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 § 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.
Claims 1, 3, and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al (US2008/0176039A1) in view of Cong et al (US2016/0312052A1) and Seno et al (US2012/0242768A1).
With regards to claim 1, Chen discloses a surface covering panel (i.e., decorative film) comprising a base coating 2 (i.e., a base film), a printed pattern 4 located on a textured surface 3 of the base coating 2 (i.e., a printed layer disposed on the base film) and a protective layer 5 located on printed pattern 4 (i.e., a protective layer disposed on the printed layer), wherein the protective layer 5 is depicted as having a texture on an uppermost surface (Chen: para. [0002], [0008], and [0047]; Fig. 1). The protective layer 5 may be formed of a material such as a radiation cured urethane acrylate (i.e., a radiation cured product) (Chen: para. [0030]). As best understood, the texture of Chen can be sensed through a visual sense of an observer, as a person is capable of looking at the texture (with or without the assistance of tools such as a microscope).
Chen does not appear to disclose the radiation cured urethane acrylate of the protective layer as a radiation curable inkjet ink formed by inkjet ink, nor does Chen appear to disclose the claimed impact resistance or lack of cracking during bending resistance testing.
Cong is directed to a radiation curable ink composition for inkjet printing comprising 0 wt.% to 25 wt.% of an oligomer such as CN991 (i.e., the bifunctional urethane (meth)acrylate oligomer used in the Example of the present specification) and 50 wt.% to 80 wt.% of a monofunctional acrylic monomer (Cong: para. [0010]-[0013], [0016], [0018], and [0046]; claim 1). Each of the components in the composition of Cong are polymerizable with the exception of the 0.1 wt.% to 5 wt.% of antioxidants, and therefore, the amount of oligomer per 100 parts polymerizable component is 0 parts to 26.3 parts (i.e., [25 / (100 – 5)] x 100 = 26.3) and the amount of monofunctional monomer is 50.5 parts (i.e., [50 / (100 – 0.1)] x 100 = 50.5) to 84.2 parts (i.e., [80 / (100 – 5)] x 100 = 84.2). Cong notes that its composition exhibits improved adhesion to multiple substrates, improved flexibility, and reduced tack without additional brittleness (Cong: para. [0010] and [0017]). It is further noted that, the CN991 oligomer of Cong is bifunctional urethane (meth)acrylate oligomer (as it is the oligomer of the present specification) (see above discussion). Chen and Cong are analogous art in that they are related to the same field of endeavor of radiation curable urethane acrylate materials with improved surface properties. A person of ordinary skill in the art would have found it obvious to have selected the composition of Cong for the protective layer of Chen in order to provide a protective layer with improved flexibility and reduced tack without additional brittleness (Cong: para. [0010] and [0017]). (Cong: para. [0051]; Table 1). A person of ordinary skill in the art would have been particularly motivated to select CN991 as it results in the best possible ratings for surface scratch resistance and surface tack of the materials of Cong (Cong: para. [0051]; Table 1). In addition, according to the teachings of Cong, the amount of oligomer per 100 parts polymerizable component is 0 parts to 26.3 parts (i.e., [25 / (100 – 5)] x 100 = 26.3) and the amount of monofunctional monomer is 50.5 parts (i.e., [50 / (100 – 0.1)] x 100 = 50.5) to 84.2 parts (i.e., [80 / (100 – 5)] x 100 = 84.2) (see above discussion). A person of ordinary skill in the art would have found it obvious to have selected from the ranges of Cong in order to ensure that the protective layer of Chen and Cong has a combination of a tack-free surface and improved flexibility (Cong: para. [0010]-[0012]). These ranges overlap the respective claimed ranges of greater than or equal to 20 parts by mass oligomer and 10 to 80 parts by mass monofunctional monomer per 100 parts by mass polymerizable component, thereby establishing a prima facie case of obviousness, per MPEP 2144.05. It is noted that, as best understood, the protective layer of Chen and Kong would have a texture formed by inkjet printing, as the protective layer is formed by inkjet printing. Alternatively, the phrase “formed by inkjet printing” constitutes product-by-process language. Such language does not limit the claimed invention to the material performance of the recited process steps, but rather, only the structure implied. See MPEP 2113. In the present case, the claims require a texture. Chen and Kong suggest such a product. It is further noted that the term “texture” is rather broad, and technically, any material has a texture.
Chen and Cong still do not appear to teach the monofunctional monomer as having a dioxolane moiety.
Seno is directed to an ink jet recording method comprising the use of energy beam curable liquids, wherein the method includes the use of an energy beam curable liquid having a low surface tension which comprises MEDOL-10 (i.e., an acrylate, and further, a monofunctional monomer having a dioxolane moiety as disclosed in the present specification) (Seno: abstract; para. [0050], [0066]-[0068], and [0088]). Seno teaches that its energy beam curable liquid having a low surface tension can be used with an energy beam curable liquid having a high surface tension in order to form a high-density solid image having high-definition image expression (Seno: para. [0058]). Seno further appreciates that other photocurable resin monomers and polymerizable compounds may be included in its composition (i.e., as best understood, the radiation curable materials of Chen and Cong, therefore, would be compatible with the MEDOL-10 of Seno) (Seno: para. [0102]-[0103]). Chen, Cong, and Seno are analogous art in that they are related to the same field of endeavor of radiation curable acrylate materials having improved surface properties. A person of ordinary skill in the art would have found it obvious to have selected the MEDOL-10 taught by Seno for the monofunctional monomer of Chen and Cong, in order to enable use of the composition with a high surface tension liquid in order to form a high-density solid image having high-definition image expression (i.e., essentially, to improve the quality of the formed layer) (Seno: para. [0058]).
The structure of Chen, Cong, and Seno is substantially identical to that of the claimed invention. It has been held that a composition and its properties are inseparable. See MPEP 2112. Therefore, a person of ordinary skill in the art would have expected the panel of Chen, Cong, and Seno to meet the claimed requirements for impact resistance and lack of cracking. In addition, the panel of Chen, Cong, and Seno is expected to possess the claimed elongation at break.
With regards to claim 3, the CN991 oligomer of Cong is taken to be a bifunctional aliphatic urethane acrylate oligomer, as it is the oligomer of the present specification. A person of ordinary skill in the art would have been particularly motivated to select CN991 as it is associated with the best possible ratings for surface scratch resistance and surface tack of the materials of Cong (Cong: para. [0051]; Table 1).
With regards to claim 6, the printed pattern 4 is depicted as having a pattern extending in at least a width direction and thickness direction (i.e., constitutes a two-dimensional design pattern) and the adjacent protective layer 5 has a textured surface (i.e., a three-dimensional pattern) depicted as synchronized with the two-dimensional design pattern (Chen: Fig. 1).
With regards to claim 7, the protective layer of Chen has a thickness of 1 to 10 mils (i.e., 25.4 to 254 microns), which overlaps the claimed range of greater than or equal to 7 microns, thereby establishing a prima facie case of obviousness, per MPEP 2144.05 (Chen: para. [0032]).
Response to Arguments
Applicant’s arguments have been fully considered but they are not found persuasive.
Applicant argues that the Seno reference includes “little or no surface concaves and convexes,” while Chen discloses a textured surface. Applicant argues that a person of ordinary skill would not be motivated to apply Seno’s ink to Chen’s textured surface, since Seno’s ink is designed or little or no surface concaves and convexes. Applicant’s argument is not found persuasive as, technically, the existence of “little” concaves convexes does not constitute a teaching away (i.e., that a person of ordinary skill would use few concaves and convexes does not mean a person of ordinary skill would necessarily require a surface free of concaves and convexes). If anything, taking the Seno reference as a whole, it appears that Seno anticipates the existence of at least some concaves and convexes during printing (i.e., and therefore, it cannot be taken that Seno teaches the inclusion of no surface concaves and convexes). Applicant further argues that the MEDOL 10 in Seno has a low surface tension, and therefore, it would wet and spread easily. Applicant argues that such a material would not be used to form a textured surface. This argument is not found persuasive as Applicant has not provided evidence indicating that MEDOL 10 would not be capable of forming a textured surface. The inkjet printing composition need not consist of MEDOL 10 exclusively, and it is submitted that the mere inclusion of MEDOL 10 does not render a textured surface unachievable (i.e., as other components may be present).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783