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 .
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 7 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.
As understood by person of ordinary skill in the art, “sine wave” has a distinct shape, with a sine function (or varying periodicity and/or amplitude) being able to describe features of this shape. However, any shape that has a pronounced Rpk value cannot possibly be defined using just a sine function, because peaks defined by a sine function all have the same height, which means that a core roughness profile captures the entire height of such a shape. (Refer to definition of Rpk from NPL from Tokyo Seimitsu, relevant image reproduced infra).
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As a result, because Rpk seeks to capture height above core roughness profile, and because there is nothing to capture in a situation where all peaks have the same height, Rpk would be zero in a situation where a cross-section of ridges can be described as a sine wave shape. As such, the requirements of claim 7 conflicts with what is required in claim 1.
This is particularly the case here, as Applicant deems the idealized ridge parts in the schematic of Fig. 2 as having a sine wave shape. However, setting aside the fact that Fig. 2 shows an idealized sine wave shape, Fig. 2 also fails to show any additional peak areas above location of some of the local maxima, such additional peak areas responsible for the Rpk value.
As claim 7 requires a configuration that is not possible, it is by definition indefinite. For prior art rejection, any feature that can be idealized into a schematic showing a sine wave reads on the limitation.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Although limitations regarding ratio of Si to the sum of C, O, and Si appears in the originally filed claims, Applicant is reminded that this is not sufficient to demonstrate possession of the claimed subject matter at the time of filing. In particular, the specification describes the ratio in the context of a surface protection layer formed as a composite of a cured resin and silica. (Spec. ¶¶ 0064-0069). Yet claim 1 and the dependent claims omit any reference to the polymer/inorganic composite nature of the surface protection layer (although claim 9 has one fewer issue by at least stating the polymeric nature of the surface protection layer). Such elision is problematic, as it leads to questions of whether the entire scope of claimed subject matter is supported by the specification as filed.
The MPEP sets forth guidelines for determining adequacy of written description. In particular, the MPEP sets forth that determination should be made regarding what a claim as a whole covers and whether disclosure of a specific species can be reasonably taken as support for a broad genus. (See MPEP 2163 §§IIA1 - IIA3). On the issue of support for a broad genus from a single species, the MPEP cites CAFC holding that support for a generic claim is satisfied with a representative number of species falling within the scope of the genus or structural features common to the member of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus. (See MPEP 2163 §IIA3ii, citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406). Furthermore, the MPEP cites CAFC holding that mere identification of a common attribute is not sufficient to identify the entire genus. (See MPEP 2163 §IIA3ii, citing AbbVie 759 F.3d at 1300-01, 111 USPQ2d 1780, 1790-91).
As applied to the Instant Application, without reference to the polymer/inorganic composite, the surface protection layer covers a broad genus of materials, including:
-1) solely inorganic compounds (e.g. (optionally hydrogenated) silicon oxycarbides, usually of the formula SiOxCy:H),
-2) plasma polymers deposited via PECVD,
-3) siloxane compounds (e.g. compounds formed from condensation of silanes, silsesquioxanes per se, and reaction product formed by transforming silsesquioxanes),
-4) polymers formed from monomers having silicon-containing moieties and other reactive moieties, and
-5) composite in which the polymeric component contains no silicon, and wherein silicon is introduced as dispersed phase. This also has additional sub-species of at least 5a) dispersed phase being a silicone or silicon-containing organic particle and 5b) dispersed phase being a silicon-containing inorganic particle (e.g. of 5b1) silica and 5b2) silicon nitride).
Because the Specification contemplated the claimed ratio of Si to the sum of C, O, and Si for the surface protection layer only in the context of a surface protection layer formed from polymer and silica particles, the Specification cannot be said to have identified a sufficient number of species (viz. species 1) – 4) identified in ¶ 11 above). Furthermore, there is no structural features common between 5) with any one from classes 1) – 4) identified above. For instance, the silica particle introduced into a polymer to form a polymer/silica matrix (hallmark of species 5) is different from silicon incorporated as part of monomer (hallmark of species 4). Based on the specification, the only commonality between species 1) – 5) is the claimed ratio of Si to the sum of C, O, and Si. However, echoing the holdings from AbbVie, this ratio is merely a desired result, rather than actual means for achieving the result; and this desired result is not a structural feature common among species 1) – 5). The same holds for differentiation between introduction of Si via silicone particles vs introduction of Si via silica particles, as the two have very different mechanical properties. Furthermore, silica is sufficiently different from silicon nitride as to preclude broad support for silicon-containing inorganic particles.
It is also noted that the specification states that the silica contained directly influences formation of wrinkles, with the wrinkles correspond to the ridged portions. (Spec. ¶¶ 0082, 00101, and 0103). With ridged portion actually claimed, and with silica
As claims 2-10 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2-10 are also held to be rejected.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for surface protection layer to be a composite containing a) cured product of an ionizing radiation-curable resin and b) silica, does not reasonably provide enablement for surface layer of any possible composition. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims..
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO's determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
The factors described above have been considered as follows:
(A) The breadth of the claims.
As discussed in ¶ 11 above, the scope re: material composition of the surface protection layer is currently not limited. As a result, in addition to a surface protection layer containing a) cured product of an ionizing radiation-curable resin and b) silica, scope of claim 1 also extends to 1) solely inorganic compounds (e.g. (optionally hydrogenated) silicon oxycarbides, usually of the formula SiOxCy:H), 2) plasma polymers deposited via PECVD, 3) siloxane compounds (e.g. compounds formed from condensation of silanes, silsesquioxanes per se, and reaction product formed by transforming silsesquioxanes), and 4) polymers formed from monomers having silicon-containing moieties and other reactive moieties.
B) The nature of the invention and (C) The state of the prior art.
The Instant Application states that the silica contained in the surface protection layer directly influences formation of wrinkles, with the wrinkles correspond to the ridged portions. (Spec. ¶¶ 0082, 00101, and 0103).
The phenomenon of usage of silica having diameter of a few microns to form wrinkles is well-known. As shown in references such as WO 2022/054645 A1 (referenced below using its English-language counterpart publication, U.S. 2023/0364640 A1, “Nishine”), silica having diameter of a few microns help to stabilize formation of surface wrinkles. (Nishine ¶¶ 0116-0128).
(F) The amount of direction provided by the inventor and (G) The existence of working examples.
Although the scope of claim 1 covers various types of materials for the surface protection layer, the Specification provides disclosure and specific working examples only for surface protection layer that is a composite containing a) cured product of an ionizing radiation-curable resin and b) silica.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
As both the prior art and the Instant Application recognize the importance of using silica having diameter of a few microns to form wrinkles/ridge shapes, as the scope of claim 1 extends to situations where no usage of silica is required, and as the Specification is silent on how to form wrinkles/ridge shapes for surface protection layers not containing micron-sized silica, it is the Examiner’s position that undue experimentation is required to determine how to make an article spanning the entire scope of claim 1.
Accordingly, even though the statute does not use the term “undue experimentation,” it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.”). It is therefore concluded that the scope of the claims is not enabled by Applicant’s disclosure.
As claims 2-10 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2-10 are also held to be rejected.
Both the rejection under written description requirement and the rejection under scope of enablement can be overcome by requiring the surface protection layer to be a composite containing a) cured product of an ionizing radiation-curable resin and b) silica.
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 of this title, 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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2023/0322013 A1 (“Pisch”) in view of JP 2020/163829 A (referenced below using its machine translation, “JP ‘829”) and WO 2021/066496 A1 (referenced below using its English-language counterpart publication EP 4043528 A1, “Kim”)..
Considering claims 1-5, Pisch discloses a decorative laminate comprising a patterned upper coating layer 21, a lower coating layer 22 serving as an adhesive, a paper impregnated with melamine 3, and a wood substrate 4. (Pisch ¶¶ 0037-0041). Pisch teaches that the pattern on the upper coating layer 21 is formed from an imprint surface having a pattern that is negative of the pattern on the upper coating layer 21, wherein the imprint surface has elongated channels and RSm of 0.5 to 500 µm. (Id. ¶¶ 0014-0016, 0020, and 0035). As shown in Fig. 5 of the reference, the imprint surface has a plurality of ridges, between adjacent ones of which are respective elongated channels. Such channels lead to the formation of ridges on the patterned upper coating layer 21. Pisch is analogous art, for it is directed to the same field of endeavor as that of the instant application (decorative boards having surface wrinkles).
The spacing of features RSm is imprinted onto the patterned upper coating layer 21. As such, the range taught overlaps the claimed ranges. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have selected RSm in the overlapping range as taught in Pisch, as such a range results in desirable low gloss and resistance toward finger print.
Pisch differs from the claimed invention, as it is silent re: a) Rpk value of the upper coating layer 21 and b) claimed Si content. Re: deficiency a), JP ‘829 teaches a decorative material 10 having a substrate 1, various pattern layer 2, build-up print 4 forming a surface texture (including ridge-shaped texture), a protective layer 5 conformally covering the build-up print 4, wherein the decorative material can be attached onto an adherend via an adhesive layer located adjacent a surface of the substrate 1 opposing a surface on which the pattern layer 2 is located. (JP ‘829 ¶¶ 0008 and 0069-0076 and Figs. 1, 2, and 4). JP ‘829 is analogous art, for it is directed to the same field of endeavor as that of the instant application (decorative laminate having surface features).
JP ‘829 teaches that the decorative material 10 has reduced peak height Spk of 4.1 µm or more, with specific examples ~17 µm. (Id. ¶¶ 0020, 0100, and 0101; and Table 1). With JP ‘829 expressly disclosing that Spk value affects tactile sensation of its decorative material, and with the protective layer 5 forming the outermost surface of the decorative material 10, it is clear that this is value pertains to the surface protective layer. Although Spk is not technically the same as Rpk in that the former is a measurement on a 2D region whereas the latter is a measurement along a linear segment, both attempts to account for additional peak height above core roughness and are as such substantially similar. Furthermore, JP ‘829 teaches that the range should be above 4.1 µm for improved tactile sensation and below 25 µm for stain resistance and abrasion resistance. (Id. ¶ 0020). The claimed Rpk is thus deemed substantially similar to the disclosed Spk that the values from the reference anticipate the range. Alternatively, even were the values were to be deemed different (not conceded), JP ‘829 is considered to have taught guideline for obtaining optimal value of additional peak height above core roughness as to make the claimed range a workable range. Silence of a reference on a quantitative limitation when the reference discloses the general characteristic is not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. (See MPEP 2144.05 II.A).
Re: deficiency b), it is noted that the Instant Application effects the claimed ratio via incorporation of silica particles having D50 particle size of 1-10 µm incorporated into a cured resin at 0.5 to 20 parts by mass (pbm) per 100 pbm cured resin. Kim teaches a low-gloss surface layer of a decorative laminate, the low-gloss surface layer formed by curing a (meth)acrylate composition. (Kim ¶¶ 0014, 0015, 0114, and 0118). In particular, Kim teaches that for the purpose of reducing gloss, silica particles are included at up to 5 pbm per 100 pbm cured resin, wherein in all working examples, Kim included 3-5 pbm of colloidal silica having diameter of 3 to 7 µm. (Id. ¶¶ 0128, 0129, 0169, 0170, and 0183; and Table 1). Pisch may be combined with JP ‘829 due to general similarities (surface layer formed from an acrylate composition and keeping a wrinkled shape). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used the 3-5 pbm colloidal silica-containing (meth)acrylate composition of Kim to make the surface layer of JP ‘829, as doing so lowers gloss and improves durability and elongation rate of the resulting layer. (Kim ¶ 0115, 0119, and 0128).
Although this does not lead to a Si ratio, with the claimed ratio directly influenced by how much silica is added, and with Kim teaching addition of colloidal silica having substantially similar size (average of 3 to 7 µm would be 5 µm) and content (up to 5 pbm), it stands to reason that all conditions save for the direct conversion factor needed are taught in Kim, such that the amount of silica taught in Kim leads to either the ratio claimed or could be readily adjusted to read on the ratio.
Pisch in view of JP ‘829 and Kim renders obvious claims 1-5.
Considering claim 6, Kim teaches thickness of 3 to 100 µm for its cured layer. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Considering claim 7, Pisch discloses gloss of 0.5 to 5. (Pisch ¶ 0049). This also comports with teachings of Kim, whose cured layer exhibits gloss of 4.0 to 6.0. (Kim ¶ 0014)
Considering claim 8, sine wave like surface (a superposition of sine waves is itself a sine wave) is shown in Pisch.
Considering claim 9, usage of such acrylate materials for forming a low-gloss surface layer of a decorative laminate is taught in Kim. (Kim ¶¶ 0014, 0015, 0114, and 0118).
Considering claim 10, while Pisch does not teach placing a decorative film onto another substrate via an adhesive, doing so is obvious in view of the teachings of JP ‘829. (JP ‘829 ¶ 0008).
Double Patenting Rejection
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/984,392 (reference application) in view of Kim. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 of the ‘392 Application recites all limitations in claims 1-10 of the Instant Application except the claimed Si ratio. However, with addition of 3-7 µm colloidal silica at 5 pbm taught in Kim, adding such an amount of silica to the surface protection layer of the ‘392 Application would have been obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 19/274,472 (reference application) in view of Kim. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 of the ‘472 Application recites all limitations in claims 1-10 of the Instant Application except the claimed Si ratio. However, with addition of 3-7 µm colloidal silica at 5 pbm taught in Kim, adding such an amount of silica to the surface protection layer of the ‘472 Application would have been obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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