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 .
Claim Interpretation
Claim 9 recites the limitation “the carrier is a furniture foil” which is an intended use of the laminate substrate. The examiner notes that there is no special definition of a “furniture foil” in the original disclosure.
However, based on “Foiling Services”, the term “foil” in the furniture decoration field includes “a thin, robust layer of material you can apply to a multitude of materials” and includes PVC furniture foils (see https://foilingservices.co.uk/how-pvc-foil-transforms-furniture/#:~:text=PVC%20furniture%20foil%20is%20quite,safe%20from%20wear%20and%20tear) and YoDean Décor teaches that “[f]oil finish is furniture paper with PU coating, widely used in various wood-like panel surfaces, that can install as different furniture” and “[s]ometimes, foil finish is used for wall panels, baseboards, inner door and photo frames, and door frame decor" (see https://www.yodean-decor.com/what-is-foil-finish/#:~:text=Foil%20finish%20is%20furniture%20paper,frames%2C%20and%20door%20frame%20decor.).
Thus, it is apparent that a foil is an intended use and does not provide any specific structure other than the presence of a substrate and it’s capability of being used as a decorative coating for furniture.
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 3, 8, & 9 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 8: Claim 8 recites the limitation "the process" in line 16. There is insufficient antecedent basis for this limitation in the claim.
Claim 8: Claim 8 recites the limitation “the process” in line 16 which renders the claim indefinite because there is no “a process” to refer back to and therefore one of ordinary skill in the art would not be able to ascertain the metes and bounds of the claim.
“[T]he process” in being interpreted as reading on any subset of the method because the claim is “comprising” wherein the first part is the process and anything after a point is considered a post-process step.
Claims 3 & 9: Claims 3 & 9 are rejected as being indefinite because they depend from claim 8 and do not remedy the issues of claim 8.
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 3, 8, & 9 /are rejected under 35 U.S.C. 103 as being unpatentable over Goodson et al. (US PG Pub 2004/0053040; hereafter ‘040) in view of Scholz et al. (US PG Pub 2007/0104863; hereafter ‘863) and Fischer et al. (US PG Pub 2014/0371384; hereafter ‘384).
Claims 8 & 9: ‘040 is directed towards adhesive laminate structures (title & ¶ 34) with matte finishes (¶ 66) suitable for use in furniture applications (i.e. matte coated furniture foils; ¶ 2) and automotive applications (¶ 2).
‘040 does not teach the claimed process for producing a matte finish.
However, ’863 which is directed towards producing matte coatings in the automotive finishes field (title and abstract) discloses a process for the production of a multilayer coating (title) comprising applying a matte coating followed by a clear coating (see abstract) wherein the matte coating can be applied as two or more spray passes with or without intermediary curing to form the matte layer (see ¶ 46) wherein the coating can comprise an adhesion promoter (¶s 41 & 47). ‘863 teaches that the composition can be cured with UV radiation (¶ 20).
It would have been obvious to one of ordinary skill in the art at the time of filing to produce the matte coatings on the adhesive laminates of ‘040 by the process of ‘863 because the process of ‘863 is an art recognized means of producing matte coatings and would predictably provide a suitable matte layer for the laminates of ‘040.
‘863 does not teach that the adhesion promoter (/.e. an additive improving the bond strength of the coating between the layers) has a concentration of 5-30% in weight.
However, the concentration of an adhesion promoter is a result-effective variable based on the degree of adhesion desired and it is obvious to optimize the concentration of an adhesion promoter to obtain the desired degree of adhesion.
"Where 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)(B).
Additionally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of aclaim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
‘863 does not teach forming matte coating by first exposing the coating to excimer radiation with a wavelength of 172 nm followed by treating with UV radiation in order to achieve an adequate gelatinization effect.
However, ‘384 is directed towards a method of producing homogeneously matted coatings (title) discloses a process of forming a matte coating comprising exposing the coating to a two-step exposure process comprising partial gelation using UV radiation followed by irradiation with excimer radiation with a wavelength of 172 nm to achieve micro-folding (i.e. matting the coating) and then subsequent finish curing by means of a electron beam (¶ 55).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the matte coating composition of ‘384 and the process of rendering the coating a matte coating taught by ‘384 into the coating process of ‘863 such that each layer of the matte coating of ‘863 is produced by the process and composition of ‘384 because the composition and process of ‘384 is an art recognized method of forming a matte coating and would have predictably produced the desired results.
The combination does not teach performing the UV exposure after performing the excimer exposure as claimed.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to reverse the order of operations such that the coating is gelatinize by the UV exposure and then the matte effect is created by the excimer exposure because any order of operations is prima facie obvious absent a showing of unexpected and critical results. See MPEP §2144.04(IV)(C).
The Examiner notes that the second matting layer can be termed the outer layer of the coating because it is formed and the structure is cured prior to forming the clear coat and thus at that specific point in time it is the outer layer. Additionally, as discussed above, the limitation “wherein, after completing the process, the outer layer is a final matte layer” causes ambiguity because it is unclear what process “the process” refers to; however, it is apparent that the layers formed in the combination can be interpreted as forming the bilayer of mattes is the process and the clear coat is a post process step and thus it is apparent that the combination teaches the limitation.
Claim 3: The combination does not teach the claimed dosage for the electron beam when used for the gelatinization step.
However, the dose of a curing means is a result-effective variable based on the degree of curing desired and it is obvious to optimize dose to obtain the desired degree of curing (i.e. degree of gelatinization).
"Where 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)(B).
Response to Arguments
Applicant's arguments filed 9/4/25 have been fully considered but they are not persuasive.
In regards to applicant’s argument that “foil” should be interpreted as “a thin, robust layer of material”; the Office does not find this argument convincing because no evidence has been provided to demonstrate that this is the sole definition for the term and additionally, applicant is advised this definition would create additional 112(b) issues because thin and robust are comparative terms without any reference point and thus one of ordinary skill in the art would not be able to determine the metes and bounds of the limitation.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that ‘040 is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, ‘040 is:
in the same field of endeavor because is directed towards adhesive laminate structures (title & ¶ 34) with matte finishes (¶ 66) suitable for use in furniture applications (i.e. matte coated furniture foils; ¶ 2) and automotive applications (¶ 2) and the instant application is directed towards matte finished foils for use on furniture (title and claims 8 & 9) and thus it is apparent that ‘040 and the instant application are in the same fields of endeavor, and
reasonably pertinent to the problem faced by the inventor because it teaches that matter furniture foils are a desirable product and thus one would desire to make them.
In regards to applicant’s argument that ‘863 does not disclose or suggest “wherein the matte coating can be applied as two or more spray passes with or without intermediary curing to form the matte layer; the Office does not find this argument convincing because ‘863 teaches that the layer can be applied two or more spray passes which in turn means two or more layers are applied which can be applied wet-on-wet which in turn teaches that it is optional to perform intermediary curing and thus ‘863 teaches the claimed limitation.
In response to applicant's argument that ‘863 is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, ‘040 is in the same field of invention because it is directed towards matte coatings.
In response to applicant's argument that ‘863 teaches additional materials in the coating, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that ‘384 is directed towards thicker coatings and not multilayers, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In regards to applicant’s that ‘384 teaches away from multilayer matte coatings; the Office does not find this argument convincing because ‘384 does not teach that the multilayer matte coatings are not possible, instead ‘863 teaches curing a layer to form a matte layer and ‘384 teaches a curing process which produces a matte effect on a layer and thus as discussed above, one of ordinary skill in the art would have found it obvious to use the curing process of ‘384 with the composition of ‘384 to produce the multilayers of ‘863.
In response to applicant's argument that ‘384 is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, ‘040 is in the same field of invention because it is directed towards matte coatings.
In regards to applicant’s discussion regarding the result-effective variable analysis of the concentration of adhesion promoter, the order of operation of the UV and excimer exposure; the Office notes that applicant disagrees with the obviousness arguments but does not specifically address any fault in the reasoning and thus the Office does not find this argument convincing because as discussed above, result-effective variables are prima facie obvious to optimize and it is well recognized that any order of steps is prima facie obvious unless there is a showing of unexpected results and applicant has not presented any unexpected results.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., exclusion of specific chemicals from the composition, ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In regards to applicant’s argument that the amendment to claim 8, reciting “after completing the process” excludes the clear coat of the combination; the Office does not find this argument convincing because as discussed above, the claim is comprising, there is no portion of the claim recited as “a process” so it is unclear what portion is referred to and the clear coat of the prior art can be termed as a post process step and thus the combination still reads on the claims as recited.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759