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 1-18, in the reply filed on October 7, 2025 is acknowledged. The traversal is on the ground(s) that the method does not cover making “materially different products”, that alternative processes cited in the restriction requirement do not yield the same product, and that there is no search or examination burden.
These arguments are not persuasive. With respect to Applicant’s first argument, MPEP 806.05(f) establishes that a process of making and a product made by the process can be shown to be distinct by either showing (A) that the process as claimed is not an obvious process of making the product and that the process can be used to make a materially different product, or (B) that the product as claimed can be made by a materially different process. In the instant case, requirement (B) is satisfied, thus the requirement (A) that the method can be used to make materially different products need not also be satisfied.
With respect to Applicant’s second argument that lamination, co-extrusion, or transfer printing could produce layered or continuous coatings, but not the discrete islands as required by claim 1, it is noted that the alternative processes cited in the restriction requirement included laminating or coextruding followed by etching or ablating to form discrete islands, or transfer printing. The Applicant’s arguments therefore do not specifically address the materially different processes cited in the restriction requirement that would be capable of making the product as claimed.
With respect to Applicant’s third argument that there is no search or examination burden, it is noted that the process steps specific to withdrawn clams 19-20 are not required by the elected product claims. As explained in the restriction requirement, the product and process belong to different classification areas (e.g., B32B for the product and B29C for the method), thus requiring a different field of search. The distinct inventions are also likely to raise different non-prior art issues (e.g., written description considerations under 35 U.S.C. 112(a) for various process steps would not be relevant to the product claims). See MPEP 808.02 for guidelines on search and examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 19 and 20 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. Applicant timely traversed the restriction (election) requirement in the reply filed on October 7, 2025.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/04/2025 and 03/19/2025 have been considered by the examiner.
Claim Objections
Claims 1-18 are objected to because of the following informalities: The preamble limitation reciting “Decorative article” should be amended to recite “A decorative article” in independent claim 1 and “The decorative article” in dependent claims 2-18 in order to establish proper antecedent basis. Appropriate correction is required.
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.
Claims 1-18 are 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.
Regarding claim 1, the limitation reciting “wherein the base layer is substantially flexible” is indefinite because the metes and bounds of the phrase “substantially flexible” are not clearly defined. See MPEP 2173.05(b)(III)(D).
In looking to the instant specification at page 2, lines 15-20, the base layer is said to be substantially flexible, i.e., deformable, e.g., bendable and/or stretchable, or the base layer may be flexible, e.g., bendable, but substantially non-stretchable. The instant specification, however, does not provide any guidelines for determining whether a base layer is “substantially” flexible. Absent further clarification, for the purpose of applying prior art, the limitation requiring that the base layer is substantially flexible is considered to be satisfied by any base layer that is at least slightly flexible (i.e., any base layer that is at least somewhat deformable and not rigid).
Regarding claim 8, the limitation reciting “wherein the decorative article is configured to pass the vertical burn test” is indefinite because the scope of the claimed “vertical burn test” is unclear. Specifically, the disclosure on page 7, lines 12-21 of the as-filed specification indicates that the vertical burn test may be a 60 second vertical burn test or a 12 second vertical burn test, as defined by the FAA in CFR Title 14. It is not clear whether the limitation in claim 8 is intended to require that the decorative article is configured to pass the 60 second vertical burn test, the 12 second vertical burn test, or a vertical test performed according to some other standard. For the purpose of applying prior art, any decorative article which is capable of passing either the 60 second vertical burn test or the 12 second vertical burn test as defined in the section of CFR Title 14 cited by the Applicant is considered to satisfy the limitation of claim 8.
Regarding claim 9, the limitation reciting “when the base layer is arranged in or along the plane” is indefinite because the phrase “the plane” lacks proper antecedent basis, and it is not clear what plane is being referred to.
In looking to page 7, lines 22-25 of the instant specification, the base layer is said to be elastically stretchable in at least two dimensions, which preferably lie in a single plane, when the base layer is arranged in or along the plane. The limitation in line 9 therefore appears to intend to require that the base layer is elastically stretchable in at least two dimensions, where the at least two dimensions preferably lie in a single plane which is parallel to the base layer when the base layer is arranged along the plane.
However, the limitation directed to the at least two dimensions preferably being arranged in a single plane is interpreted as exemplary claim language, which is indefinite. See MPEP 2173.05(d). For the purpose of applying prior art, the limitation of claim 9 will be interpreted to be satisfied by any base layer that is elastically stretchable in at least two dimensions.
Regarding claim 14, the limitation reciting “wherein the islands are configured and arranged to substantially prevent the base layer from stretching at the respective interface surfaces” is indefinite because the metes and bounds of the phrase “to substantially prevent” are not clearly defined. See MPEP 2173.05(b)(III)(D).
In looking to the instant specification at page 3, lines 26-34, the islands are said to prevent or at least limit the base layer from stretching/flexing at the interface surfaces. The instant specification, however, does not provide any guidelines for determining whether the islands “substantially” prevent the base layer from stretching. Absent further clarification, for the purpose of applying prior art, the limitation requiring that the islands are configured to substantially prevent the base layer from stretching at the interface surfaces is considered to be satisfied when the islands are capable of at least partially preventing the base layer from stretching at the interface surfaces.
Regarding claim 18, the limitation reciting “wherein the flank forms an angle with a section of the first base layer surface…which is less than 90° or less than 85%” is indefinite because it is not clear how the angle can be “less than 85%”.
In looking to page 41, lines 20-24 of the instant specification, the flank is said to form an angle with a section of the first base layer surface, which is less than 90°, preferably less than 85%, and preferably greater than 75°. The instant specification and the limitation in claim 18 therefore appear to both contain a typographical error, where “85%” should read --85°--.
However, with respect to this interpretation, it is noted that a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites the broad recitation “less than 90°”, and the claim is also interpreted as reciting “less than 85°” which is the narrower statement of the range/limitation. The claim is indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Regarding claims 2-7, 10-13, and 15-17, the claims are rejected based on their dependency on claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-14 and 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Xie et al. (US 2023/0337758).
Regarding claim 1, Xie et al. teaches a high-visibility, breathable garment (1; decorative article) comprising one or more macroscopic regions (14) that are retroreflective, with other regions (15) not being retroreflective ([0015]-[0016], Fig. 1). The macroscopic regions are made retroreflective may way of a multiplicity of discrete islands (21) of retroreflective laminate (50; first material), each spaced apart by empty spaces (22; regions between the islands) ([0021], Figs. 1-4). The retroreflective laminate is adhesively bonded to the major surface (12; first base layer surface) of a breathable fabric (10; base layer) in order to form the retroreflective laminate ([0035], [0045], Fig. 5). The material used to form the breathable fabric corresponds to the claimed second material.
Xie et al. teaches that the breathable fabric may be a stretchable (flexible) fabric [0040]. Xie et al. further teaches that the disposing of discrete islands of retroreflective laminate on the stretchable fabric does not necessarily reduce the stretchiness of the fabric unduly ([0040]), indicating that the garment may be flexible in both regions (21) where the discrete islands are provided as well as in regions (22) between the discrete islands.
With respect to the preamble limitation reciting “for decoratively covering at least a portion of one or more objects”, it is noted that this limitation is a functional limitation related to the intended use of the claimed product. Any decorative article which is capable of performing the claimed function is considered to satisfy this limitation. The garment taught by Xie et al. is capable of decoratively covering a portion of an object (e.g., a mannequin), and thus satisfies the claimed functional limitation.
Regarding claim 2, Xie et al. teaches all of the limitations of claim 1 above. As noted above, Xie et al. teaches that the breathable fabric (10; base layer) may be a stretchable fabric, which may comprise spandex or elastane fibers ([0040]), thus forming a highly flexible fabric layer. The retroreflective laminate (50) which constitutes the discrete islands (21) comprises a binder layer (60), transparent microspheres (70), and an adhesive (63) ([0045], Fig. 5). The binder layer may be a thermoplastic or thermoset material that imparts the retroreflective laminate with sufficient mechanical integrity, wherein the binder may be deformable at a lamination temperature [0088]. The transparent microspheres may be made of glass, and the adhesive may be thermoplastic or thermosettable ([0062], [0093]). The retroreflective laminate would therefore have a smaller flexibility than the breathable fabric, for example at ambient temperature where the thermoplastic or thermoset materials of the binder and adhesive are not as highly deformable.
Regarding claims 3 and 4, Xie et al. teaches all of the limitations of claim 1 above and further teaches that the discrete islands may be present in any suitable arrangement or pattern, e.g., in a square array, a hexagonal array, a nonuniform or irregular array, etc. [0023].
Regarding claims 5-7, Xie et al. teaches all of the limitations of claim 1 above. As noted above, Xie et al. teaches that the disposing of discrete islands of retroreflective laminate on the stretchable fabric need not necessarily reduce the stretchiness of the fabric unduly ([0040], [0116]). One of ordinary skill in the art, however, would recognize that the retroreflective regions (14; second section) in which the discrete islands of retroreflective laminate are disposed would be at least slightly reduced in stretchiness as compared to the regions (15; first section) between retroreflective regions due to the presence of the additional material. The regions (15) without discrete islands therefore are configured to stretch to a greater extent than the regions (14) with discrete islands. The discrete islands are therefore also considered to be distributed in such as manner so as to control or vary the stretching characteristics of the garment in the retroreflective regions as compared to the non-retroreflective regions (i.e., across the garment).
Regarding claims 8 and 11, Xie et al. teaches all of the limitations of claim 1 above and further teaches that if it is desired that the fabric exhibit heat resistance and/or flame retardance, the breathable fabric (10) may include, or be made of, well-known materials such as Kevlar, Nomex, Celazole, or PBI-LP [0039]. These materials correspond to the claimed flame retardant substance, and a garment made from any of these flame retardant materials would pass the vertical burn test as claimed.
Regarding claim 9, Xie et al. teaches all of the limitations of claim 1 above and further teaches that the stretchable fabric can be reversibly stretched to an elongation of at least 50% without the fabric undergoing any permanent deformation or damage, where such fabrics may comprise a blend of spandex or elastane fibers with other fibers [0040]. Given that the fabric is intended for use as a garment, one of ordinary skill in the art would recognize that such a stretchable fabric would be elastically stretchable in at least two dimensions.
Regarding claim 10, Xie et al. teaches all of the limitations of claim 1 above and further teaches that the breathable fabric (10; base layer made of a second material) may be a textile, e.g., a woven or non-woven textile, or any sheet-like material that is suitable for use as a garment [0039].
Regarding claims 12 and 13, Xie et al. teaches all of the limitations of claim 1 above and further teaches that the retroreflective laminate (50; first material) comprises a binder layer (60), transparent microspheres (70), and an adhesive layer (63), wherein a reflective layer (73) is disposed between each microsphere and the binder layer ([0045], [0047], Fig. 5). The reflective layer may comprise a metal layer ([0095]), such that the retroreflective laminate includes a metal.
Regarding claim 14, Xie et al. teaches all of the limitations of claim 1 above. As noted above, Xie et al. teaches that the disposing of discrete islands of retroreflective laminate on the stretchable fabric need not necessarily reduce the stretchiness of the fabric unduly ([0040], [0116]). One of ordinary skill in the art, however, would recognize that the retroreflective regions (14) in which the discrete islands of retroreflective laminate are disposed would be at least slightly reduced in stretchiness as compared to the regions (15) or the regions (22) between retroreflective regions due to the presence of the additional material. The discrete islands are therefore capable of at least partially preventing the fabric from stretching at the interface surfaces where the discrete islands are attached to the fabric.
Regarding claim 16, Xie et al. teaches all of the limitations of claim 1 above and further teaches that the retroreflective laminate may be, e.g., 0.10-0.15 mm in thickness ([0052]), such that the discrete islands of retroreflective laminate are configured as projections which extend from the major surface of the breathable fabric by a distance corresponding to the thickness of the retroreflective laminate.
Claims 1-7, 9-11, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Graetzl et al. (DE 102019108418, machine translation via EPO provided).
Regarding claims 1, 2, 5-7, 10, 14, and 15 Graetzl et al. teaches a composite material (1; decorative article) comprising a support layer (10; base layer) for several plastic areas (20, 21, 22, 23, 24, 25; discrete islands) made of a rigid plastic (first material) ([0019], Figs. 1-2). As shown in Figs. 1 and 2, the plastic areas are attached to a first base layer surface of the support layer at discrete positions thereon [0020].
The support layer may be made of an elastic material (second material), such as a thermoplastic polyurethane or thermoplastic elastomer (polymeric material) [0008]. In the areas (second section) where the rigid plastic areas are formed, the support layer is no longer deformable [0022]. However, the plastic areas are spaced apart from each other, leaving an area (26, 27; first section) between them in which the support layer remains flexibly deformable ([0022], Figs. 2-4). The composite material is therefore stretchable only in regions arranged between the plastic areas.
With respect to the preamble limitation reciting “for decoratively covering at least a portion of one or more objects”, it is noted that this limitation is a functional limitation related to the intended use of the claimed product. Any decorative article which is capable of performing the claimed function is considered to satisfy this limitation. The composite material taught by Graetzl et al. is capable of decoratively covering a portion of an object (e.g., a vehicle interior component, [0016]), and thus satisfies the claimed functional limitation.
Regarding claims 3 and 4, Graetzl et al. teaches all of the limitations of claim 1 above and further teaches that the plastic areas may be formed on the support layer using an additive manufacturing process, such that the plastic areas can have a wide variety of shapes and cross-sections ([0014], [0021]). As shown in Fig. 1, the islands may be arranged in an irregular pattern on the support layer.
Regarding claim 9, Graetzl et al. teaches all of the limitations of claim 1 above. As noted above, Graetzl et al. teaches that the support layer is made of an elastic material, such as thermoplastic polyurethane (TPU) or thermoplastic elastomer (TPE), wherein such materials exhibit high elasticity and allow for multiple repeated movements of the composite material without any visible damage or aging of the flexible material [0008]. The composite material made of TPU or TPE is therefore considered to be elastically stretchable in at least two directions.
Regarding claim 11, Graetzl et al. teaches all of the limitations of claim 1 above and further teaches that the rigid plastic area may be made of a fiber-reinforced plastic material [0011]. Suitable reinforcing fibers include carbon or aramid fibers ([0011]), which correspond to the claimed flame retardant substance.
Regarding claim 16, Graetzl et al. teaches all of the limitations of claim 1 above and further teaches that the plastic areas may be formed by an additive manufacturing process such as fused deposition modeling (FDM) or three-dimensional printing, in which a three-dimensional body is constructed by stacking several layers of extruded material on top of each other in succession [0007]. The plastic areas therefore are configured as projections which extend from the first base layer surface of the support layer.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Xie et al. (US 2023/0337758) as applied to claim 16 above.
Regarding claims 17 and 18, Xie et al. teaches all of the limitations of claim 16 above. Although Xie et al. teaches that the edges (23) of the discrete islands (21) of retroreflective laminate are so subtle that a person might be able to run their finger along the fabric and not be able to easily tell when the edges of the islands are encountered, such that the retroreflective laminate has a low profile ([0052]), the reference does not expressly teach that the discrete islands configured as projections are tapered in a direction extending away from the first base layer surface, or that the projections have at least one flank or one or more rounded edges as claimed.
It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the garment of Xie et al. by forming the discrete islands such that the edges are tapered and/or rounded as claimed in order to enhance the effect taught by Xie et al. in which the edges of the discrete islands are not easily discernible.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Graetzl et al. (DE 102019108418, machine translation via EPO provided) as applied to claim 1 above, and further in view of Baek et al. (KR 1998-0043158, machine translation via IP.com provided).
Regarding claim 8, Graetzl et al. teaches all of the limitations of claim 1 above. Graetzl et al. teaches that the support layer can be made of a thermoplastic polyurethane (TPU) or thermoplastic elastomer (TPE), and that the rigid plastic area can be made of a thermoplastic, such as PA6, and can include reinforcing fibers such as carbon, glass, or aramid fibers ([0008], [0010]-[0011]). Graetzl et al. further teaches that the composite material can be used as a vehicle component, e.g., an outer skin component or an interior component such as a door panel or a dashboard panel ([0016]), but does not expressly teach that the composite material is configured to pass the vertical burn test.
However, in the analogous art of vehicle components, Baek et al. teaches a resin composition used for door panels, vehicle interior covers, trunk and seat barrier walls, etc., wherein the resin composition has flame retardancy of UL 94V0 grade without melt-fall during combustion (p. 2). In particular, Baek et al. teaches incorporating a flame retardant component at an amount sufficient to enable the resin composition to pass the UL 94 vertical combustion test (p. 3-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite material of Graetzl et al. by incorporating a flame retardant additive into the resin composition used to form the support layer and/or the plastic areas at an amount sufficient to enable the vehicle component to pass the vertical burn test, as suggested by Baek et al. One of ordinary skill in the art would have been motivated to make such a modification in order to improve the flame retardant properties of the component, thus ensuring a high level of safety for vehicle occupants.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Graetzl et al. (DE 102019108418, machine translation via EPO provided) as applied to claim 16 above.
Regarding claims 17 and 18, Graetzl et al. teaches all of the limitations of claim 16 above. Although Graetzl et al. teaches that the plastic areas (discrete islands) can be a wide variety of shapes and cross-sections, wherein it is possible to produce complex structures for the plastic areas by additive manufacturing ([0021]), the reference does not expressly teach that the plastic areas configured as projections are tapered in a direction extending away from the first base layer surface, or that the projections have at least one flank or one or more rounded edges as claimed.
However, Graetzl et al. does further teach that in operation, the rigid plastic area (20) is lifted by an adjusting device (40) in order to change the outer contour of the composite material, wherein the rigid plastic is arranged in a recess of the supporting structure (30) ([0024]-[0025], Figs. 3-4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite material of Graetzl et al. by forming the rigid plastic areas such that the edges are tapered and/or rounded as claimed in order to ensure that the plastic area can be easily lifted and returned to position without grazing the adjacent supporting structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Grogro (US 2014/0173815) teaches an article of apparel (100) comprising a garment component (110) to which pad components (300) are joined, where the garment component may be formed of a textile exhibiting one-dimensional or multi-dimensional stretch ([0025], [0027], Figs. 2-5).
Blackford et al. (US 2012/0015155) teaches a material for body gear comprising a plurality of performance characteristic elements (20) disposed on a base fabric (10) in a non-continuous array, where separations between performance characteristic elements may allow the base material to remain exposed in certain areas so that the base material can stretch ([0028], [0030]-[0031], [0034], Figs. 1A-1E).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Rebecca L Grusby/Examiner, Art Unit 1785