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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/133,785, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 1 recites “a paint protection film laminate […] wherein the paint protection film laminate comprises a paint protection film”. While the prior-filed application provides support for a paint protection film laminate comprising a paint protection film and a release film (prior-filed specification at [0023]), and, optionally, further comprising a protective film and/or an adhesive layer and/or a hard coating layer (prior-filed specification at [0140], [0147], and [0153]), the prior-filed application does not provide support for the presently claimed paint protection film laminate comprising a paint protection film with an implied additional layer that can be any kind of layer, including those other than a release film, protective film, an adhesive layer, and/or a hard coating layer as previously disclosed. In other words, while previous disclosure describes a laminate comprising the paint protection film and one or more specific layers, the disclosure does not describe a laminate comprising a paint protection film and a generic additional layer as claimed. (Further see the rejection under 35 USC 112(b) regarding the term “laminate” and the implied presence of an additional layer.)
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: As discussed above, the present application discloses “a paint protection film laminate […] wherein the paint protection film laminate comprises a paint protection film” in claim 1. The specification further recites similarly broad language in [0009-0010]. Such features represent new matter for the same reasons described above.
Claim Rejections - 35 USC § 112
Claims 1-15 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.
Claim 1 recites “a paint protection film laminate […] wherein the paint protection film laminate comprises a paint protection film”. The claim is indefinite because it is not clear if the term “laminate” requires the presence of an additional film or layer other than the “paint protection film”. A “laminate” typically refers to two or more layers of material, but the claim recites only the paint protection film. The examiner notes the parent application, Application No. 18/133,785, discloses in its specification at [0023] that “A paint protection film laminate according to another embodiment may include the paint protection film and a release film disposed on one side of the paint protection film”. Furthermore, the parent application at [0049] discloses “The paint protection film 100 has a feature […]. Due to this feature, the paint protection film and the paint protection film laminate including the same do not require a separate local cooling or heating device […].” These disclosures, particularly the one in [0049], indicate Applicant has distinguished between a paint protection film (single layer) and a laminate comprising the same (more than a single layer). It is unclear if the present claim encompasses a laminate having only the “paint protection film”. For purposes of examination, the term “laminate” is interpreted to require multiple layers, and so the claimed paint protection film laminate requires both the recited paint protection film and an unrecited additional layer. Dependent claims are rejected given their dependency on the parent claim.
Claim 5 recites “a hard coating layer disposed on another surface of the paint protection film.” The phrase “another surface” renders the claim indefinite because the claim does not recite a first surface of the paint protection film. Therefore, it is not clear what is meant by “another” surface.
Claim Rejections - 35 USC § 102
Claim(s) 1-3, 5-7, and 10-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu et al. (CN 109385223).
Note: citations refer to the machine translation of CN ‘223 mailed on 4/10/2025 in parent Application Number 18/133,785. Applicant additionally cited the reference in the IDS mailed 1/13/2026.
Regarding claims 1-3, 6, and 10-15:
Zhu discloses a protective film made for use with painted surfaces (abstract; p2). The film comprises a thermoplastic polyamide elastomer film substrate (p5). Zhu teaches the use of a polyamide elastomer provided under the trade name PEBAX 3533, which are the same materials used in the present invention (Zhu translation at p5; original CN ‘223 at [0049]; and the present specification at, e.g., [0194]). Given that Zhu discloses a film comprising the same material as used in the present invention, the examiner submits the film must meet the same claimed property requirements. Where the claimed and prior art products are identical or substantially identical in structure or composition a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 5:
Zhu discloses the film further comprises a PET film (p5). Given that the present claim does not establish a required degree of hardness, the examiner considers the PET film to meet the broadly claimed requirements.
Regarding claim 7:
Zhu discloses the use of an adhesive layer the protective film can be applied to the leading edge of a wing or rotor, which is inherently curved (abstract; p3).
Claim Rejections - 35 USC § 103
Claim(s) 4 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (CN 109385223) in view of Lee et al. (WO 2017/188728).
Note: citations refer to the machine translation of WO ‘728 provided with this Office Action.
Regarding claim 4:
Zhu discloses a protective film made for use with painted surfaces as previously explained, wherein the film comprises an adhesive layer (abstract; p3).
Zhu is silent with regard to an adhesive layer that is transparent.
Such adhesives were known in the art to have utility. For example, Lee is directed toward paint protection films and discloses that transparent films are used for paint protection films so the original paint of a vehicle is visible [abstract; 1; 6]. Lee teaches the use of a transparent adhesive layer to provide this effect [28].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a transparent adhesive in the paint protection film taught by Zhu to provide a transparent paint protective film so that the original paint can be seen underneath the film.
Regarding claim 8-9:
Zhu discloses the protective film can be applied to an aircraft (abstract; p3).
Zhu is silent with regard to applying the film to an automotive exterior component.
It was known in the art to use paint protection films alternatively with aircraft or automobiles. Lee teaches paint protection films are designed to protect vehicles from debris and that such films were originally designed for to protect aircraft and subsequently used to protect automobiles [2-4]. Therefore, films can be used on either aircraft or automobiles [58].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to apply the protective film of Zhu to an automobile to provide protection to the paint thereon as known in the art. Furthermore, while neither Zhu nor Lee explicitly disclose a hood, roof panel, front panel, rear panel, trunk, or door as presently claimed, one of ordinary skill in the art would recognize Lee teaches a protection film would be placed on whatever painted surface requires protection and further one of ordinary skill would recognize that the claimed components (hood, roof panel, etc.) were known painted components of an automobile. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to apply Zhu’s protection film to an automotive exterior component, including those claimed, to provide the protection to the component.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 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 D FREEMAN/Primary Examiner, Art Unit 1787
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