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 without traverse of Group I, Species B, claims 5-8, in the reply filed on July 28, 2026, is acknowledged. Claims 1-4 and 9-12 are withdrawn for being directed to a nonelected invention or species.
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 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2022/054645 Nishine et al (cited by US 2023/0364640) in view of US 2007/0116933 Kobayashi et al.
Regarding claim 5, Nishine teaches a decorative sheet (paragraph 0002), comprising:
a primary film layer (base 5) and a transparent ridged layer 4 laminated in this order (figure 4 and paragraph 0222 teaching transparent),
wherein the transparent ridged layer is an uppermost layer and has, on its top surface, asperities composed of ridge parts protruding in a ridged shape (figure 4), and the asperities have a ratio RSm/Ra between a surface roughness index RSm and a surface roughness index Ra of 20.425 (Table 1, Example 1),
a main material of the transparent ridged layer is an ionizing radiation curable resin (paragraph 0171),
a main component of the ionizing radiation curable resin is an acrylic resin having a repeating structure (paragraph 0172), and
the transparent ridged layer contains a hindered amine-based photostabilizer in an amount (paragraph 0195)
Nishine does not explicitly teach the amount of photostabilizer. However, Nishine does teach that this is a weathering agent (paragraph 0194) such that the amount of photostabilizer may be adjusted based on the desired final application and amount of exposure to weather.
Since the instant specification is silent to unexpected results, the specific photstabilizer amount is not considered to confer patentability to the claims. As the physical and optical characteristics are variables that can be modified, among others, by adjusting the parameters of the method, the precise photostabilizer amount would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed photostabilizer amount cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the invention, would have optimized, by routine experimentation, the amount of photostabilizer relative to 100 parts of the resin to obtain the desired physical characteristic (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP 2144.05 Section II.
Nishine does not teach the repeating structure. Kobayashi teaches a decorative film where a transparent resin layer contains an ionizing radiation curable resin (paragraph 0092), where the ionizing radiation curable resin includes ethylene oxide (paragraph 0092). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the ethylene oxide of Kobayashi in the resin of Nishine because this provides improved oil resistance (paragraph 0092).
Regarding claim 6, Nishine teaches the hindered amine-based photostabilizer (paragraph 0195). Nishine does not explicitly teach the amount of photostabilizer. However, Nishine does teach that this is a weathering agent (paragraph 0194) such that the amount of photostabilizer may be adjusted based on the desired final application and amount of exposure to weather.
Since the instant specification is silent to unexpected results, the specific photstabilizer amount is not considered to confer patentability to the claims. As the physical and optical characteristics are variables that can be modified, among others, by adjusting the parameters of the method, the precise photostabilizer amount would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date of the invention. As such, without showing unexpected results, the claimed photostabilizer amount cannot be considered critical. Accordingly, one of ordinary skill in the art, before the effective filing date of the invention, would have optimized, by routine experimentation, the amount of photostabilizer relative to 100 parts of the resin to obtain the desired physical characteristic (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP 2144.05 Section II.
Regarding claims 7 and 8, Nishine further teaches that the repeating structure may have 2-8 functional groups (paragraph 0178). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists,” (MPEP 2144.05 Section I). Therefore, absent evidence of criticality, the taught range of 2-8 functional groups reads on the claimed range of “trifunctional” in claim 7 and “tetrafunctional” in claim 8.
Nishine does not teach the number of repeating structures. Kobayashi teaches a decorative laminate including an acrylic acid-based (paragraph 0089) ionizing radiation curable resin (paragraph 0092), where the number of ethylene oxide repeating units may be 2 to 20 (paragraph 0094), and the ethylene oxide may be trifunctional or tetrafunctional (paragraph 0094). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the functionality taught by Kobayashi in the product of Nishine because this affects the hardness of the compound (paragraph 0094).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megha M Gaitonde whose telephone number is (571)270-3598. The examiner can normally be reached Monday-Friday 8:30 am to 5 pm.
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/MEGHA M GAITONDE/Primary Examiner, Art Unit 1781
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