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 .
DETAILED ACTION
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US Patent 5,312,868, published 17 May 1994, hereinafter Abe).
Regarding claims 1-7, Abe teaches a thermosetting covering sheet comprising a reactive acrylic resin and a blocking isocyanate, and the reactive acrylic resin has a plurality of functional groups and a weight average molecular weight of 100,000 to 1,000,000 (Abstract). Abe teaches his reactive acrylic resin contains acrylic polyol (col. 6, lines 36-52). Abe teaches the inclusion of supporting layer that is peeled off (that is, a transfer layer) after the sheet has been applied to the substrate and the base layer is hardened (cured) (col. 22, lines 45-68). Abe teaches that his base layer and surface layer can contain colorants (col. 22, lines 4-7); therefore, Abe teaches embodiments comprising a clear layer (no colorants) and a pigment layer (some colorants).
Abe teaches his covering sheet is a hard coating (Title and col. 5, lines 1-4), and the hardness of his coating can be varied by adjusting the glass transition temperature and functional groups on his reactive acrylic resin (col. 7, lines 48-53). Abe conducts tensile tests on his covering sheet to elongations of 100%, which did not produce tears (col. 30, lines 13-18 and Table A.1). The hardness of his covering sheet was determined using a pencil hardness test (col. 30, lines 29-32).
Abe does not disclose the indentation modulus of his covering sheet after 1 hour of curing at 160°C nor the tensile elongation at break in MD and TD at 100°C. However, given that the covering sheet taught by Abe has the same composition as the claimed coating sheet (an acrylic polyol resin with a plurality of functional groups and with the claimed molecular weight and a blocked isocyanate) and Abe’s teaching on hardness and tensile elongation values, the covering sheet taught by Abe would inherently have the same indentation modulus after 1 hour of curing at 160°C and the tensile elongation at break in MD and TD at 100°C as the claimed invention, and therefore, would fall within the claimed ranges for the indentation modulus after 1 hour of curing at 160°C and the tensile elongation at break in MD and TD at 100°C.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a weight average molecular weight from the overlapping portion of the range taught by Abe because overlapping ranges have been held to be prima facie obviousness.
In light of the overlap between the claimed coating sheet and that disclosed by Abe, it would have been obvious to one of ordinary skill in the art to use a coating sheet that is both disclosed by Abe and is encompassed within the scope of the present claims, and thereby, arrive at the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kataoka et al. (US Patent Application 2017/0095996 A1, published 06 Apr. 2017) teaches a decorative sheet with a protective coating comprising a blocked isocyanate and an acrylic polyol resin with a molecular weight of 2000 or more; his protective coating has an elongation of 350%; and decorative sheet has an ink/pigment layer. Kondo and Kojima (US Patent Application 2014/0147597 A1, published 29 May 2014) teach a clear coating comprising an acrylic polyol and a blocked isocyanate, and the final properties of the coating can be varied by varying the molecular weight of the acrylic polyol.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787
