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 .
Summary
The Applicants arguments and claim amendments received on 06/18/2026 are entered into the file. Currently, claims 1-11 and 17-55 are withdrawn; claim 12 is amended; claims 15-16 are cancelled; resulting in claims 12-14 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/24/2026 is considered by the examiner.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shibata et al. (JP 2009-018439A, machine translation provided by Applicant; previously cited) as evidenced by “Propylene” by Lenntech https://www.lenntech.com/polypropylene.htm, via Internet Wayback Machine https://web.archive.org/web/20191017111648/https://www.lenntech.com/polypropylene.htm, October 17, 2019; previously cited).
Regarding claim 12, Shibata et al. teaches a decorative sheet comprising a colored thermoplastic resin layer (1) comprising polypropylene, a urethane adhesive resin (3) and a transparent thermoplastic resin (4) comprised of polypropylene ([0010-0016]).
The limitation reciting “each of the colored thermoplastic resin layer and the transparent thermoplastic resin layer is a resin formed of a resin composition containing biomass-derived polypropylene which is obtained by polymerizing a monomer containing biomass-derived propylene” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Shibata et al. discloses the structure of claim 12 as described above, wherein both the colored thermoplastic layer and the transparent thermoplastic resin are comprised of polypropylene.
Shibata et al. does not expressly teach the density of the polypropylene, density is an inherent property of the polymer, which as evidenced by “Propylene” by Lenntech, which teaches that polypropylene has a density range of 0.910-0.928 g/mL (0.910-0.928 g/cm3), completely encompassed within the claimed range of 0.90-0.96 g/cm3 and the claimed range of 0.90-1.40 g/cm3 recited by the claim.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horio et al. (US 2019/0248100; previously cited) as evidenced by “Propylene” by Lenntech https://www.lenntech.com/polypropylene.htm, via Internet Wayback Machine https://web.archive.org/web/20191017111648/https://www.lenntech.com/polypropylene.htm, October 17, 2019; previously cited).
Regarding claim 12, Horio et al. taches a decorative sheet comprising a base material sheet (2) comprising homopolypropylene, colored by adding a colorant, a transparent adhesive layer (7) and a transparent resin layer comprising homopolypropylene (4) ([0039-0044, 0052-0056, 0091-0093]).
The limitation reciting “each of the colored thermoplastic resin layer and the transparent thermoplastic resin layer is a resin formed of a resin composition containing biomass-derived polypropylene which is obtained by polymerizing a monomer containing biomass-derived propylene” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Horio et al. discloses the structure of claim 12 as described above, wherein both the base material sheet and the transparent resin layer are comprised of homopolypropylene.
Horio et al. does not expressly teach the density of the polypropylene, density is an inherent property of the polymer, which as evidenced by “Propylene” by Lenntech, which teaches that polypropylene has a density range of 0.910-0.928 g/mL (0.910-0.928 g/cm3), completely encompassed within the claimed range of 0.90-0.96 g/cm3 and f 0.90-1.40 g/cm3 recited by the claim.
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.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata et al. (JP 2009-018439A, machine translation provided by Applicant).
Regarding claim 13, Shibata et al. teaches all the limitations of claim 12 above. While the reference does not expressly teach that the colored thermoplastic resin layer (1) and the transparent thermoplastic resin layer (4) each contain polypropylene in an amount of 5 mass% or greater and 99 mass% or less relative to the total mass of each individual layer, such a modification would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, based upon the desired properties of the resultant film layers.
The limitations reciting “biomass-derived polypropylene” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Shibata et al. discloses the structure of claim 12 as described above.
Regarding claim 14, Shibata et al. teaches all the limitations of claim 12 above, and further teaches that the thickness of the colored thermoplastic resin layer (1) is preferably between 12 and 25mm ([0010]), completely encompassed by the claimed range of 10 mm or greater and 150 mm or less.
Shibata et al. further teaches that the thickness of the transparent thermoplastic resin layer (4) is preferably between 70 mm and 200 mm ([0013]), which overlaps the claimed range of 10 mm or greater and 150 mm or less. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Horio et al. (US 2019/0248100).
Regarding claim 13, Horio et al. teaches all the limitations of claim 12 above.
While the reference does not expressly teach that the colored thermoplastic resin layer (1) and the transparent thermoplastic resin layer (4) each contain polypropylene in an amount of 5 mass% or greater and 99 mass% or less relative to the total mass of each individual layer, such a modification would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, based upon the desired properties of the resultant film layers.
The limitations reciting “biomass-derived polypropylene” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Horio et al. discloses the structure of claim 12 as described above.
Regarding claim 14, Horio et al. teaches all the limitations of claim 12 above, and further teaches that the thickness of the base material sheet (2) is preferably 40 mm to 100 mm ([0043]), completely encompassed by the claimed range of 10 mm or greater and 150 mm or less.
Horio et al. further teaches that the thickness of the transparent resin layer comprising homopolypropylene (4) is 40 mm or more and 300 mm or less ([0056]), which overlaps the claimed range of 10 mm or greater and 150 mm or less. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Claim 12, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata et al. (JP 2009-018439A, machine translation provided by Applicant) in view of Boswell et al. (US 2011/0120902) as evidenced by “Propylene” by Lenntech https://www.lenntech.com/polypropylene.htm, via Internet Wayback Machine https://web.archive.org/web/20191017111648/https://www.lenntech.com/polypropylene.htm, October 17, 2019).
Regarding claim 12, Shibata et al. teaches a decorative sheet comprising a colored thermoplastic resin layer (1) comprising polypropylene, a urethane adhesive resin (3) and a transparent thermoplastic resin (4) comprised of polypropylene ([0010-0016]).
Should the Applicant disagree with the above interpretation regarding the limitation reciting “each of the colored thermoplastic resin layer and the transparent thermoplastic resin layer is a resin formed of a resin composition containing biomass-derived polypropylene which is obtained by polymerizing a monomer containing biomass-derived propylene” being a product by process limitation, Boswell et al. teaches a container, label and cap made from sustainable materials ([0007]). Boswell et al. teaches that the label (decorative sheet) is comprised of a substrate including a bio-based polymer, such as bio based polypropylene, wherein the substrate has a bio-based content of at least 90% ([0010, 0013, 0016, 0022, 0028, 0045-0050]). The container, label and cap taught by Boswell et al. is advantageous because it has the same look and feel as similar articles made from petroleum-based sources, yet has improved sustainability, as well as reduction in fossil fuel consumption and carbon dioxide mission ([0020-0021]). Boswell et al. further teaches that increasing the amount of bio-based polymers used in the claimed invention can increase the stress crack resistance, impact resistance, surface gloss and decrease opaqueness ([0023]). Boswell et al. teaches a specific embodiment wherein bio-based polypropylene is used for the container, cap and label, such that when the label is comprised of bio-based polypropylene, it has a density of less than 1g/mL to aid in separation during floatation process of recycling ([0072-0085]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the colored thermoplastic resin layer (1) comprising polypropylene and the transparent thermoplastic resin (4) comprised of polypropylene of the decorative sheet taught by Shibata et al. to include bio-based polypropylene as taught by Boswell et al., as Bowell et al. teaches numerous environmental advantages to using bio-based polymers. Boswell et al. further teaches that bio-based polymers have the same look and feel as petroleum based polymers, but are advantageous in their decrease in fossil fuel consumption and carbon dioxide emission, while increasing stress crack resistance, impact resistance and surface gloss. One of ordinary skill in the art would be motivated to make such a substitution based upon the advantageous environmental impacts disclosed by Boswell et al.
While the reference does not expressly teach the density of the polypropylene, density is an inherent property of the polymer, which as evidenced by “Propylene” by Lenntech, which teaches that polypropylene has a density range of 0.910-0.928 g/mL (0.910-0.928 g/cm3), completely encompassed within the claimed range of 0.90-0.96 g/cm3 and 0.90-1.40 g/cm3 recited by claim 12. Furthermore, as previously stated, Boswell et al. teaches when the label is comprised of bio-based polypropylene, it has a density of less than 1g/mL to aid in separation during floatation process of recycling ([0072-0085]), which overlaps with both of the ranges recited by claim 12 as well as those taught by Lenntech. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Regarding claim 13, Shibata et al. in view of Boswell et al. teaches all the limitation of claim 12 above. Boswell et al. further teaches that the properties of the sustainable article can be tuned by varying the amount of bio-material, recycled material and regrind material used to form the container, cap and label, wherein the label can have a bio-based content of at least about 90% ([0023-0025, 0072-0085]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amount of bio-based material in the colored thermoplastic resin layer (1) comprising polypropylene and the transparent thermoplastic resin (4) comprised of polypropylene of the decorative sheet taught by Shibata et al. in view of Boswell et al. to be at least 90% in content (mass) as taught by Bowell et al. to achieve the advantageous environmental impacts.
Regarding claim 14, Shibata et al. in view of Boswell et al. teaches all the limitations of claim 12 above, and Shibata et al. further teaches that the thickness of the colored thermoplastic resin layer (1) is preferably between 12 and 25mm ([0010]), completely encompassed by the claimed range of 10 mm or greater and 150 mm or less.
Shibata et al. further teaches that the thickness of the transparent thermoplastic resin layer (4) is preferably between 70 mm and 200 mm ([0013]), which overlaps the claimed range of 10 mm or greater and 150 mm or less. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Claims 12, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Horio et al. (US 2019/0248100) in view of Boswell et al. (US 2011/0120902) as evidenced by “Propylene” by Lenntech https://www.lenntech.com/polypropylene.htm, via Internet Wayback Machine https://web.archive.org/web/20191017111648/https://www.lenntech.com/polypropylene.htm, October 17, 2019).
Regarding claim 12, Horio et al. taches a decorative sheet comprising a base material sheet (2) comprising homopolypropylene, colored by adding a colorant, a transparent adhesive layer (7) and a transparent resin layer comprising homopolypropylene (4) ([0039-0044, 0052-0056, 0091-0093]).
Should the Applicant disagree with the above interpretation regarding the limitation reciting “each of the colored thermoplastic resin layer and the transparent thermoplastic resin layer is a resin formed of a resin composition containing biomass-derived polypropylene which is obtained by polymerizing a monomer containing biomass-derived propylene” being a product by process limitation, Boswell et al. teaches a container, label and cap made from sustainable materials ([0007]). Boswell et al. teaches that the label (decorative sheet) is comprised of a substrate including a bio-based polymer, such as bio based polypropylene, wherein the substrate has a bio-based content of at least 90% ([0010, 0013, 0016, 0022, 0028, 0045-0050]). The container, label and cap taught by Boswell et al. is advantageous because it has the same look and feel as similar articles made from petroleum-based sources, yet has improved sustainability, as well as reduction in fossil fuel consumption and carbon dioxide mission ([0020-0021]). Boswell et al. further teaches that increasing the amount of bio-based polymers used in the claimed invention can increase the stress crack resistance, impact resistance, surface gloss and decrease opaqueness ([0023]). Boswell et al. teaches a specific embodiment wherein bio-based polypropylene is used for the container, cap and label, such that when the label is comprised of bio-based polypropylene, it has a density of less than 1g/mL to aid in separation during floatation process of recycling ([0072-0085]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the base material sheet (2) and the transparent resin layer comprising homopolypropylene (4) of the decorative sheet taught by Horio et al. et al. to include bio-based polypropylene as taught by Boswell et al., as Bowell et al. teaches numerous environmental advantages to using bio-based polymers. Boswell et al. further teaches that bio-based polymers have the same look and feel as petroleum based polymers, but are advantageous in their decrease in fossil fuel consumption and carbon dioxide emission, while increasing stress crack resistance, impact resistance and surface gloss. One of ordinary skill in the art would be motivated to make such a substitution based upon the advantageous environmental impacts disclosed by Boswell et al.
While the reference does not expressly teach the density of the polypropylene, density is an inherent property of the polymer, which as evidenced by “Propylene” by Lenntech, which teaches that polypropylene has a density range of 0.910-0.928 g/mL (0.910-0.928 g/cm3), completely encompassed within the claimed range of 0.90-0.96 g/cm3 and 0.90-1.40 g/cm3 recited by claim 12. Furthermore, as previously stated, Boswell et al. teaches when the label is comprised of bio-based polypropylene, it has a density of less than 1g/mL to aid in separation during floatation process of recycling ([0072-0085]), which overlaps with both of the ranges recited by claim 12 as well as those disclosed by Lenntech. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Regarding claim 13, Horio et al. in view of Boswell et al. teaches all the limitation of claim 12 above. Boswell et al. further teaches that the properties of the sustainable article can be tuned by varying the amount of bio-material, recycled material and regrind material used to form the container, cap and label, wherein the label can have a bio-based content of at least about 90% ([0023-0025, 0072-0085]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amount of bio-based material in the base material sheet (2) and the transparent resin layer comprising homopolypropylene (4) of the decorative sheet taught by Horio et al. in view of Boswell et al. to be at least 90% in content (mass) as taught by Bowell et al. to achieve the advantageous environmental impacts.
Regarding claim 14, Horio et al. in view of Boswell et al. teaches all the limitations of claim 12 above, and Horio et al. further teaches that the thickness of the base material sheet (2) is preferably 40 mm to 100 mm ([0043]), completely encompassed by the claimed range of 10 mm or greater and 150 mm or less.
Horio et al. further teaches that the thickness of the transparent resin layer comprising homopolypropylene (4) is 40 mm or more and 300 mm or less ([0056]), which overlaps the claimed range of 10 mm or greater and 150 mm or less. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Response to Arguments
Response-Claim Rejections - 35 USC § 102 and 103
Applicant's arguments filed 06/18/2026 have been fully considered but they are not persuasive.
The Applicants argue on page 13 that biomass-derived polypropylene is structurally different from fossil fuel derived polypropylene, and one of ordinary skill in the art would know that biomass-derived polypropylene contains C14 while fossil-derived polypropylene contains little to no C14. The Applicant further argues on page 13 that the secondary reference to Boswell supports this assertion, which states that petrochemicals have less than about 1pMC, typically less than 0.1 pMC “bomb carbon” (C14) (see Boswell [0090-0091]). This argument is not persuasive.
Independent claim 12 recites “each of the colored thermoplastic resin layer and the transparent thermoplastic resin layer is a resin layer formed of a resin composition containing biomass-derived polypropylene” (emphasis added), wherein “containing” is an open ended transitional phrase that does not exclude additional, unrecited components from being present (see MPEP 2111.03). Additionally, dependent claim 13 recites that both the colored thermoplastic resin layer and the transparent thermoplastic resin layer contain the biomass-derived polypropylene in an amount in the range of 5-99 mass%, further supporting the embodiment wherein other components, including thermoplastic resins could be present.
In the Applicants arguments, as well as in the secondary reference to Boswell, it is disclosed that petroleum based polypropylene or petrochemicals, do comprise some C14 or “bomb carbon”, therefore, the Applicants arguments that there is a structural different between the polypropylene of Shibata or Horio and that of the instant claims is not persuasive. The claims do not specify an amount of C14 that would be required to consider a thermoplastic to be biomass-derived vs. fossil fuel derived, therefore, the layers comprised of polypropylene taught by the primary references to Shibata et al. and Horio et al. are not viewed as being structurally different.
Even so, the secondary reference to Boswell et al. is used in a second set of rejections to modify the primary references Shibata et al. and Horio et al., wherein Boswell et al. does teach the use of biomass derived polypropylene, and Boswell et al. teaches such bio-based materials are advantageous because they have the same look and feel as similar articles made from petroleum-based sources, yet has improved sustainability, as well as reduction in fossil fuel consumption and carbon dioxide mission ([0020-0021]). Boswell et al. further teaches that increasing the amount of bio-based polymers used in the claimed invention can increase the stress crack resistance, impact resistance, surface gloss and decrease opaqueness ([0023]).
The Applicant further argues on pages 15-17 that the cited references do not teach the density ranges that have been amended into claim 12. The Applicant argues that the densities of fossil-derived polypropylene cannot be relied upon as the density of biomass-derived polypropylene is structurally different from normal fossil derived polypropylene. These arguments are not persuasive for the reasons stated above.
Density is an inherent property of the polymer. The evidentiary reference to Lenntech teaches that polypropylene has a density range of 0.910-0.928 g/mL (0.910-0.928 g/cm3), completely encompassed within the claimed ranges of 0.90-0.96 g/cm3 as and 0.90-1.40 g/cm3 recited by claim 12. Furthermore, Boswell et al. teaches a specific embodiment wherein bio-based polypropylene is used for the container, cap and label, such that when the label is comprised of bio-based polypropylene, it has a density of less than 1g/mL to aid in separation during floatation process of recycling ([0072-0085]), which overlaps both of the claimed ranges.
The Applicant further argues that any prima facie case of obviousness is overcome by the surprising and unexpected results provided in Table 3 of the specification, which demonstrates the superiority of Examples 3-1 through 3-9 being within the scope of claim 12 in combination with design properties, surface strength, extrusion stability, bending processability and petroleum dependency. Comparative Examples 3-1 through 3-4 are outside of the scope of amended claim 12. This argument is not persuasive.
The Applicants allegations of unexpected results are not commensurate in scope with the claimed invention. The Applicant points to such features as design properties, surface strength, extrusion stability, bending processability and petroleum dependency, however, none of these properties or acceptable ranges of these properties are required by the claims (See MPEP 716.02(d)).
Additionally, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (See MPEP 716.02(d)).
The Applicant points to the Comparative Examples, however, the Comparative Examples do not provide densities for the various layers used in each example. In Comparative Example 3-1, petroleum based polypropylene is used in both the colored resin layer and the transparent resin layer, however, no density is disclosed ([0395]). Furthermore, for this example, the design properties, surface strength, extrusion suitability and bending processability are all good or excellent, in line with or better than Examples 3-1 though 3-9. Dependence on petroleum is the only property Comparative Example 3-1 is negatively assessed, however, this properties is not required by the claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785
Prosecution Insights