated with a lacquer to give the finishing (col. 17, lines 1-7). Further, Kuwabara discloses that, in a more preferred embodiment, the resin and the aggregate of particles are each imparted in an amount of not less than 0.01 g/m2 (or 0.001 g/ft2) to not more than 10 g/m2 (or 1.0 g/ft2) of the leather (overlapping the claimed ranges in claims 15 and 16)) (col. 3, lines 24-27).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combination to incorporate the teachings of Kuwabara to provide that the lacquer layer is applied in a small thickness of below 1.0 gram of dried matter per square foot or the optional top coat layer is applied in a small thickness of below 0.5 and 1.5 gram of dried matter per square foot. Doing so would be possible to provide a protection to the deterioration of the leather surface, as recognized by Kuwabara (col. 2, lines 33-44).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIBIN LIANG whose telephone number is (571)272-8811. The examiner can normally be reached on M-F 8:30 - 4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison L Hindenlang can be reached on 571 270 7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHIBIN LIANG/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741