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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-14, drawn to a decorative vapor deposition sheet.
Group II, claim 15, drawn to a method of using a decorative vapor deposition sheet.
The inventions listed as Groups I and II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The common feature --a decorative vapor deposition sheet comprising a cover resin layer and a metal vapor deposition layer, wherein the cover resin layer has a thickness of 50 micrometers or greater, the metal vapor deposition layer exhibits a granular structure, a breaking elongation of the decorative vapor deposition sheet at 20°C is 120% or greater, and a breaking elongation of the decorative vapor deposition sheet at 160°C is 350% or greater-- cannot qualify as a special technical feature as it does not provide a contribution over the prior art because it is disclosed by Shibahara et al. (WO 2019/092582 A1) (see the international search report).
Shibahara discloses a decorative film (ref. #10; which is considered equivalent to the claimed "decorative vapor deposition sheet") comprising, in order, an upper design layer (ref. #12; which is considered equivalent to the claimed "cover resin layer") having a surface layer (ref. #124) and first resin layer (ref. #122), a reflective layer (ref. #14; which is considered equivalent to the claimed "metal vapor deposition layer"), a lower design layer (ref. #16) having a pattern layer (ref. #164) and second resin layer (ref. #162), and an adhesive layer (ref. #18) (figure 1, [Pg. 4: li. 24-33], and [Pg. 10: li. 9-14] of Shibahara). Shibahara also discloses that the reflective layer can be a vapor-deposited layer that contains tin, indium, or a combination thereof, formed to have an optical density of approximately 0.7 to approximately 1.7, and in the form of a sea-island structure ([Pg. 9: li. 28-35], [Pg. 10: li. 9-10 and 36-37], and [Pg. 11: li. 10-14] of Shibahara). Shibahara further discloses that the first resin layer contains at least one thermoplastic resin selected from the group consisting of polyurethanes, and (meth)acrylic resins ([Pg. 10: li. 23-25] of Shibahara), that the surface layer can comprise (meth)acrylic resins, polyurethane, fluorine resins such as methyl methacrylate/vinylidene fluoride copolymers (PMMA/PVDF), or mixtures thereof ([Pg. 8: li. 1-11] of Shibahara), and that the upper design layer can have a thickness of approximately 0.1 µm or more to approximately 300 µm or less without the surface layer, or a thickness of approximately 1 µm or more to approximately 200 µm or less ([Pg. 9: li. 14-27] of Shibahara); which overlaps the presently claimed range of --50 micrometers or greater--. Shibahara differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Shibahara, because overlapping ranges have been held to establish prima facie obviousness. See MPEP §2144.05. It is also disclosed by Shibahara that a molded article (ref. #20; which is considered equivalent to the claimed "article") comprising the decorative film attached to a substrate (ref. #22) via the adhesive layer using a three-dimensional heat-stretching molding method (figure 2A, [Pg. 4: li. 6-17], [Pg. 4: li. 34 to Pg. 5: li. 2], and [Pg. 15: li. 15-18] of Shibahara).
Shibahara discloses the decorative vapor deposition sheet, but does not explicitly recite --a breaking elongation of the decorative vapor deposition sheet at 20°C is 120% or greater, and a breaking elongation of the decorative vapor deposition sheet at 160°C is 350% or greater--. However, Shibahara discloses a decorative vapor deposition sheet having the same cover resin layer and same metal vapor deposition layer by the same process as applicants (e.g., a decorative vapor deposition sheet comprising a cover resin layer and a metal vapor deposition layer, wherein the cover resin layer comprises a (meth)acryl and has a thickness of 50 µm or greater, and the metal vapor deposition layer exhibits a granular structure; see (figures 1, 2A, [Pg. 4: li. 24 to Pg. 5: li. 2], [Pg. 5: li. 13-16], [Pg. 8: li. 1-14], [Pg. 9: li. 14-35], [Pg. 10: li. 9-10, 23-25, and 36-37], [Pg. 11: li. 10-14], [Pg. 15: li. 15-18], and [Pg. 19: li. 2-32]) of Shibahara and ([0020], [0025], [0032], [0033], [0036], [0043], [0066]-[0067]) of the filed instant specification). Therefore, it is the decision of the Examiner that the decorative vapor deposition sheet of Shibahara inherently possesses a breaking elongation of 120% or greater at 20°C and a breaking elongation of 350% or greater at 160°C. See MPEP §2112.
Therefore, the reference(s) specifically suggest(s) using the common elements as claimed.
During a telephone conversation with Julie Lapos-Kuchar on 17 August 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-14. Affirmation of this election must be made by applicant in replying to this Office action. Claim 15 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-4, 8-11, 13, and 14 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4, 6-10, and 14 of copending Application No. 17/801,385 (reference application) (referred to herein as "Miura'385"). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Regarding Claim 1: Miura'385 claims a decorative vapor deposition sheet comprising a cover resin layer and a metal vapor deposition layer, wherein the cover resin layer has a thickness of 50 micrometers or greater, the metal vapor deposition layer exhibits a granular structure, a breaking elongation of the decorative vapor deposition sheet at 20°C is 120% or greater, and a breaking elongation of the decorative vapor deposition sheet at 160°C is 350% or greater (claim 1 of Miura'385).
Regarding Claim 2: Miura'385 claims the decorative vapor deposition sheet, wherein the metal vapor deposition layer exhibits a discontinuous configuration partially or entirely in the layer in the cross-sectional portion in the thickness direction (claims 1 and 2 of Miura'385).
Regarding Claim 3: Miura'385 claims the decorative vapor deposition sheet, wherein a surface resistance value of the metal vapor deposition layer is 8.0 x 1010 Ω/□ (claims 1 and 3 of Miura'385).
Regarding Claim 4: Miura'385 claims the decorative vapor deposition sheet, wherein an optical density of the metal vapor deposition layer is from 1.0 to 1.9 (claims 1 and 4 of Miura'385).
Regarding Claim 8: Miura'385 claims the decorative vapor deposition sheet, wherein the metal vapor deposition layer comprises at least one selected from indium and tin (claims 1 and 6 of Miura'385).
Regarding Claim 9: Miura'385 claims the decorative vapor deposition sheet, wherein an adhesive layer is disposed under the metal vapor deposition layer disposed under the cover resin layer (claims 1 and 7 of Miura'385).
Regarding Claim 10: Miura'385 claims the decorative vapor deposition sheet, wherein the metal vapor deposition layer is deposited directly or via a bonding layer on the cover resin layer (claims 1 and 14 of Miura'385).
Regarding Claim 11: Miura'385 claims the decorative vapor deposition sheet, which is used for a vacuum forming (claims 1 and 8 of Miura'385).
Regarding Claim 13: Miura'385 claims an article comprising the decorative vapor deposition sheet, wherein the decorative vapor deposition sheet is adhered to a substrate (claims 1 and 9 of Miura'385).
Regarding Claim 14: Miura'385 claims the article, which has a three-dimensional shape (claims 1, 9, and 10 of Miura'385).
Claim Objections
Applicant is advised that should claim 7 be found allowable, claim 12 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102
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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shibahara et al. (WO 2019/092582 A1).
Regarding Claims 1 and 13: Shibahara discloses a decorative film (ref. #10; which is considered equivalent to the claimed "decorative vapor deposition sheet") comprising, in order, an upper design layer (ref. #12; which is considered equivalent to the claimed "cover resin layer") having a surface layer (ref. #124) and first resin layer (ref. #122), a reflective layer (ref. #14; which is considered equivalent to the claimed "metal vapor deposition layer"), a lower design layer (ref. #16) having a pattern layer (ref. #164) and second resin layer (ref. #162), and an adhesive layer (ref. #18) (figure 1, [Pg. 4: li. 24-33], and [Pg. 10: li. 9-14] of Shibahara). Shibahara also discloses that the reflective layer can be a vapor-deposited layer that contains tin, indium, or a combination thereof, formed to have an optical density of approximately 0.7 to approximately 1.7, and in the form of a sea-island structure ([Pg. 9: li. 28-35], [Pg. 10: li. 9-10 and 36-37], and [Pg. 11: li. 10-14] of Shibahara). Shibahara further discloses that the first resin layer contains at least one thermoplastic resin selected from the group consisting of polyurethanes, and (meth)acrylic resins ([Pg. 10: li. 23-25] of Shibahara), that the surface layer can comprise (meth)acrylic resins, polyurethane, fluorine resins such as methyl methacrylate/vinylidene fluoride copolymers (PMMA/PVDF), or mixtures thereof ([Pg. 8: li. 1-11] of Shibahara), and that the upper design layer can have a thickness of approximately 0.1 µm or more to approximately 300 µm or less without the surface layer, or a thickness of approximately 1 µm or more to approximately 200 µm or less ([Pg. 9: li. 14-27] of Shibahara); which overlaps the presently claimed range of --50 micrometers or greater--. Shibahara differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Shibahara, because overlapping ranges have been held to establish prima facie obviousness. See MPEP §2144.05. It is also disclosed by Shibahara that a molded article (ref. #20; which is considered equivalent to the claimed "article") comprising the decorative film attached to a substrate (ref. #22) via the adhesive layer using a three-dimensional heat-stretching molding method (figure 2A, [Pg. 4: li. 6-17], [Pg. 4: li. 34 to Pg. 5: li. 2], and [Pg. 15: li. 15-18] of Shibahara).
Shibahara discloses the decorative vapor deposition sheet, but does not explicitly recite --a breaking elongation of the decorative vapor deposition sheet at 20°C is 120% or greater, and a breaking elongation of the decorative vapor deposition sheet at 160°C is 350% or greater--. However, Shibahara discloses a decorative vapor deposition sheet having the same cover resin layer and same metal vapor deposition layer by the same process as applicants (e.g., a decorative vapor deposition sheet comprising a cover resin layer and a metal vapor deposition layer, wherein the cover resin layer comprises a (meth)acryl and has a thickness of 50 µm or greater, and the metal vapor deposition layer exhibits a granular structure; see (figures 1, 2A, [Pg. 4: li. 24 to Pg. 5: li. 2], [Pg. 5: li. 13-16], [Pg. 8: li. 1-14], [Pg. 9: li. 14-35], [Pg. 10: li. 9-10, 23-25, and 36-37], [Pg. 11: li. 10-14], [Pg. 15: li. 15-18], and [Pg. 19: li. 2-32]) of Shibahara and ([0020], [0025], [0032], [0033], [0036], [0043], [0066]-[0067]) of the filed instant specification). Therefore, it is the decision of the Examiner that the decorative vapor deposition sheet of Shibahara inherently possesses a breaking elongation of 120% or greater at 20°C and a breaking elongation of 350% or greater at 160°C. See MPEP §2112.
Regarding Claim 2: Shibahara discloses that the metal vapor deposition layer which exhibits a discontinuous configuration partially or entirely in the layer in the cross-sectional portion in the thickness direction ([Pg. 11: li. 12-14] of Shibahara).
Regarding Claim 3: Shibahara discloses the claimed decorative vapor deposition sheet, but does not explicitly recite that --a surface resistance value of the metal vapor deposition layer is 8.0 x 1010 Ω/□--. However, Shibahara provides the same metal vapor deposition layer by the same process as applicants (i.e., a metal vapor deposition layer exhibiting a granular structure (as explained above) and comprising indium and/or tin; see ([Pg. 9: li. 28-35], [Pg. 10: li. 36-37], and [Pg. 11: li. 12-14]) of Shibahara and ([0041]-[0043], [0067], and [0068]) of the filed specification). Therefore, it is the decision of the examiner, that the metal vapor deposition layer of the decorative vapor deposition sheet of Shibahara inherently possesses a surface resistance value of 8.0 x 1010 Ω/□ as claimed. See MPEP §2112.
Regarding Claim 4: Shibahara discloses that the metal vapor deposition layer has an optical density of from 0.7 to 1.7 ([Pg. 10: li. 36-37] of Shibahara); which overlaps the presently claimed range of --1.0 to 1.9--. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Shibahara , because overlapping ranges have been held to establish prima facie obviousness. See MPEP §2144.05.
Regarding Claim 5: Shibahara discloses that the cover resin layer comprises at least one selected from urethane, polyvinylidene fluoride, and (meth)acryl ([Pg. 8: li. 1-11] and [Pg. 10: li. 23-25] of Shibahara).
Regarding Claim 6: Shibahara discloses that the cover resin layer consists of urethane resin ([Pg. 6: li. 15-28], [Pg. 8: li. 1-11] and [Pg. 10: li. 23-25] of Shibahara).
Regarding Claims 7 and 12: Shibahara discloses that the decorative vapor deposition sheet is free of a polyvinylidene difluoride-containing film ([Pg. 8: li. 1-11] and [Pg. 10: li. 23-25] of Shibahara). (In the instant case, the layers of the decorative vapor deposition sheet disclosed by Shibahara do not require any polyvinylidene difluoride, and would therefore envisage the decorative vapor deposition sheet as being free of any polyvinylidene difluoride.)
Regarding Claim 8: Shibahara discloses that the metal vapor deposition layer comprises at least one selected from indium and tin ([Pg. 9: li. 28-35] of Shibahara).
Regarding Claim 9: Shibahara discloses an adhesive layer (ref. #18) disposed under the metal vapor deposition layer disposed under the cover resin layer (figure 1 and [Pg. 4: li. 24-33] of Shibahara).
Regarding Claim 10: Shibahara discloses that the metal vapor layer is disposed directly on the cover resin layer (figure 1 and [Pg. 4: li. 24-33] of Shibahara).
Regarding Claim 11: Shibahara discloses that the decorative vapor deposition sheet is used for a vacuum forming (figure 2A, [Pg. 4: li. 6-17], [Pg. 4: li. 34 to Pg. 5: li. 2], and [Pg. 15: li. 15-18] Shibahara).
Regarding Claim 14: Shibahara discloses that the article has a three-dimensional shape ([Pg. 15: li. 24-25] of Shibahara).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Donald M. Flores, Jr. whose telephone number is (571) 270-1466. The examiner can normally be reached 7:30 to 17:00 M-F; Alternate Fridays off.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DONALD M FLORES JR/
Donald M. Flores, Jr.Examiner, Art Unit 1781
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