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 .
Claim Objections
Claims 2 and 7 are objected to because of the following informalities: “a water droplets” should be “a water droplet”. Appropriate correction is required.
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.
Claims 1-10 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.
Claim 16 contains the limitation “a first thickness of the carrier film”, “a second thickness of the decorative layer” and a “third thickness of the transparent protective layer”. It is unclear whether the claimed thickness refer to a single value or range for each of the carrier film, decorative layer and protective layer or if “first thickness” refers to one of several thicknesses and if “second thickness” and “third thickness” implies a first, second or third thickness within each layer that is different from the rest.
Claim 6 is rejected for substantially the same reasons as claim 1, above. The limitations at issue are “a first thickness of the carrier film”, “a second thickness of the transparent protective layer” and “a third thickness of the decorative layer”
Claims 1 and 6 further contains the limitation “a scratch resistance of the hot-pressing membrane is equal to or greater than 50 times”. It is not clear what “50 times” refers to or is being compared to.
Claims 1 and 6 further contains the limitation “wherein the hot pressing membrane is via the carrier film bonded”, it is unclear if this limitation refers to an intended use limitation were the first outer surface not actively being claimed since the “hot pressing membrane” as claimed in the preamble refers to a structure having the carrier film, decorative layer and transparent protective layer or if the first object and the outer surface thereof is claimed as being attached to the hot pressing membrane.
Claims 2-5 and 7-10 are rejected as being dependent on claims 1 and 6.
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, 3-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Abe (U.S. App. Pub. No. 2025/0206002) in view of Shinbara (CN108136723) and Arima et al. (U.S. App. Pub. No. 20230106407).
Citations to Shinabara below refer to the machine translation document provided with this office action.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claims 1 and 6, Abe teaches a decorative film including:
A transparent surface layer (Abstract, Fig. 1 and par. [0025]);
A colored polyurethane layer (Abstract, Fig. 1 and par. [0025]); and
An adhesive layer (Abstract, Fig. 1 and par. [0025])
The transparent surface layer (equivalent to the transparent protective layer as claimed) is made of a polycarbonate-based thermoplastic elastomer polyurethane material elastomer. (par. [0052]-[0054]). The content of organic solvent in the polyurethane in the range of 1-90 parts by mass, for improving workability and coatability. (par. [0041]). The presently claimed ranges of 4-6 parts by weight thermoplastic polyurethane, 0.6 to 2.0 parts by weight functional additive and 11-14 parts by weight solvent is equivalent to 20-33% weight polyurethane (4/(2+4+14) and (6/(0.6+6+11)), 3-10% weight functional additive (0.6/(6+0.6+14) and 2/(4+2+11) and 58%-75% weight solvent (11/(6+2+11) and 14/(4+0.6+14)). The polyurethane composition therefore has a solvent content overlapping with the presently claimed range (1-90%), implying the content of thermoplastic polyurethane material is in the range of 10-99%, minus any additives, which also overlaps with the presently claimed range.
The colored polyurethane layer (equivalent to the decorative layer as claimed) is described as a polyether-based polyurethane material (i.e. a thermoplastic polyurethane) including a pigment (par. [0059]) such as 1-60% by mass titanium dioxide pigment (par. [0066]). The presently claimed ranges of 4-6 parts by weight thermoplastic polyurethane, 1 to 2 parts by weight functional additive and 12-15 parts by weight solvent is equivalent to 19-31.5% weight polyurethane (4/(2+4+15) and (6/(1+6+12)), 4-11% weight functional additive (1/(6+1+15) and 2/(4+2+12) and 60%-75% weight solvent (11/(6+2+12) and 14/(4+1+15)). The colored polyurethane layer therefore discloses a pigment amount overlapping with the presently claimed range. Abe further discloses a content of polyurethane such as water-based polyester-based polyurethane in an amounts of 1-20 mass%, overlapping with the presently claimed range. (par. [0076]). It would have been obvious to one of ordinary skill in the art to optimize the amount of solvent used in the colored polyurethane coating composition relative to the other components to adjust the physical properties thereof such as viscosity, to improve the ability to process and coat the layer. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05 (II).
The surface layer, colored polyurethane layer and adhesive layer may be arranged with a release liner in contact with the adhesive layer that may be a polyethylene or polypropylene material and having a thickness of 5-300 micrometers (i.e. 0.05-0.3 mm) (par. [0086]-[0087]). The release liner therefore meets the limitations of a “carrier film” with the thickness thereof overlapping with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Alternatively, the layers may be arranged in the form of a support film, transparent surface layer and a colored film on the surface layer with the adhesive layer on the decorative colored layer. The support film including polyethylene terephthalate, polyethylene or polypropylene and having a thickness of 5-500 micrometers (i.e. 0.05 to 0.5 mm). (par. [0088]-[0090]). The support film therefore meets the limitations of a “carrier film” with the thickness thereof overlapping with the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). This layer structure would therefore meet the limitations of claim 6.
With respect to the limitation “wherein the hot-pressing membrane is via the carrier film bonded to the first outer surface of the first object by a hot-pressing process, a mold temperature of the hot-pressing process ranges from 80oC to 130oC”, these limitations are being interpreted as statements of intended use of the claimed hot pressing membrane. Applicant’s attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. Given that the decorative layer disclosed in Abe has a layer structure and composition that meets substantially of the of the present limitations, the decorative layer disclosed in Abe would meet the intended use of applying the carrier film or decorative layer onto the surface of a first object via a hot-pressing process.
Abe does not teach that the transparent protective layer including a functional additive in an amount of 0.6-2.0 parts by weight (3-10% weight, see above).
Shinbara teaches a decorative sheet having a surface protective layer and including an inorganic additive (i.e. functional additive) which may be used to adjust the gloss of the layer or to improve the aesthetic appearance/cleaning of the sheet. (Abstract and page 9, 5th-7th full paragraph and page 13, 4th-7th full paragraph). The content of the filler materials lies in an amount of 0.1 to 30 parts by mass for the filler and 0.1 to 50 parts by mass for the gloss adjusting agent. (see Id.). Both the filler and gloss adjusting agents disclosed in Shinbara et al. would mee the limitation of a “matting powder” as claimed.
It would have been obvious to one of ordinary skill in the art to include a filler or gloss adjusting agent in the layer composition of the transparent protective layer disclosed in Abe in amounts disclosed in Shinbara
One of ordinary skill in the art would have found it obvious to include a filler or gloss adjusting agent in the protective layer of Abe in order to improve the aesthetic and physical properties by including materials which prevent or enhance gloss, improve cleaning of the sheet and to improve the hardness of the protective film.
The content of these functional additives resulting from the combination of Abe and Shinbara overlaps with the presently claimed range of 0.6-2.0 parts by weight when converted to a percent weight basis as set forth above. Therefore, the claimed range is obvious over the teachings of Abe in view of Shinbara.
Abe in view of Shinbara does not teach the Shore hardness of the decorative film.
Arima et al. teaches a multilayer film having good chemical resistance that includes a thermoplastic surface polyurethane layer material. (Abstract). Arima et al. teaches that the Shore A hardness of the surface coating layer should be in the range of 70A for improving the firmness of the polyurethane layer. (par. [0061])
It would have been obvious to one of ordinary skill in the art to adjust the Shore hardness of the protective layer in Abe in view of Shinbara to be 70A as taught by Arima et al.
One of ordinary skill in the art would have found it obvious to adjust the Shore hardness of the protective layer to be 70A or more in order to improve the firmness of the outer protective layer to provide better impact resistance to the decorative laminate.
Regarding claims 3-4 and 8-9, Abe teaches that a solvent may be used in the polyurethane composition to adjust the coatability and workability including butyl acetate. (par. [0041]). It would have been obvious to one of ordinary skill in the art to include these solvents in the polyurethane coating compositions for both protective layer and the colored layer in Abe for the purpose of adjusting the physical properties thereof.
Regarding claims 5 and 10, the limitations directed to a process of use of the hot pressing membrane as claimed including the bonding to a second object, the gap, the peak force and click ratio are all considered statements of intended use. Given that the decorative layer disclosed in Abe has a layer structure and composition that meets substantially of the of the present limitations, the decorative layer disclosed in Abe would meet the intended use of applying the carrier film or decorative layer onto the second object while maintaining the presence of a gap and under the conditions as presently claimed. The claim is therefore unpatentable for substantially the same reasons as claims 1 and 6, above. See MPEP 2111.02.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Abe (U.S. App. Pub. No. 2025/0206002) in view of Shinbara (CN108136723) and Arima et al. (U.S. App. Pub. No. 20230106407), further in view of Xue et al. (CN 1114848410).
References to Xue et al., below, refer to the machine translation document included with this office action.
Abe in view of Shinbara and Arima et al. are relied upon as described in the rejection of claims 1 and 6, above.
Abe in view of Shinbara and Arima et al. does not disclose a contact angle of a water droplets on the hot pressing membrane in the range of 80-115 degrees.
Xue et al. teaches a curved anti-fingerprint TPU protective film including a hardened coating having a water contact angle of 108 degrees or more. (page 4, 4th and 8th paragraph).
It would have been obvious to one of ordinary skill in the art to adjust the composition of the protective layer of Abe to have a water contact angle of 108 degrees or more, as disclosed in Xue et al.
One of ordinary skill in the art would have found it obvious to have a water contact angle of 108 degrees or more in order to impart self-cleaning, hydrophobic properties to the protective layer which would further prevent the formation of fingerprints and smudges on the protective layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 07/16/2026
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