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 .
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-5 and 8-9 in the reply filed on 07/31/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 6-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
Regarding the claimed “gloss level” in claim 1, as it is not specified what kind of glass measurement, e.g., 20o, 60o, or 85o gloss, any kind of gloss measurement of 15 or less will be considered to meet the claimed gloss level.
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 1-5 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nishine et al. (WO2022/054645) with citations from (US 2023/0364640) and further in view of Kobayashi et al. (US 2008/0070005).
Regarding claims 1 and 8-9, Nishine discloses a decorative sheet comprising a primary film layer (5) and surface protective layer (4) disposed on one side of the primary film layer (Fig. 4). The surface protective layer having a gloss level of 20 or less (0199), overlapping the claimed gloss level of 15 or less and having a surface comprising a ridged portion projecting in a ridged pattern forming an uneven shape (Fig. 3-13). The surface having an RSm/Ra of the uneven shape of about 8-900 or less (calculated from the ratio of RSm and Ra ranges disclosed in 0055 and 0063), overlapping the claimed RSm/Ra in a range of 10 or greater and 300 or less in claim 1, 50 or greater and 300 or less in claim 8, and 100 or greater and 300 or less in claim 9. Nishine further discloses the surface protective layer comprising an ionizing radiation curable resin (0172).
Nishine fails to teach a Martens hardness of the surface protective layer in a range of 20 N/mm2 or greater and 200 N/mm2 or less and while teaching the ionizing radiation curable resin including polyfunctional (meth)acrylates (0179), does not teach a tetrafunctional acrylic resin containing a repeating structure where the number of repetitions is 12 or more.
Kobayashi, in the analogous field of decorative members (0001), teaches a UV curable coating composition comprising trifunctional or higher acrylate compounds modified by e.g., ethylene oxide, having a chain number n of repeat units of from 2 to 20 (0072-0072).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the surface protective layer of Nishine to include ethylene oxide-modified-poly(meth)acrylate compound, as taught by Kobayashi, providing chemical and mechanical surface properties including oil and scratch resistance (0071).
Given Nishine in view of Kobayashi teaches an ionizing radiation curable resin including tetrafunctional acrylic resin and repeating structure of ethylene oxide of 12 or more as discussed above, the surface protective layer having an overlapping range for Martens hardness of 20 N/mm2 or greater and 200 N/mm2 or less would be expected for the prior art film.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Regarding claim 3, Nishine teaches the surface protective layer having at hickness in a range of 1 µm or larger and 300 µm or less (0165), overlapping the claimed thickness of 2 µm or greater and 20 µm or less.
Regarding claim 4, Nishine teaches the suface protective layer comprising particles having a diameter of 30 µm or less (0130), overlapping the claimed diameter of 10 µm or less.
Regarding claim 5, Nishine teaches the particles added in an amount of 0.5 part by mass or more 6 parts by mass or less (0133), overlapping the range of 0.5 parts by mass or more and 10 parts by mass or less.
Regarding the overlapping ranges discussed in claims 1, 3-5, and 8-9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Claims 1-5 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nishine et al. (WO2022/054645) with citations from (US 2023/0364640) and further in view of Kobayashi et al. (US 2008/0070005) and Kataoka et al. (US 2016/0214345).
Regarding claims 1 and 8-9, Nishine discloses a decorative sheet comprising a primary film layer (5) and surface protective layer (4) disposed on one side of the primary film layer (Fig. 4). The surface protective layer having a gloss level of 20 or less (0199), overlapping the claimed gloss level of 15 or less and having a surface comprising a ridged portion projecting in a ridged pattern forming an uneven shape (Fig. 3-13). The surface having an RSm/Ra of the uneven shape of about 8-900 or less (calculated from the ratio of RSm and Ra ranges disclosed in 0055 and 0063), overlapping the claimed RSm/Ra in a range of 10 or greater and 300 or less in claim 1, 50 or greater and 300 or less in claim 8, and 100 or greater and 300 or less in claim 9. Nishine further discloses the surface protective layer comprising an ionizing radiation curable resin (0172).
Nishine fails to teach a Martens hardness of the surface protective layer in a range of 20 N/mm2 or greater and 200 N/mm2 or less and while teaching the ionizing radiation curable resin including polyfunctional (meth)acrylates (0179), does not teach a tetrafunctional acrylic resin containing a repeating structure where the number of repetitions is 12 or more.
Kobayashi, in the analogous field of decorative members (0001), teaches a UV curable coating composition comprising trifunctional or higher acrylate compounds modified by e.g., ethylene oxide, having a chain number n of repeat units of from 2 to 20 (0072-0072).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the surface protective layer of Nishine to include ethylene oxide-modified-poly(meth)acrylate compound, as taught by Kobayashi, providing chemical and mechanical surface properties including oil and scratch resistance (0071).
Given Nishine in view of Kobayashi do not expressly teach the Martens hardness.
Kotaoka teaches a decorative sheet comprising an ionizing-radiation-curable resin composition having a Martens hardness in a range of 10-120 N/mm2, overlapping the claimed range of 20 to 200 N/mm2.
Kotaoka is analogous art in the field of decorative sheets comprising ionizing radiation curable surface layers. A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the surface protective layer of modified Nishine to have a Martens hardness as taught by Kotaoka, to inhibit cracking during molding and providing excellent scratch resistance of the cured product (0026).
Regarding claim 3, Nishine teaches the surface protective layer having at hickness in a range of 1 µm or larger and 300 µm or less (0165), overlapping the claimed thickness of 2 µm or greater and 20 µm or less.
Regarding claim 4, Nishine teaches the suface protective layer comprising particles having a diameter of 30 µm or less (0130), overlapping the claimed diameter of 10 µm or less.
Regarding claim 5, Nishine teaches the particles added in an amount of 0.5 part by mass or more 6 parts by mass or less (0133), overlapping the range of 0.5 parts by mass or more and 10 parts by mass or less.
Regarding the overlapping ranges discussed in claims 1, 3-5, and 8-9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 and 8-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 8 of copending Application No. 18/828345 in view of Kataoka et al. (US 2016/0214345).
Regarding claims 1-5 and 8-9, claims 1-5 and 8 of copending application 18/828345 disclose all of the limitations of these claims except for the limitation of the surface protective layer having a Martens hardness in the range of 20 N/mm2 or greater and 200 N/mm2 or less.
Kotaoka teaches a decorative sheet comprising an ionizing-radiation-curable resin composition having a Martens hardness in a range of 10-120 N/mm2, overlapping the claimed range of 20 to 200 N/mm2.
Kotaoka is analogous art in the field of decorative sheets comprising ionizing radiation curable surface layers. A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the surface protective layer of copending application 18/828345 to have a Martens hardness as taught by Kotaoka, to inhibit cracking during molding and providing excellent scratch resistance of the cured product (0026).
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/ Primary Examiner, Art Unit 1781
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