DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-23 in the reply filed on 1/23/26 is acknowledged.
Claims 24-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/23/26.
Claim Rejections - 35 USC § 112
Claims 1-6, 8-15, and 19-21 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for the transfer layer to be acrylic or polyurethane, does not reasonably provide enablement for the transfer layer to be any other polymer layer with a loss factor between .015 and .1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 1-6, 8-15, and 19-21 can be used as claimed and whether claims 1-6, 8-15, and 19-21 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-6, 8-15, and 19-21, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 1-6, 8-15, and 19-21 read on any possible material while the specification discloses only acrylic or polyurethane.
(b) There is no direction or guidance presented for obtaining a layer that has a loss factor.
(c) There is an absence of working examples concerning the use of these materials as the specification provides no examples.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-6, 8-15, and 19-21.
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 21 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.
As to claim 21, the phrase “an adhesive layer, wherein the decorative composite layer is disposed between the adhesive layer and the substrate” renders this claim indefinite because it is unclear as to if this is referring to the substrate that is being transferred from or to the target substrate. As seen in figure 5s it looks like it is referring to a target substrate. Therefore this claim will be treated as being met if the adhesive is located between the decorative composite and target substrate.
Claim Rejections - 35 USC § 102/103
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.
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, 3-11, 13-17, 19-22 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hamaguchi (US Patent 5102497).
As to claims 1, and 11, Hamaguchi discloses a transfer member with a pattern of metallic luster constructed that a release sheet is formed on the whole surface of a release sheet, a metal thin film layer is formed on the release layer and a patterned adhesive is formed on the metal (abs). As seen in figure 1, transfer member 10 comprises a release sheet 1 (substrate), 2 a release layer (transfer layer), 3 a coloring layer (decorative layer), 4 an anchor layer, 5 a metal thin film layer, 6 an adhesive layer (column 4 lines 20-33). As shown in figure 2. The release layer 2, as well as layers 3-6 are transferred to target substrate 7 (column 4 lines 30-33). The release layer 2 is made of acrylic resin (column 4 lines 50-55). The substrate can be polyethylene terephthalate or polyethylene (column 4 lines 33-40). Therefore, since Hamaguchi discloses the same material used for the substrate as well as for the release layer it will inherently have a loss factor of between .015 and .1 as its easily removed from the substrate layer. In the alternative it would have been obvious to one of ordinary skill in the art to have formed the release layer to have this loss factor for easy removal from the substrate.
As to claim 3, Hamaguchi discloses that the substrate can be polyethylene terephthalate or polyethylene (column 4 lines 33-40).
As to claims 4 and 13, Hamaguchi discloses that the same material used for the substrate as well as for the release layer and it will inherently have a loss factor of between .015 and .1 at a temperature of between 20 and 65 degrees Celsius, as its easily removed from the substrate layer. In the alternative it would have been obvious to one of ordinary skill in the art to have formed the release layer to have this loss factor for easy removal from the substrate.
As to claims 5, 6, 14 and 15, Hamaguchi discloses that the same material used for the substrate as well as for the release layer it will inherently have a storage modulus in the range of 5x106 Pa to 5x107 Pa and loss modulus in the range of 5x105 Pa to 5x104 Pa. In the alternative it would have been obvious to one of ordinary skill in the art to have formed the release layer to have these properties for easy removal from the substrate.
As to claims 7 and 16, Hamaguchi discloses that the release layer 2 is made of acrylic resin (column 4 lines 50-55).
As to claims 8 and 19, Hamaguchi discloses that the same material used for the substrate as well as for the release layer and it will inherently have a heat resistance temperature of 110 to 180 degrees Celsius as its being used in the same manner. In the alternative it would have been obvious to one of ordinary skill in the art to have formed the release layer to have these properties for easy removal from the substrate.
As to claims 9 and 10, Hamaguchi discloses that the same material used for the substrate as well as for the release layer and therefore it will inherently have a dyne level not smaller 35 dyn and a difference between the transfer layer and substrate being 5 dyn. In the alternative it would have been obvious to one of ordinary skill in the art to have formed the release layer to have these properties for easy removal from the substrate.
As to claim 17, Hamaguchi discloses that the same material used for the release layer and therefore it will inherently have a peel strength with the decorative layer of not greater than 5 gf/in. In the alternative it would have been obvious to one of ordinary skill in the art to have formed the release layer and decorative layer to have a peel strength of not greater than 5 gf/in so that these layers are not separated.
As to claim 20, Hamaguchi does not disclose an additional release layer between the substrate layer and release layer.
As to claim 21, Hamaguchi discloses that an adhesive layer 6 is located between target substrate 7 and decorative composite layers before the release substrate 1 is removed (column 6 lines 45-55).
As to claim 22, Hamaguchi discloses that the same material used for the release layer and therefore it will inherently have a peel strength of between 2.5 gf/in and 4 gf/in. In the alternative it would have been obvious to one of ordinary skill in the art to have formed the release layer with this peel strength as its used for the same purpose.
Claim Rejections - 35 USC § 103
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hamaguchi (US Patent 5102497).
As to claims 2 and 12, Hamaguchi anticipates/renders obvious claim 1 for the reasons noted above, however is silent to the thickness of the substrate layer.
It would have been obvious to one of ordinary skill in the art to have modified Hamaguchi and formed the thickness of the substrate layer to be between 2 and 15 microns as one of ordinary skill in the art would know that an increasing the thickness costs more and provides more protection and support for the layer while a thinner layer is cheaper and provides less support. See MPEP 2144. 06 change in size.
Claims 18 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Hamaguchi (US Patent 5102497) in view of Johnson et al (US Patent 4818589).
As to claims 18 and 23, Hamaguchi anticipates/renders obvious claim 1 for the reasons noted above, however is silent to the release layer being polyurethane.
Johnson discloses a transfer article comprising a clear coat layer 26 to protect the sublayers and release from the carrier layer made of polyurethane (column 7 lines 14-40) such as PET (column 5 lines 45-50).
It would have been obvious to one of ordinary skill in the art to have modified Hamaguchi and used polyurethane as the release layer as suggested by Johnson as it would be a suitable alternative as it is functioning in the same manner as being release from a PET carrier layer and protecting colored layers underneath after transfer and Hamaguchi discloses any suitable polymer can be used. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M POLLEY whose telephone number is (571)270-5734. The examiner can normally be reached Monday through Friday from 8am till 4:30 pm.
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/CHRISTOPHER M POLLEY/Primary Examiner, Art Unit 1785
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