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 .
Examiner’s Comments
Applicants’ response filed on 10/10/2024 has been fully considered. Claims 6, 9, 11 and 15 are cancelled, claims 10 and 12-14 are withdrawn and claims 1-5, 7-8, 10 and 12-14 are pending.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-5 and 7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Clement et al (EP 3 415 337 A1).
Regarding claim 1, Clement discloses a décor paper (decorative paper layer) comprising a paper layer (base paper layer with a core; paragraph [0012]) and an inkjet receiver coating coated on at least one side of the paper layer (ink receiving layer provide on the base paper layer; paragraph [0012]). The paper layer comprising titanium oxide as a whitening agent is a core of the base paper layer and is free from silica particles. The inkjet receiver comprises a pigment and a binder (paragraph [0012]) and a printed pattern printed on the décor paper by means of a digital ink printer (pattern formed by digitally applying inks to a surface of the ink receiving layer; paragraph [0086]). The décor paper having the inkjet receiver coating has a Gurley value between 30 and 80 seconds (paragraph [0030]). The ink receiver coating comprises an ink reactive compound (paragraph [0012]). The ink reactive compound comprises a CaCl2 metal salt (paragraph [0018]) and the paper layer comprises titanium oxide as a whitening agent (paragraph [0074]). Since Clement discloses a décor paper comprising a base paper having an inkjet receiver coating having a pigment, binder and an ink reactive compound of CaCl-2 and a Gurley value between 30 and 80 seconds as claimed, it will inherently have the claimed ink penetrating from the surface into the core of the base paper layer over a depth that is less than 30% of a thickness of the base paper layer.
Regarding claim 3, since Clement discloses a décor paper comprising a base paper having an inkjet receiver coating having a pigment, binder and an ink reactive compound of CaCl-2 and a Gurley value between 30 and 80 seconds as claimed, it will therefore inherently have the claimed depth being less than 30 µm.
Regarding claim 4, Clement discloses the décor paper comprising an inkjet receiver coating comprising silica particles (silica particles available on the surface of the base paper layer; paragraph [0048]).
Regarding claim 5, Clement discloses the décor paper comprising the silica particles being precipitated silica (paragraph [0048]).
Regarding claim 7, the limitation that the inks are applied by firing droplets to the base paper at a definition as expressed by a DPI and yielding an average distance in between centers of each dot formed by each ink droplet and that the dots formed by the ink droplets are larger than the average distance is a product-by-process limitation. Clement discloses décor paper with a pattern printed on the décor paper by means of a digital ink printer (pattern formed by digitally applying inks to a surface of the ink receiving layer; paragraph [0086])
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). Since Clement discloses décor paper comprising a base paper having an inkjet receiver coating that includes a pigment, a binder and a CaCl-2 ink reactive compound with a pattern printed on the décor paper by means of a digital ink printer (pattern formed by digitally applying inks to a surface of the ink receiving layer; paragraph [0086]) and a Gurley value between 30 and 80 seconds as claimed, it will inherently have an average distance in between centers of each dot formed by each ink droplet where the dots formed by the ink droplets are larger than the average distance between the dots.
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, 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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Clement et al (EP 3 415 337 A1) as applied to claim 1.
Regarding claim 2, Clement discloses a décor paper comprising a base paper having a thickness of 0.05 millimeters or more and 0.5 millimeters of less (50-500 mm, paragraph [0094]). The thickness of the base paper overlaps the claimed thickness for the base paper layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to have a paper layer with increased strength and durability while not being too thick in order to maintain flexibility and not use excess material as a means for reducing cost. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Clement (EP 3 199 360 A1) in view of Toles (WO 2013/105912 A2) as evidenced by Dannhauser et al (US 2017/0028688 A1).
Regarding claim 1, Clement discloses a décor paper (decorative paper layer) comprising a base paper layer (base paper layer with a core; paragraph [0014]) and an inkjet receiver coating coated on at least one side of the paper layer (ink receiving layer provided on the base paper layer; paragraph [0014]). The inkjet receiver coating comprise a pigment and a binder (paragraph [0014]). The paper layer has a printed pattern formed by printing a pigment containing ink by means of a digital inkjet printer (pattern formed by digitally applying inks to at least one surface of the base paper layer; paragraph [0060]). The first and/or second composition for the inkjet receiver coating comprises an additive (paragraphs [0041] and [0042]). The décor paper including the inkjet receiving coating has a Gurley value between 60 and 120 seconds (paragraph [0020]). The paper layer comprises titanium oxide as a whitening agent (paragraph [0061]) and is considered to be a core of the base paper layer that is free from silica particles.
The range for the Gurley value in Clement overlaps the claimed range for the Gurley value. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to provide excellent quality and deposited inks bleeding less into the paper (paragraph [0020]). It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Clement does not disclose a décor paper comprising a inkjet receiver coating having a metal salt comprising calcium chloride.
However, Toles discloses a method comprising applying a coating composition for an ink receiving layer onto a recording medium (pg. 3, lines 3-11) and wherein the coating composition comprises additives such as calcium chloride (pg. 5, lines 22-25).
It would have been obvious to one of ordinary skill in the art having the teachings of Clement and Toles before him or her, to modify the décor paper of Clement to include the calcium chloride of Toles as the additive of Clement because calcium chloride provides improved ink adhesion as a multivalent metal salt.
Paragraphs [0049]-[0050] of Dannhauser discloses that calcium chloride functions as a multivalent metal salt and provides improved ink adhesion from the metal cations forming ionic bond with the anionic pigments in the ink.
Since Clement in view of Toles render obvious a paper layer having an inkjet receiver coating having a pigment, binder and an ink reactive compound of CaCl-2 and an overlapping Gurley value of between 60 and 80 seconds as claimed, the combination will inherently have the claimed ink penetrating from the surface into the core of the base paper layer over a depth that is less than 30% of a thickness of the base paper layer.
Regarding claim 2, Clement does not appear to disclose the décor paper comprising the paper layer having a thickness between 50 and 200 µm.
However, it would have been obvious to one of ordinary skill in the art to adjust the thickness of the paper layer to be between 50 and 200 µm because one would do so in order to have a paper layer with increased strength and durability while not being too thick in order to maintain flexibility and not use excess material as a means for reducing cost.
Regarding claim 3, since Clement discloses a paper layer, an inkjet receiver coating comprising a pigment and a binder and the overlapped portion of the Gurley value as claimed; it will inherently have a depth less than 30 µm.
Regarding claim 4, Clement discloses the décor paper comprising the pigment in the inkjet receiver coating being silica (silica particles available on the surface of the base paper layer; paragraph [0034]).
Regarding claim 5, Clement discloses the décor paper comprising the silica comprising precipitated silica (paragraph [0034]).
Clement does not disclose a specific example of the pigment being precipitated silica. However, it would have been obvious to one of ordinary skill in the art to choose precipitated silica from the list of silicas in the group of paragraph [0034] of Clement in order to have an ink receiver coating where the pigment is precipitated silica.
Regarding claim 7, the limitation that the inks are applied by firing droplets to the base paper at a definition as expressed by a DPI and yielding an average distance in between centers of each dot formed by each ink droplet and that the dots formed by the ink droplets are larger than the average distance is a product-by-process limitation. Clement discloses décor paper with a pattern printed on the décor paper by means of a digital ink printer (pattern formed by digitally applying inks to at least one surface of the base paper layer; paragraph [0060]).
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). Since Clement in view of Toles discloses décor paper comprising a base paper having an inkjet receiver coating that includes a pigment, a binder and a CaCl-2 ink reactive compound with a pattern printed on the décor paper by means of a digital ink printer (pattern formed by digitally applying inks to at least one surface of the base paper layer; paragraph [0060]), it will inherently have an average distance in between centers of each dot formed by each ink droplet where the dots formed by the ink droplets are larger than the average distance between the dots.
Response to Arguments
Applicant’s arguments, see page 5, filed 6/16/2025, with respect to 112(b) rejections have been fully considered and are persuasive. The 112(b) rejections have been overcome and are withdrawn.
Applicant's arguments filed 6/16/2025 have been fully considered but they are not persuasive.
Applicants argue that Clement ‘337 does not say anything about the presence or absence of silica particles.
This argument is not persuasive as Clement ‘337 does not teach or suggest the paper layer comprising silica particles. The lack of disclosure of silica particles would suggest to one of ordinary skill in the art that the core of the base paper layer does not include silica particles.
Applicants argue that Clement ‘360 does not say anything about the presence or absence of silica particles.
This argument is not persuasive as Clement ‘360 does not teach or suggest the paper layer comprising silica particles. The lack of disclosure of silica particles would suggest to one of ordinary skill in the art that the core of the base paper layer does not include silica particles.
Applicants argue that Toles does not cure the deficiencies of Clement ‘360.
This argument is not persuasive as Toles is a teaching reference used to teach calcium chloride. However, note that while Toles does not disclose all the features of the present claimed invention, Toles is a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather, this reference teaches certain concepts, namely calcium chloride, and in combination with the primary reference (‘360), discloses the presently claimed invention.
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 or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785