DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the addition of new claim 11 in the amendments filed 6/10/2026.
In light of the new and the updated rejections set forth below, the following action is made non-final.
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 .
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 11 is 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 claim 11, it is unclear if the recited water-based polyether-based polyurethane and the recited pigment are the same as the water-based polyether-based polyurethane and the pigment of current claim 1, or if the recited water-based polyether-based polyurethane and the recited pigment are in addition to the water-based polyether-based polyurethane and the pigment of current claim 1.
Claim Rejections - 35 USC § 103
Claim(s) 1-9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2015/0086762 A1) with the additional disclosure of the incorporated Ho reference (US 5798409).
Regarding claim 1, Johnson teaches a film composite (100) (decorative film) comprising, in order, adhesive layer (120), color layer (130) and transparent protective layer (150) (para 0116-0118; Fig. 1); wherein,
said adhesive layer (120) comprises PSA and/or hot melts comprising (meth)acrylate copolymers (para 0123);
said color layer (130) comprises a colorant such as, inter alia, titanium dioxide (pigment) and a polymeric material such as, inter alia, combinations of acrylic and two-part polyurethanes (colored polyurethane layer) comprising polyols and polyisocyanates (para 0125, 0129, 0138-0139), with the polyol comprising polyester polyols, polycarbonate polyols and polyether polyols (polyether-based polyurethane) (para 0140 and 0144);
and said transparent protective layer (150) (transparent surface layer) is in contact (disposed adjacent) with the color layer (130).
While Johnson does not explicitly disclose that the polyether polyol-based polyurethanes of the color layer (130) are water-based, Johnson does instruct that the two-part polyurethanes are selected from those disclosed in the incorporated Ho invention (para 0152), which are water-based 2-part polyurethanes (see, for example, column 2, lines 15-31 of Ho) comprising polyether diols (see, for example, column 11, line 65 to column 12, line 10 of Ho).
Indeed, it would have been obvious to one skilled in the art before the effective filing date of the present invention to employ a water-based 2-part polyurethane comprising polyether diols as in the present invention given that Johnson explicitly contemplates the use of the polymeric components disclosed in Ho in the inventive color layer (130).
Regarding claim 2, Johnson teaches that the transparent protective layer (150) comprises transparent polyurethanes (para 0164).
Regarding claim 3, Johnson teaches that the transparent polyurethanes of the transparent protective layer (150) comprise the two-part polyurethanes disclosed in the incorporated Ho invention (para 0152), which comprises polycarbonate diols (see, for example, column 12, lines 11-15 of Ho)
Regarding claim 7, as noted above, Johnson teaches that the color layer (130) comprises the disclosed polyurethanes such as the water-based polyether polyurethanes, and also contemplates combinations of the polyurethanes with acrylic polymers (polyacrylate) (para 0129, 0136) and polyurethanes comprising polyester polyols (para 0144) towards the water-based polyester-based polyurethanes in combination with the water-based polyether-based polyurethanes of the incorporated Ho invention (see, for example, column 3, lines 57-60 therein).
Regarding claim 8, as noted above, Johnson teaches that the color layer (130) comprises a colorant such as, inter alia, titanium dioxide.
Regarding claims 4 and 6, Johnson does not specify a tensile strength at 2% strain of 2 N/25 mm or greater and an elongation of 30% or greater, or tensile strength at 2% strain of 20 N/25 mm or less and an elongation of 120% or greater, for the disclosed film composite (100) comprising the adhesive layer (120), color layer (130) and transparent protective layer (150).
However, Johnson does contemplate elongation at break values of 400% or more for the disclosed color layer (130), or any layer containing polyurethanes (e.g., the transparent protective layer (150)), with the hard segments of the polyurethanes comprising polyisocyanates (para 0144-0146). The Examiner also notes that the elongation at break for the inventive examples of the color layer (130) demonstrate values well above 30% in the machine direction (MD) and cross direction (CD) (Table 102, para 0212; Table 104, para 0215) as does those for the clear coat (202) (Table 203; para 0271). Similarly, as set forth in the above-noted Tables, Johnson also discloses tensile strengths as high as 44.8 MPa for the color layer (130).
Johnson discloses the elongation at break of the color layer (130) and the transparent protective layer (150) only, as opposed to the entirety of the layer (120)/layer (130)/layer (150) laminate, and under different test conditions and in different units (MPa versus N/25 mm) as that presently claimed. Johnson also discloses the peak tensile strength of the color layer (130) only, as opposed to the entirety of the layer (120)/layer (130)/layer (150) laminate at 2% strain.
However, the Examiner respectfully submits that the tensile strength under a specific strain and the elongation at break are related mechanical properties that demonstrate, respectively, the amount of force that a material (e.g., a layer) experiences at a particular strain percentage and the percentage of the material’s original length that the material can be stretched before breaking. In addition, for example, the elongation at break can be adjusted via adjusting the functionality of the components comprising the polyurethanes (para 0130 of Johnson).
Thus, providing the entirety of the composition laminate of layer (120)/layer (130)/layer (150) with the presently claimed tensile strength and elongation at break would have been an obvious choice to one skilled in the art based on the mechanical properties required of said laminate under the conditions of use (e.g., strain conditions) of the prior art’s intended application as in the present invention.
Regarding claim 5, Johnson/Ho does not specify that the polyurethane transparent protective layer (150) comprises a non-yellowing thermoplastic polyurethane elastomer, but Johnson/Ho do disclose that the polyurethanes comprising the transparent protective layer (150) comprise hard segment polyisocyanates (i.e., plastic properties) and polyether polyols as noted above, the ether chain of the latter providing the polyurethanes with flexibility (i.e., elastomeric properties). Johnson also specifies that the color and transparent protective layers comprises flexible segments (para 0161).
Johnson also teaches that polyurethanes prepared for applications where weathering is likely are formed from components free from aromatic groups (para 0139). Johnson’s invention also contemplates polyurethanes demonstrating low yellowing (para 0292; Table U1).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention that the polyurethanes of the transparent protective layer (150) demonstrate non-yellowing and thermoplastic elastomeric properties based on the required aesthetic and flexibility of the transparent protective layer (150) as required by the prior art’s intended application as in the present invention.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2015/0086762 A1) in view of Couturier et al. (US 2017/0029632 A1).
Regarding claim 9, Johnson is silent to the composite (100) demonstrating the presently claimed total heat release under the presently claimed conditions.
However, the color layer (103) of Johnson does comprise flame retardants (para 0154). The Examiner also respectfully notes that,
Where the claimed and prior art products are identical or substantially identical in
structure or composition, a prima facie case of either anticipation or obviousness has
been established. "Products of identical chemical composition cannot have mutually
exclusive properties." A chemical composition and its properties are inseparable.
Therefore, if the prior art teaches the identical chemical structure, the properties applicant
discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
In addition, Couturier instructs that the heat release rate for a polyurethane foam is a measure of the rate at which a material releases thermal energy (i.e., the spread of fire or flames) (para 0033-0034, 0045).
Therefore, given that the Johnson reference teaches a layered structure identical to that presently claimed, to include the polyurethanes presently claimed and the employment of flame retardants, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the film laminate (100) of Johnson with the presently claimed heat release of 8MJ/m2 or less under the presently claimed conditions based on the flame retardancy required of the prior art’s intended application as in the present invention.
Regarding claim 11, while it is recognized that the phrase “consisting essentially of” narrows the scope of the claims to the specified materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Further, the burden is on the applicant to show that the additional ingredients in the prior art would in fact be excluded from the claims and that such ingredients would materially change the characteristics of the applicant’s invention, See MPEP 2111.03.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2015/0086762 A1) in view of Abe et al. (WO 2008157611 A2).
Regarding claim 10, Johnson teaches that the adhesive layer (120) comprises a PSA comprising (meth)acrylate copolymers (para 0123), but is silent to the PSA comprising a carboxy group-containing (meth)acrylic polymer, an amino group-containing (meth)acrylic polymer and 5 to 50 mass% titanium dioxide.
However, Abe teaches a colored adhesive comprising a carboxylic group-containing adhesive polymer, a pigment and an amino group-containing adhesive polymer for use in marking film comprising a base film layer and an adhesive layer comprising the colored adhesive (page 2, line 14 to page 3 line 4). The pigment is white titanium dioxide present at 25 to 150 parts by weight per 100 parts by weight of the carboxylic group-containing polymer (page 7, lines 30-33). The combination of the carboxylic and amino group-containing polymers provides a well-dispersed and stable pigment in the adhesive, and thus allows for the inclusion of more pigments (page 4, lines 10-16).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the adhesive composition of Abe with the presently claimed proportions of titanium oxide (i.e., 5 to 50 mass%), and to employ the adhesive composition of Abe as the adhesive layer (120) of Johnson towards said adhesive layer (120) of the film composite (100) demonstrating a degree of white coloring based on the aesthetics desired/required of the prior art’s intended application as in the present invention.
Response to Arguments
Applicant's arguments, see the remarks filed 6/10/2026, with respect to the rejection of claims 1-3 and 7-8 under 35 U.S.C. 102(a)(1) as set forth in paragraph 3 of the action mailed 3/31/2026, have been fully considered. The Applicant’s attention is respectfully directed to the updated prior art rejections set forth above, wherein the claims have been rejected under 35 U.S.C. 103 over the previously cited Johnson reference and the combination of the Johnson/Abe references. The Examiner’s response to the Applicant’s arguments will address the obviousness of the presently claimed invention over said references.
Firstly, the Examiner notes that the Ho reference is not to be considered a secondary reference towards remedying the deficiencies of the Johnson reference. The Johnson disclosure has specifically “incorporated by reference” the entirety of the Ho disclosure, and thus the Ho invention is a part of the Johnson disclosure. Thus, while Johnson teaches a color layer (130) that comprises polyester polyols or polyacrylic polyols, as noted by the Applicant (see para 0140 of the reference), Johnson also teaches polyether polyols. And by way of Ho as previously and currently cited, Johnson also teaches that the color layer (130) comprises polyether-polyol polyurethanes that are water-based.
Beginning at paragraph 0125, Johnson begins discussing the specifics of the color layer (130), to include the colorants and polymeric material included therein. As noted at paragraph 0129, and as acknowledged by the Applicant, Johnson begins the discussion on said polymeric materials, with paragraph 0138 introducing the polyurethane polymeric materials and concluding at paragraph 0153. Thus, one of ordinary skill would recognize that the water-based polyether polyurethanes of Ho disclosed in paragraph 0125 of Johnson were considered for the polyurethane polymeric material comprising the color layer (103).
Moreover, whether optional or otherwise, Ho, and thus Johnson, conspicuously disclose polyether polyols employed in the inventive polyurethanes such as those cited by the Applicant (column 11, lines 46-47) as well as at column 11, line 65 to column 12, line 10. It is also significant to note that claims of Johnson are specifically directed to said polymeric material comprising a polyurethane. Thus, in considering the singular disclosure of Johnson/Ho, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ a water-based polyether polyurethane as the polymeric material comprising the color layer (103) as in the present invention.
The Examiner repeats the above-noted response to the Applicant’s arguments for both of current claims 3 and 7. That is, the limitations recited in each of said current claims 3 and 7 are at least obvious over the singular disclosure of Johnson/Ho.
Turning now to current claims 4 and 6, the Applicant’s attention is respectfully directed to the prior art rejections set forth above, wherein it is noted that Johnson/Ho renders obvious the presently claimed tensile strength and elongation at break as the selection of such would have been an obvious choice to one skilled in the art based on the mechanical properties and the conditions of use (e.g., strain conditions) of the prior art’s intended application as in the present invention.
Similarly, Johnson/Ho teaches polyurethanes having both thermoplastic and elastomeric properties. Johnson/Ho also instructs one of ordinary skill towards polyurethanes demonstrating low yellowing as well as polyurethanes prepared for applications where weathering is likely are formed from components free from aromatic groups. Moreover, as demonstrated via the secondary Couturier invention, which instructs that the heat release rate for a polyurethane foam is a measure of the rate at which a material releases thermal energy (i.e., the spread of fire or flames), one skilled in the art would have recognized both the means (i.e., the inclusion of the flame retardants of Johnson within the layer(s) of the film composite (100)) and motivation (flame retardancy) for accomplishing the presently claimed heat release rates based on the environmental conditions of the prior art’s intended application.
Lastly, the Applicant’s attention is respectfully directed to the prior art rejection over Johnson/Abe, wherein Abe teaches, inter alia, a colored adhesive comprising a white pigment of titanium dioxide present at 25 to 150 parts by weight per 100 parts by weight of the carboxylic group-containing polymer (page 7, lines 30-33). Indeed, the Examiner respectfully submits that one skilled in the art would recognize that the inclusion of pigment in certain proportions, such as those presently claimed, is based on the degree of pigmentation required for the aesthetics and/or practical aspects of the prior art’s intended application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 7/27/2026
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