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 1, claims 29-29, in the reply filed on 9/15/2026 is acknowledged.
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.
Claim(s) 20, 22-25, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over FLYNN et al. (US 2011/0309608) in view of COHEN et al. (US 2011/0267793).
Regarding claim 20, FLYNN teaches a system for protecting a substrate surface comprising a protective film 22 having an adherent surface on one side and a segmented backing assembly 24 comprising plural discrete sections separated by a boundary (paras. 23-25; figs. 1-2). FLYNN does not teach an application tape removably attached to the exterior surface of the protective film. COHEN teaches another system for protecting a substrate surface comprising protective film 410 having an adhesive side with a backing sheet attached thereto, wherein an application tape 510 is removably attached to the exterior surface of the film, where it would have been obvious to one of ordinary skill in the art at the time of the invention to include an application tape on the exterior surface of the protective film of FLYNN in order to prevent damage to the exterior of the protective film during application (COHEN; paras. 50-52; figs. 5 and 8).
Regarding claim 22, FLYNN teaches the discrete sections comprise mating edges defining the boundary (FLYNN; fig. 2).
Regarding claim 23, FLYNN teaches the mating edge boundary overlie the protective film between opposite ends (FLYNN; fig. 2).
Regarding claim 24, FLYNN does not teach a backing thickness, but it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a backing thickness between 0.005 and 0.010 inches because there would have been a reasonable expectation of producing a system that functions in the same manner (MPEP 2141) and changing dimensions has been held per se obvious (MPEP 2144.04).
Regarding claim 25, COHEN teaches peeling the backing before peeling the application tape (COHEN; para. 44) such that it would have been obvious to one of ordinary skill in the art at the time of the invention that the backing is more readily removed from the protective film than is the application tape.
Regarding claim 27, FLYNN teaches the backing extends beyond a periphery of the protective film at tab 46 (FLYNN; para. 25; fig. 2).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as combined as applied to claim 20 above, and further in view of THOMAS et al. (US 2004/0246386).
Regarding claim 26, FLYNN does not teach the backing material is transparent or translucent, but it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a transparent backing as a well-known aesthetic quality, as disclosed by THOMAS (para. 14).
Claim(s) 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as combined as applied to claim 20 above, and further in view of WICK (US 6,129,929).
Regarding claims 28-29, COHEN does not teach the application tape comprises indicia. WICK teaches another method of peeling a backing from an adhesive protective layer, wherein the application tape comprises color or printing graphical indicia, where one of ordinary skill in the art at the time of the invention would include such indicia on the application tape of the references as combined in order to facilitate alignment of the adhesive substrate during application (WICK; col. 6, lines 13-34).
Allowable Subject Matter
Claim 21 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not teach or fairly suggest a system as claimed wherein the backing is more rigid than the protective film.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nickolas R Harm whose telephone number is (571)270-7605. The examiner can normally be reached 10:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICKOLAS R HARM/Examiner, Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
