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 .
Note
Applicant’s response along with the Request for Continued Examination (RCE) filed on 07/01/2026 has been fully considered. Claim 19 is added and claims 1-19 are pending.
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 1-7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Steelman et al. (US 5,681,631) in view of Abe et al. (JP 2019206145 A) and Kamada et al. (US 2021/0138770 A1).
Claims 1-3: Steelman teaches a graphic appliqué 40 comprising a premask layer 12, a protective layer 14, an image 42, an optional image receptor layer 43, a flexible film 44, a pressure sensitive adhesive layer 46 and a release liner 48 in the order thereof (Fig. 3 and col. 10, lines 41-56). The protective layer 14 meets the claimed transparent surface layer, and the image 42 meets the claimed printed layer. Steelman teaches the premask layer is removable (col. 5, lines 4-5). Steelman teaches the protective layer 14 has a soft coat surface layer on the side of the image 42, wherein the soft coat surface layer functions as the receptor layer for an inkjet image (col. 7, lines 19-31). The soft coat surface layer meets the claimed transparent ink receiving layer.
Steelman teaches the soft coat surface layer comprises a polyurethane polymer (col. 7, line 54), but does not teach polyether-based polyurethane. However, Abe teaches an image receiving layer 34 in a graphic film 10, wherein the image receiving layer 34 comprises polyether-based polyurethane {instant claim 2} (page 6, 4th full paragraph), and the polyurethane is a water based {instant claim 2} (page 4, 6th full paragraph). See Fig. 1. Steelman and Abe are analogous art because they are from the same field of endeavor that is the graphic medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polyether-based polyurethane of Abe with the invention of Steelman, and the motivation for combining would be, as Abe suggested, to provide a non-yellowing image receiving layer (page 6, 4th full paragraph).
Steelman teaches the protective layer 14 comprises a polyurethane polymer (col. 8, line 15), but does not teach polycabonate-based polyurethane. However, Kamada teaches a protective layer 1 in a surface protection film 10, wherein the protective layer 1 [0058] comprises a polyurethane [0059] having a polycabonate-based polyol [0062] including a reaction product of dialkyl carbonate [0064] and a diol such alicyclic diol {instant claim 3} [0065]. See Fig. 1. Steelman and Kamada are analogous art because they are from the same field of endeavor that is the protective layer art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polycarbonate-based polyurethane of Kamada with the invention of Steelman, and the motivation for combining would be, as Kamada suggested, to provide a protective layer having an excellent swelling resistance [0062].
Claim 4: Steelman teaches the graphics appliqué 40 may be fabricated by applying a graphics transfer article 20 onto a pressure-sensitive film (44, 46,48, optionally 43) (col. 10, lines 50-52), wherein the graphics transfer article 20 comprises an image 22 formed by an ink jet printer (col. 8, line 65).
Claims 5 and 6: Steelman does not teach the pressure sensitive adhesive layer 46 contains a white colorant and is an acrylic pressure sensitive adhesive layer. However, Abe teaches a white pressure sensitive adhesive layer 36 in a graphic film 10, wherein the white pressure sensitive adhesive layer 36 comprises a white pigment {instant claim 5} and an acrylic polymer dispersant {instant claim 6} (page 7, 2nd and 3rd full paragraphs). See Fig. 1. Steelman and Abe are analogous art because they are from the same field of endeavor that is the graphic medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the white pressure sensitive adhesive layer 36 of Abe with the invention of Steelman, and the motivation for combining would be, as Abe suggested, to provide excellent concealment power.
Claim 7: Steelman does not teach the graphic appliqué 40 further comprises a transparent pressure sensitive adhesive layer between the protective layer 14 and the soft coat surface layer. However, Abe teaches a transparent adhesive layer 24 in a graphic film 10 (page 3, 2nd and 3rd full paragraphs). See Fig. 1. Steelman and Abe are analogous art because they are from the same field of endeavor that is the graphic medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the transparent adhesive layer 24 of Abe with the invention of Steelman, and the motivation for combining would be to enhance the bond strength between the protective layer 14 and the soft coat surface layer.
Claim 18: Steelman teaches providing an image 22 or image 42 between a protective layer 14 and a receptor 32 or flexible film 44 (Figs. 2B, 3 and 4), wherein the receptor or the flexible film can be a flexible plastic such as vinyl; and it is to support and display graphics which results in acceptable image (col. 9, lines 50-67). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to omit the receptor 32 or flexible film 44 with the knowledge of consequence loss of the decorative film’s benefits. If an ordinary artisan desires a decorative film having a printed layer in contact with a pressure adhesive layer with less need for an acceptable image or acceptable printed layer, a decorative film without a receptor 32 or flexible film 44 would be selected with predictable results.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Steelman et al. (US 5,681,631) in view of Abe et al. (JP 2019206145 A) and Kamada et al. (US 2021/0138770 A1).
Claims 8-10: Steelman teaches a graphic appliqué 40 comprising a premask layer 12, a protective layer 14, an image 42, an optional image receptor layer 43, a flexible film 44, a pressure sensitive adhesive layer 46 and a release liner 48 in the order thereof (Fig. 3 and col. 10, lines 41-56). The premask layer 12 meets the claimed support film, and the protective layer 14 meets the claimed transparent surface layer. Steelman teaches the premask layer is removable (col. 5, lines 4-5). Steelman teaches the protective layer 14 has a soft coat surface layer on the side of the image 42, wherein the soft coat surface layer functions as the receptor layer for an inkjet image (col. 7, lines 19-31). The soft coat surface layer meets the claimed transparent ink receiving layer. The premask layer 12, the protective layer 14 and the soft coat surface layer meet the claimed ink receiving film.
Steelman teaches the soft coat surface layer comprises a polyurethane polymer (col. 7, line 54), but does not teach polyether-based polyurethane. However, Abe teaches an image receiving layer 34 in a graphic film 10, wherein the image receiving layer 34 comprises polyether-based polyurethane {instant claim 9} (page 6, 4th full paragraph), and the polyurethane is a water based {instant claim 9} (page 4, 6th full paragraph). See Fig. 1. Steelman and Abe are analogous art because they are from the same field of endeavor that is the graphic medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polyether-based polyurethane of Abe with the invention of Steelman, and the motivation for combining would be, as Abe suggested, to provide a non-yellowing image receiving layer (page 6, 4th full paragraph).
Steelman teaches the protective layer 14 comprises a polyurethane polymer (col. 8, line 15), but does not teach polycabonate-based polyurethane. However, Kamada teaches a protective layer 1 in a surface protection film 10, wherein the protective layer 1 [0058] comprises a polyurethane [0059] having a polycabonate-based polyol [0062] including a reaction product of dialkyl carbonate [0064] and a diol such alicyclic diol {instant claim 10} [0065]. See Fig. 1. Steelman and Kamada are analogous art because they are from the same field of endeavor that is the protective layer art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polycarbonate-based polyurethane of Kamada with the invention of Steelman, and the motivation for combining would be, as Kamada suggested, to provide a protective layer having an excellent swelling resistance [0062].
Claims 11-14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Steelman et al. (US 5,681,631) in view of Abe et al. (JP 2019206145 A) and Kamada et al. (US 2021/0138770 A1); and further evidenced by 3M Environmental, Health & Safety Bulletin 8700, “3M” hereinafter.
Claims 11, 12 and 14: Steelman teaches a graphic appliqué 40 comprising a premask layer 12, a protective layer 14, an image 42, an optional image receptor layer 43, a flexible film 44, a pressure sensitive adhesive layer 46 and a release liner 48 in the order thereof (Fig. 3 and col. 10, lines 41-56). The premask layer 12 meets the claimed support film, the protective layer 14 meets the claimed transparent surface layer, and the image 42 meets the claimed printed layer. Steelman teaches the premask layer is removable (col. 5, lines 4-5). Steelman teaches the protective layer 14 has a soft coat surface layer on the side of the image 42, wherein the soft coat surface layer functions as the receptor layer for an inkjet image (col. 7, lines 19-31). The soft coat surface layer meets the claimed transparent ink receiving layer. The premask layer 12, the protective layer 14 and the soft coat surface layer meet the claimed ink receiving film. The pressure sensitive adhesive layer 46 and the release liner 48 meet the claimed pressure sensitive adhesive film.
Steelman teaches the graphics appliqué 40 may be fabricated by applying a graphics transfer article 20 onto a pressure-sensitive film (44, 46,48, optionally 43) (col. 10, lines 50-52), wherein the graphics transfer article 20 is directly printed with an image 22 (col. 8, lines 63-65); and removing the premask layer 12 once the final product is installed (col. 5, lines 4-5).
Steelman teaches the soft coat surface layer comprises a polyurethane polymer (col. 7, line 54), but does not teach polyether-based polyurethane. However, Abe teaches an image receiving layer 34 in a graphic film 10, wherein the image receiving layer 34 comprises polyether-based polyurethane {instant claim 12} (page 6, 4th full paragraph), and the polyurethane is a water based {instant claim 12} (page 4, 6th full paragraph). See Fig. 1. Steelman and Abe are analogous art because they are from the same field of endeavor that is the graphic medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polyether-based polyurethane of Abe with the invention of Steelman, and the motivation for combining would be, as Abe suggested, to provide a non-yellowing image receiving layer (page 6, 4th full paragraph).
Steelman teaches the protective layer 14 comprises a polyurethane polymer (col. 8, line 15), but does not teach polycabonate-based polyurethane. However, Kamada teaches a protective layer 1 in a surface protection film 10, wherein the protective layer 1 [0058] comprises a polyurethane [0059] having a polycabonate-based polyol [0062] including a reaction product of dialkyl carbonate [0064] and a diol such alicyclic diol {instant claim 14} [0065]. See Fig. 1. Steelman and Kamada are analogous art because they are from the same field of endeavor that is the protective layer art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polycarbonate-based polyurethane of Kamada with the invention of Steelman, and the motivation for combining would be, as Kamada suggested, to provide a protective layer having an excellent swelling resistance [0062].
Claim 13: Steelman teaches colorant used to form the image 22, 42 includes 3M 8700 Series toner (col. 9, lines 7-15), and evidence shows that 3M 8700 toner is a solvent based toner (see page 1 under Product Description).
Claim 19: Steelman teaches providing an image 22 or image 42 between a protective layer 14 and a receptor 32 or flexible film 44 (Figs. 2B, 3 and 4), wherein the receptor or the flexible film can be a flexible plastic such as vinyl; and it is to support and display graphics which results in acceptable image (col. 9, lines 50-67). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to omit the receptor 32 or flexible film 44 with the knowledge of consequence loss of the decorative film’s benefits. If an ordinary artisan desires a decorative film having a printed layer in contact with a pressure adhesive layer with less need for an acceptable image or acceptable printed layer, a decorative film without a receptor 32 or flexible film 44 would be selected with predictable results.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Steelman et al. (US 5,681,631) in view of Abe et al. (JP 2019206145 A) and Kamada et al. (US 2021/0138770 A1).
Claims 15-17: Steelman teaches a graphic appliqué 40 comprising a premask layer 12, a protective layer 14, an image 42, an optional image receptor layer 43, a flexible film 44, a pressure sensitive adhesive layer 46 and a release liner 48 in the order thereof (Fig. 3 and col. 10, lines 41-56). The premask layer 12 meets the claimed support film, and the protective layer 14 meets the claimed transparent surface layer. Steelman teaches the premask layer is removable (col. 5, lines 4-5). Steelman teaches the protective layer 14 has a soft coat surface layer on the side of the image 42, wherein the soft coat surface layer functions as the receptor layer for an inkjet image (col. 7, lines 19-31). The soft coat surface layer meets the claimed transparent ink receiving layer. The premask layer 12, the protective layer 14 and the soft coat surface layer meet the claimed ink receiving film. The pressure sensitive adhesive layer 46 and the release liner 48 meet the claimed pressure sensitive adhesive film.
Steelman teaches the soft coat surface layer comprises a polyurethane polymer (col. 7, line 54), but does not teach polyether-based polyurethane. However, Abe teaches an image receiving layer 34 in a graphic film 10, wherein the image receiving layer 34 comprises polyether-based polyurethane {instant claim 16} (page 6, 4th full paragraph), and the polyurethane is a water based {instant claim 16} (page 4, 6th full paragraph). See Fig. 1. Steelman and Abe are analogous art because they are from the same field of endeavor that is the graphic medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polyether-based polyurethane of Abe with the invention of Steelman, and the motivation for combining would be, as Abe suggested, to provide a non-yellowing image receiving layer (page 6, 4th full paragraph).
Steelman teaches the protective layer 14 comprises a polyurethane polymer (col. 8, line 15), but does not teach polycabonate-based polyurethane. However, Kamada teaches a protective layer 1 in a surface protection film 10, wherein the protective layer 1 [0058] comprises a polyurethane [0059] having a polycabonate-based polyol [0062] including a reaction product of dialkyl carbonate [0064] and a diol such alicyclic diol {instant claim 17} [0065]. See Fig. 1. Steelman and Kamada are analogous art because they are from the same field of endeavor that is the protective layer art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the polycarbonate-based polyurethane of Kamada with the invention of Steelman, and the motivation for combining would be, as Kamada suggested, to provide a protective layer having an excellent swelling resistance [0062].
Response to Arguments
Independent Claims Interpretation
Instant invention according to independent claim 1 is directed to a decorative film 10 comprising a transparent surface layer 11 including polycarbonate-based polyurethane, a transparent ink-receiving layer 12 including polyether-based polyurethane, a printed layer 14 disposed on the transparent ink-receiving layer 12, and a pressure-sensitive adhesive layer 16 in this order. See also Fig. 1 and [0027].
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Instant invention according to independent claim 8 is directed to an ink-receiving film 20 comprising a support film 22, a transparent surface layer 11 including polycarbonate-based polyurethane, and a transparent ink-receiving layer 12 including polyether-based polyurethane in this order. See also Fig. 3A and [0033].
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Instant invention according to independent claim 11 is directed to a method for producing a decorative film 10, the method comprising: preparing an ink-receiving film 20 including a support film 22, a transparent surface layer 11 including polycarbonate-based polyurethane, and a transparent ink-receiving layer 12 including polyether-based polyurethane in this order; preparing a pressure-sensitive adhesive film 30 including a pressure-sensitive adhesive layer 16 and a release liner 18; printing an ink on the transparent ink-receiving layer 12 to form a printed layer 14; laminating the ink-receiving film 20 and the pressure-sensitive adhesive film 30 to bring the printed layer 14 and the pressure-sensitive adhesive layer 16 into contact with each other; and removing the support film 22 to form a decorative film 10. See also Figs. 3A-3D, [0033], [0100], [0106] and [0108].
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Instant invention according to independent claim 15 is directed to a decorative film kit comprising an ink-receiving film 20 including a support film 22, a transparent surface layer 11 including polycarbonate-based polyurethane, and a transparent ink-receiving layer 12 including polyether-based polyurethane in this order; and a pressure-sensitive adhesive film 30 including a pressure-sensitive adhesive layer 16 and a release liner 18. See also Fig. 3B, [0100] and [0119].
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Prior Arts Interpretation
Steelman et al. (US 5,681,631, primary reference) teaches a graphic appliqué 40 comprising a premask layer 12, a protective layer 14, an image 42, an optional image receptor layer 43, a flexible film 44, a pressure sensitive adhesive layer 46 and a release liner 48 in the order thereof (Fig. 3 and col. 10, lines 41-56). Steelman teaches the protective layer 14 has a soft coat surface layer on the side of the image 42, wherein the soft coat surface layer functions as the receptor layer for an inkjet image (col. 7, lines 19-31). However, Steelman fails to teach the soft coat surface layer comprises a polyether-based polyurethane, and the protective layer 14 comprises a polycabonate-based polyurethane.
Abe et al. (JP 2019206145 A) teaches an image receiving layer 34 in an image carrying film 30 of a graphic film 10, wherein the image receiving layer 34 comprises polyether-based polyurethane (page 6, 4th full paragraph), and the polyurethane is a water based (page 4, 6th full paragraph). See also Fig. 1. Abe is introduced to teach the claimed polyether-based polyurethane.
Kamada et al. (US 2021/0138770 A1) teaches a protective layer 1 in a surface protection film 10, wherein the protective layer 1 [0058] comprises a polyurethane [0059] having a polycabonate-based polyol [0062] including a reaction product of dialkyl carbonate [0064] and a diol such as alicyclic diol [0065]. See also Fig. 1. Kamada is introduced to teach the claimed polycarbonate-based polyurethane.
Responses
Applicant argued that the Patent Office has not provide a sufficient reason to us3Kamada's polycarbonate-based polyurethane in the Steelman/Abe structure; and that the Patent Office has not identified any deficiency in the transparent outer layer of the Steelman/Abe structure that would have led a person of ordinary skill in the art to further modify that structure with Kamada's specific display-film chemistry. This argument is not persuasive.
Primary reference Steelman failed to teach the claimed polyether-based polyurethane; the reference of Abe was introduced to teach the claimed polyether-based polyurethane; and the polyether-based polyurethane of Abe was combined with the reference of Steelman so as to provide a non-yellowing image receiving layer (see page 6, 4th full paragraph of Abe). In addition, primary reference Steelman failed to teach the claimed polycarbonate-based polyurethane; the reference of Kamada was introduced to teach the claimed polycarbonate-based polyurethane; and the polycarbonate-based polyurethane of Kamada was combined with the reference of Steelman so as to provide a protective layer having an excellent swelling resistance (see [0062] of Kamada). Abe was combined with Steelman, and Kamada was combined with Steelman; however, the references of Abe and Kamada were not combined with each other.
Applicant argued that the Patent Office's rationale that ink would contact the transparent surface layer is unsupported and inconsistent with both Abe and the claim structure, and that that rationale is not supported by the cited references and is inconsistent with both the pending claims and Abe. This argument is not persuasive.
The protective layer 14 of Steelman is equivalent to the claimed transparent surface layer, but Steelman does not teach the polyurethane polymer in the protective layer 14 is polycarbonate-based polyurethane as claimed. The reference of Kamada was introduced to teach the claimed polycarbonate-based polyurethane; and the polycarbonate-based polyurethane of Kamada was combined with the reference of Steelman so as to provide a protective layer having an excellent swelling resistance (see [0062] of Kamada). The motivation for combining Steelman and Kamada was extracted from Kamada not from Abe or the pending claims.
Applicant argued that Kamada's swelling-resistance teaching concerns a different issue than the one addressed by the claimed decorative film. This argument is not persuasive.
As previously noted, Steelman teaches polyurethane polymers as a suitable material for the protective layer 14 (col. 8, line 15) but does not expressly teach polycarbonate-based polyurethane as the polyurethane polymer. Kamada was introduced to teach the claimed polycarbonate-based polyurethane. Kamada teaches the protective layer 1 comprises polycarbonate-based polyurethane, and the polycarbonate-based polyurethane is desirable because it has excellent swelling resistance ([0058], [0060], [0062] and [0067]). As noted in the rejection, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to use the polycarbonate-based polyurethane of Kamada, as the polyurethane polymer of Steelman. The motivation for using this material would be, as Kamada suggested, to provide a transparent protective layer with excellent swelling resistance [0062]. The motivation for combining Steelman and Kamada was extracted from Kamada not from Abe or the claimed invention.
Furthermore, the reason for combining references in the rejection may be different from Applicant’s reason for using the claimed polycarbonate-based polyurethane material (MPEP 2144 IV “Rationale Different from Applicant’s is Permissible”). The motivation for using Kamada’s polycarbonate-based polyurethane does not need to be same as or similar to Applicant’s. The fact that Applicant uses the polyurethane-based polyurethane for a different purpose does not alter the conclusion that its use in a prior art article would be prima facia obvious from the purpose disclosed in the refence. In re Lintner, 173 USPQ 560.
Applicant argued that even if Kamada is considered analogous art, that does not establish motivation to combine in the claimed manner, and that the Patent Office must still articulate why its specific polyurethane chemistry would have been selected over other known polyurethane materials for the transparent surface layer of the combined Steelman/Abe structure. This argument is not persuasive.
Steelman teaches polyurethane polymers as a suitable material for the protective layer 14 (col. 8, line 15) but does not expressly teach polycarbonate-based polyurethane as the polyurethane polymer. Kamada was introduced to teach the claimed polycarbonate-based polyurethane. Kamada teaches the protective layer 1 comprises polycarbonate-based polyurethane, and the polycarbonate-based polyurethane is desirable because it has excellent swelling resistance ([0058], [0060], [0062] and [0067]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to use the polycarbonate-based polyurethane of Kamada, as the polyurethane polymer of Steelman. The motivation for using this material would be, as Kamada suggested, to provide a transparent protective layer with excellent swelling resistance [0062]. The motivation for combining Steelman and Kamada was extracted from Kamada not from Abe or the claimed invention. The polyether-based polyurethane of Abe was combined with Steelman, and the polycarbonate-based polyurethane of Kamada was combined with Steelman; however, the references of Abe and Kamada were not combined with each other.
Furthermore, the reason for combining references in the rejection may be different from Applicant’s reason for using the claimed polycarbonate-based polyurethane material (MPEP 2144 IV “Rationale Different from Applicant’s is Permissible”). The motivation for using Kamada’s polycarbonate-based polyurethane does not need to be same as or similar to Applicant’s. The fact that Applicant uses the polyurethane-based polyurethane for a different purpose does not alter the conclusion that its use in a prior art article would be prima facia obvious from the purpose disclosed in the refence. In re Lintner, 173 USPQ 560.
Applicant argued that Kamada's own disclosure shows that its performance is tied to its laminate architecture, not merely to the polyurethane species; and that Kamada does not support the assumption that one can simply extract that material from its context and transplant it into the Steelman/Abe decorative-film structure with a reasonable expectation of achieving the asserted benefit. This argument is not persuasive.
Steelman teaches polyurethane polymers as a suitable material for the protective layer 14 (col. 8, line 15) but does not expressly teach polycarbonate-based polyurethane as the polyurethane polymer. Kamada was introduced to teach the claimed polycarbonate-based polyurethane. Kamada teaches the protective layer 1 comprises polycarbonate-based polyurethane, and the polycarbonate-based polyurethane is desirable because it has excellent swelling resistance ([0058], [0060], [0062] and [0067]). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to use the polycarbonate-based polyurethane of Kamada, as the polyurethane polymer of Steelman. The motivation for using this material would be, as Kamada suggested, to provide a transparent protective layer with excellent swelling resistance [0062]. The motivation for combining Steelman and Kamada was extracted from Kamada not from Abe or the claimed invention. The polyether-based polyurethane of Abe was combined with Steelman, and the polycarbonate-based polyurethane of Kamada was combined with Steelman; however, the references of Abe and Kamada were not combined with each other. The surface protection film 10 of Kamada as a whole was not combined with the Steelman reference, only the polycarbonate-based polyurethane of Kamada was combined with the Steelman reference. Abe was combined with Steelman, and Kamada was combined with Steelman; however, the references of Abe and Kamada were not combined with each other.
Applicant argued impermissible hindsight use, and that the Patent Office has not explained why a person of ordinary skill would have selected that specific species from the range of known polyurethanes for the transparent surface layer of the Steelman/Abe decorative-film structure, except with knowledge of the present claims. This argument is not persuasive.
It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it considers only knowledge which was within the level of ordinary skill before the effective filing date of the invention and does not include knowledge gleaned only from the applicant’s disclosure, and such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392; 170 USPQ 209 (CCPA 1971).
In this case, Steelman teaches a graphic appliqué 40 comprising a premask layer 12 {meets the claimed support film}, a protective layer 14 {meets the claimed transparent surface layer}, an image 42 {meets the claimed printed layer}, an optional image receptor layer 43, a flexible film 44, a pressure sensitive adhesive layer 46 {meets the claimed pressure sensitive adhesive layer} and a release liner 48 {meets the claimed release liner} in the order thereof (Fig. 3 and col. 10, lines 41-56). The premask layer 12, the protective layer 14 and the soft coat surface layer meet the claimed ink receiving film. The pressure sensitive adhesive layer 46 and the release liner 48 meet the claimed pressure sensitive adhesive film.
Steelman teaches the premask layer is removable (col. 5, lines 4-5). Steelman teaches the protective layer 14 has a soft coat surface layer on the side of the image 42, wherein the soft coat surface layer functions as the receptor layer for an inkjet image (col. 7, lines 19-31). The soft coat surface layer meets the claimed transparent ink receiving layer. The premask layer 12, the protective layer 14 and the soft coat surface layer meet the claimed ink receiving film. The pressure sensitive adhesive layer 46 and the release liner 48 meet the claimed pressure sensitive adhesive film.
Steelman teaches the soft coat surface layer comprises a polyurethane polymer (col. 7, line 54), but does not teach polyether-based polyurethane as one of the materials forming the soft coat surface layer.
The rejection relies on the Abe reference to teach the claimed polyether-based polyurethane. Abe teaches an image receiving layer 34 in a graphic film 10, wherein the image receiving layer 34 comprises polyether-based polyurethane (page 6, 4th full paragraph), and that the polyurethane is a water based (page 4, 6th full paragraph). See also Fig. 1 of Abe. The rejection reasonably combined the Steelman and Abe references because they are in the field of graphic medium art and the motivation for combining the polyether-based polyurethane of Abe with the invention of Steelman is to provide a non-yellowing image receiving layer (see page 6, 4th full paragraph of Abe).
Steelman teaches the protective layer 14 comprises a polyurethane polymer (col. 8, line 15), but does not teach polycabonate-based polyurethane.
The prior art rejection cites the Kamada reference to teach polycarbonate-based polyurethanes as transparent, protective layers. Kamada teaches a protective layer 1 in a surface protection film 10, wherein the protective layer 1 [0058] comprises a polyurethane [0059] having a polycabonate-based polyol [0062] including a reaction product of dialkyl carbonate [0064] and a diol such alicyclic diol [0065]. See also Fig. 1 of Kamada. The rejection combined the references of Steelman and Kamada as they are in the field of protective layer art and the polyurethane art, and motivation for using a polycarbonate-based polyurethane as taught in Kamada as a clear, protective coating in the Steelman invention would be to provide a transparent, protective layer having an excellent swelling resistance (see [0062] of Kamada).
In the prior art rejections, the Examiner determined the scope and contents of the prior arts, described the differences between the prior art and the claims at issue, showed the level of ordinary skill in the pertinent art, and considered objective evidence present in the application indicating obviousness or non-obviousness; thus, combining Abe and Kamada with Steelman is proper and not based on inappropriate hindsight.
Abe was combined with Steelman, and Kamada was combined with Steelman; however, the references of Abe and Kamada were not combined with each other. The motivation for combining Steelman and Kamada was extracted from Kamada not from Abe or the current invention. Paragraph [0062] of Kamada expressly discloses the motivation for combining the polycarbonate-based polyurethane of Kamada with the invention of Steelman.
Applicant argued that the pending comparative data remain relevant to the claimed material combination; and that the claims are not directed to the transparent surface layer in isolation; rather, the claims are directed to the claimed combination of layers and materials, thus, the data remain relevant objective evidence that the claimed pairing is associated with improved performance of the claimed decorative-film construction. This argument is not persuasive.
It is noted that the examples are not commensurate in scope with the claimed invention and therefore the argument is not persuasive.
Comparative Example 1: A mixture of PU1 and PU2 [0144] is used instead of PU3 [0124] in the transparent surface layer (see also Table 1 and Example 1). A PU3 [0144] is used instead of a mixture of PU1 and PU2 [0123] in the transparent ink receiving layer (see also Table 1 and Example 1). Comparative Example 1 shows poor results (Table 2), but it is not clear if the change in the transparent surface layer controls the results or the change in the transparent ink receiving layer controls the results.
Comparative Example 2: An acrylic material [0145] is used instead of PU3 [0124] in the transparent surface layer (see also Table 1 and Example 1). An acrylic material [0145] is used instead of a mixture of PU1 and PU2 [0123] in the transparent ink receiving layer (see also Table 1 and Example 1). Comparative Example 2 shows poor results (Table 2), but it is not clear if the change in the transparent surface layer controls the results or the change in the transparent ink receiving layer controls the results.
Comparative Example 3: A mixture of PU1 and PU2 [0146] is used instead of PU3 [0124] in the transparent surface layer, and the same layer is also serving as the transparent ink receiving layer [0146] (see also Table 1 and Example 1). Thus, in Comparative Example 3, there is a single layer functioning both as the transparent surface layer and the transparent ink receiving layer instead of separate layers of transparent surface layer and transparent ink receiving layer. Comparative Example 3 shows poor results (Table 2), and such poor results obtained because of the use of single layer functioning both as the transparent surface layer and the transparent ink receiving layer instead of separate layers of transparent surface layer and transparent ink receiving layer.
Therefore, Table 2 fails to show the criticality of use of the polycarbonate-based polyurethane in the transparent surface layer over other type of polyurethane. In addition, Applicant failed to further explain how Examiner’s interpretation and explanation is incorrect.
Applicant argued that all elements have not been shown; and page 6 of Abe reference does not disclose a water-based polyurethane. This argument is not persuasive.
Abe teaches an image receiving layer 34 in a graphic film 10, wherein the image receiving layer 34 comprises polyether-based polyurethane {instant claim 2} (page 6, 4th full paragraph), and the polyurethane is a water based {instant claim 2} (page 4, 6th full paragraph). On page 4, 6th full paragraph, Abe expressly teaches the polyurethane can be a water based. There is nothing that indicates that the disclosure in page 4 and the disclosure in page 6 are in two different and distinct embodiments.
Applicant argued that the cited art does not teach or suggest requiring contact between the printed layer and the pressure-sensitive adhesive layer; and that the Patent Office is essentially proposing that one of ordinary skill in the art would be motivated to omit a functional component in order to achieve worse results-namely, a less acceptable image; therefore, there is no rational basis for such a modification, and the Patent Office has not identified any benefit that would flow from degrading the performance of the decorative film. This argument is not persuasive.
The Examiner did not propose that one of ordinary skill in the art would be motivated to omit a functional component in order to achieve worse results. The Examiner recognized and interpreted the invention of Steelman, and the claimed invention as follow so as to show that it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to omit the receptor 32 or flexible film 44 with the knowledge of consequence loss of the decorative film’s benefits.
Steelman teaches providing an image 22 or image 42 between a protective layer 14 and a receptor 32 or flexible film 44 (Figs. 2B, 3 and 4), wherein the receptor 32 or flexible film 44 would fall between the image 22 or 42 and the PSA layer 46 (Figs. 3 and 4). Steelman teaches the receptor 32 or the flexible film 44 can be a flexible plastic such as vinyl; and it is to support and display graphics which results in acceptable image by preventing ink bleeding and by providing image abrasion protection (col. 9, lines 50-67). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to omit the receptor 32 or flexible film 44 with the knowledge of consequence loss of the decorative film’s benefits. If an ordinary artisan desires a decorative film having a printed layer in contact with a pressure adhesive layer with less need for an acceptable image or acceptable printed layer formed by ink bleeding or image abrasion, a decorative film without a receptor 32 or flexible film 44 would be selected with predictable results.
For the above reasons claims 1-18 stand rejected, and new claim 19 is included in the prior art rejections.
Correspondence
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BS
July 14, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights