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, in the reply filed on 08/24/2026 is acknowledged. Applicant has elected Group I with traverse, but fails to provide reasons for traversal. As such, the Requirement between Groups I and II is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/04/2024 and 09/25/2025 have been considered by the examiner.
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 1 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. Claim 1 requires the surface protective layer having a Martens hardness in a range of 5 or more and 142 or less. However, the claim fails to provide units with the claimed range. Therefore, the claim is rejected for failing to point out and distinctly claim the subject matter that is considered applicant’s invention. For the purposes of examination, the units associated with the Martens hardness are N/mm2 as described in the instant specification (PGPUB, Paragraph [0068]). Claims 2-5 are further rejected for depending from rejected claim 1.
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.
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 1-2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Oshima et al. (WO 2021/149480) with (US 2023/0041625) as an English language translation in view of Okumura et al. (JP 2016-008287).
Regarding claim 1, Oshima teaches a decorative sheet and a method of making a decorative sheet (Paragraph [0001]). The decorative sheet includes a primary film layer and a first surface protective layer on the primary film layer (Paragraph [0006]). The decorative sheets have a glossiness of 5 or less (Paragraph [0064]). The first surface protective layer has a core portion and ridge-like parts on the surface (Paragraph [0006]). The first surface protective layer is formed from an ionizing radiation curable resin (Paragraph [0042]).
Oshima is silent with respect to the ionizing radiation curable resin containing at least one of an alkylene repeating structure and an alkylene oxide repeating structure, and contains a resin obtained by polymerizing an acrylic monomer having 2 or more and 4 or less acryloyloxy groups, the alkylene oxide repeating structure is one of an ethylene oxide structure, a propylene oxide structure, and Ɛ-caprolactone structure, the acrylic monomer having 2 acryloyl groups, the acrylic monomer has an acryloyl group chain length of 10 or more and 28 or less, the acryloyl group chain length being a number of atoms connecting the acryloyl groups with a shortest distance.
Okumura teaches an active energy ray curable composition that can form a hard coat layer and may be used in decorative sheets (Paragraphs [0001]; [0012]). The composition contains an active energy ray curable compound (A), a fluorine-based surfactant (B), and a lithium salt (C) (Paragraph [0013]). The compound includes an alkylene-oxide modified (meth)acrylate which may be an ethylene or propylene oxide structure having 3 to 50 moles (Paragraph [0016]). The alkylene-oxide modified (meth)acrylate is further mixed with a polyfunctional (meth)acrylate having 2 or more (meth)acryloyl groups in one molecule (Paragraph [0020]). The resulting compositions ultimately have desired antistatic properties to prevent fogging in high temperature and high humidity environments (Paragraph [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the ionizing radiation curable resin of Oshima from the compositions of Okumura which are formed from an active energy ray curable compound (A) containing an alkylene-oxide modified (meth)acrylate which may be an ethylene or propylene oxide structure having 3 to 50 moles (“a chain length of 10 to 28”) and a polyfunctional (meth)acrylate having 2 or more (meth)acryloyl groups in one molecule (“2 acryloyl groups”) in order to have desired antistatic properties to prevent fogging in high temperature and high humidity environments.
Oshima and Okumura are silent with respect to the ridge-like portion having an RSm in a range of 10 or more and 310 or less, a Martens hardness in a range of 5 or more and 142 or less and the acrylic monomer having a viscosity of 100 mPa*s or less at 25°C.
However, these properties appear to be dependent on the materials and methods of forming the surface protective layers of claim 1. As such, one of ordinary skill in the art would reasonably expect that identical materials and methods would result in identical properties. MPEP 2112.0: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the instant case, the sheets of claim 1 require the materials of a primary film layer and the surface protective layer as described above. The sheets of claim 1 are further formed from a first irradiation using light having a wavelength of light less than 200 nm and then a second irradiation using a wavelength of light longer than 200 nm (Paragraph [0057]).
The combination of Oshima and Okumura teaches each of the materials of claim 1 as discussed above. Furthermore, Oshima teaches the formation of the first surface protective layer by a first ionization by an excimer laser at 172 nm in order to form the ridge-like shape and subjected to a second ionization at a wavelength of 400 nm in order to cure the layer (Paragraphs [0071]-[0072]).
Therefore, it would have been obvious to one of ordinary skill in the art that the combination of Oshima and Okumura, having identical materials and methods and applicant’s invention, would result in identical properties as well, including the ridge-like portion having an RSm in a range of 10 or more and 310 or less, a Martens hardness in a range of 5 or more and 142 or less and the acrylic monomer having a viscosity of 100 mPa*s or less at 25°C.
Regarding claim 2, Oshima teaches the sheets as discussed above with respect to claim 1. Oshima further teaches the first protective layer being from 1 to 50 microns (Paragraph [0063]).
Regarding claim 5, Oshima teaches the sheets as discussed above with respect to claim 1. The primary film layer may be a paper or polypropylene material (Paragraphs [0025]-[0029]).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Oshima et al. (WO 2021/149480) with (US 2023/0041625) as an English language translation in view of Okumura et al. (JP 2016-008287) as applied to claim 1, and further in view of Kwon et al. (KR 10-2020-0031282).
Regarding claims 3-4, Oshima teaches the decorative sheets as discussed above with respect to claim 1. Oshima teaches the first surface protective layer further inorganic particles (Paragraph [0060]).
Oshima is silent with respect to the particles having an average particle size of 10 microns or less.
Kwon teaches low gloss decorative sheets with excellent tactile properties wherein the gloss of the sheets is less than 6 (Paragraphs [0001]; [0053]). The sheets include a surface having a cured layer of an acrylic resin composition (Paragraph [0013]). The composition further includes high hardness particles with a size of 1 to 10 microns in an amount of 8 parts by weight or less in order to not impair the gloss while improving durability (Paragraphs [0090]-[0091]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the first surface protective layer of Oshima to further include high hardness particles with a size of 1 to 10 microns in an amount of 8 parts by weight or less in order to not impair the gloss while improving durability as taught by Kwon.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/952,313 in view of Oshima et al. (WO 2021/149480) and Okumura et al. (JP 2016-008287).
Claim 1 of application ‘313 requires each of the features of claim 1 of the instant application with the exception of the surface protection layer having an RSm in the range of 10 to 310, a Martens hardness of 5 to 142, a chain length of 10 to 28, and a viscosity of 100 mP*s or less at 25°C.
Claim 2 of application ‘313 teaches the RSm being 300 or less.
Okumura teaches the active energy ray curable compound (A) containing an alkylene-oxide modified (meth)acrylate which may be an ethylene or propylene oxide structure having 3 to 50 moles (“a chain length of 10 to 28”) and a polyfunctional (meth)acrylate having 2 or more (meth)acryloyl groups in one molecule (“2 acryloyl groups”) in order to have desired antistatic properties to prevent fogging in high temperature and high humidity environments as discussed above with respect to the 35 U.S.C 103 rejections.
Oshima teaches the methods of the formation of the first surface protective layer by a first ionization by an excimer laser at 172 nm in order to form the ridge-like shape and subjected to a second ionization at a wavelength of 400 nm in order to cure the layer as discussed above with respect to the 35 U.S.C 103 rejections.
Therefore, the combination of application ‘313, Okumura and Oshima would teach substantially identical materials and methods resulting in identical properties such as a Martens hardness of 5 to 142 and a viscosity of 100 mP*s or less at 25°C.
Claims 2-5 are further taught by claims 1-4 of application ‘313 in view of Okumura and Oshima as discussed above with respect to the 35 U.S.C 103 rejections.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/899,425 in view of Oshima et al. (WO 2021/149480) and Okumura et al. (JP 2016-008287).
Claim 1 of application ‘425 requires each of the features of claim 1 of the instant application with the exception of the ionizing radiation curable resin having 2 acryloyl groups, a chain length of 10 to 28, and a viscosity of 100 mP*s or less at 25°C.
Okumura teaches the active energy ray curable compound (A) containing an alkylene-oxide modified (meth)acrylate which may be an ethylene or propylene oxide structure having 3 to 50 moles (“a chain length of 10 to 28”) and a polyfunctional (meth)acrylate having 2 or more (meth)acryloyl groups in one molecule (“2 acryloyl groups”) in order to have desired antistatic properties to prevent fogging in high temperature and high humidity environments as discussed above with respect to the 35 U.S.C 103 rejections.
Oshima teaches the methods of the formation of the first surface protective layer by a first ionization by an excimer laser at 172 nm in order to form the ridge-like shape and subjected to a second ionization at a wavelength of 400 nm in order to cure the layer as discussed above with respect to the 35 U.S.C 103 rejections.
Therefore, the combination of application ‘425, Okumura and Oshima would teach substantially identical materials and methods resulting in identical properties such as a viscosity of 100 mP*s or less at 25°C.
Claims 2-5 are further taught by claims 1-5 of application ‘425 in view of Okumura and Oshima as discussed above with respect to the 35 U.S.C 103 rejections.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/984,361 in view of Oshima et al. (WO 2021/149480) and Okumura et al. (JP 2016-008287).
Claim 1 of application ‘361 requires each of the features of claim 1 of the instant application with the exception of the materials of the ionizing radiation curable resin, an RSm in the range of 10 to 310, a Martens hardness of 5 to 142, and a viscosity of 100 mP*s or less at 25°C.
Okumura teaches the active energy ray curable compound (A) containing an alkylene-oxide modified (meth)acrylate which may be an ethylene or propylene oxide structure having 3 to 50 moles (“a chain length of 10 to 28”) and a polyfunctional (meth)acrylate having 2 or more (meth)acryloyl groups in one molecule (“2 acryloyl groups”) in order to have desired antistatic properties to prevent fogging in high temperature and high humidity environments as discussed above with respect to the 35 U.S.C 103 rejections.
Oshima teaches the methods of the formation of the first surface protective layer by a first ionization by an excimer laser at 172 nm in order to form the ridge-like shape and subjected to a second ionization at a wavelength of 400 nm in order to cure the layer as discussed above with respect to the 35 U.S.C 103 rejections.
Therefore, the combination of application ‘361, Okumura and Oshima would teach substantially identical materials and methods resulting in identical properties such as an RSm in the range of 10 to 310, a Martens hardness of 5 to 142, and a viscosity of 100 mP*s or less at 25°C.
Claims 2-5 are further taught by claims 1-5 of application ‘361 in view of Okumura and Oshima as discussed above with respect to the 35 U.S.C 103 rejections.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/984,330 in view of Oshima et al. (WO 2021/149480) and Okumura et al. (JP 2016-008287).
Claim 1 of application ‘330 requires each of the features of claim 1 of the instant application with the exception of the materials of the ionizing radiation curable resin, an RSm in the range of 10 to 310, a Martens hardness of 5 to 142, and a viscosity of 100 mP*s or less at 25°C.
Okumura teaches the active energy ray curable compound (A) containing an alkylene-oxide modified (meth)acrylate which may be an ethylene or propylene oxide structure having 3 to 50 moles (“a chain length of 10 to 28”) and a polyfunctional (meth)acrylate having 2 or more (meth)acryloyl groups in one molecule (“2 acryloyl groups”) in order to have desired antistatic properties to prevent fogging in high temperature and high humidity environments as discussed above with respect to the 35 U.S.C 103 rejections.
Oshima teaches the methods of the formation of the first surface protective layer by a first ionization by an excimer laser at 172 nm in order to form the ridge-like shape and subjected to a second ionization at a wavelength of 400 nm in order to cure the layer as discussed above with respect to the 35 U.S.C 103 rejections.
Therefore, the combination of application ‘330, Okumura and Oshima would teach substantially identical materials and methods resulting in identical properties such as an RSm in the range of 10 to 310, a Martens hardness of 5 to 142, and a viscosity of 100 mP*s or less at 25°C.
Claims 2-5 are further taught by claims 1-5 of application ‘330 in view of Okumura and Oshima as discussed above with respect to the 35 U.S.C 103 rejections.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 8-10 and 13 of U.S. Patent No. 12,629,719 in view of Oshima et al. (WO 2021/149480) and Okumura et al. (JP 2016-008287).
Claim 1 of ‘719 requires each of the features of claim 1 of the instant application with the exception of the ionizing radiation curable resin having 2 acryloyl groups, a chain length of 10 to 28, and a viscosity of 100 mP*s or less at 25°C.
Okumura teaches the active energy ray curable compound (A) containing an alkylene-oxide modified (meth)acrylate which may be an ethylene or propylene oxide structure having 3 to 50 moles (“a chain length of 10 to 28”) and a polyfunctional (meth)acrylate having 2 or more (meth)acryloyl groups in one molecule (“2 acryloyl groups”) in order to have desired antistatic properties to prevent fogging in high temperature and high humidity environments as discussed above with respect to the 35 U.S.C 103 rejections.
Oshima teaches the methods of the formation of the first surface protective layer by a first ionization by an excimer laser at 172 nm in order to form the ridge-like shape and subjected to a second ionization at a wavelength of 400 nm in order to cure the layer as discussed above with respect to the 35 U.S.C 103 rejections.
Therefore, the combination of ‘719, Okumura and Oshima would teach substantially identical materials and methods resulting in identical properties such as a viscosity of 100 mP*s or less at 25°C.
Claims 2-5 are further taught by claims 1, 3, 8-10 and 13 of ‘719 in view of Okumura and Oshima as discussed above with respect to the 35 U.S.C 103 rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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