DETAILED ACTION
Claim Objections
Claim 1 is objected to because of the following informalities: “the second area obtained” lacks antecedent basis. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claim essentially recites wherein one recess is printed “in at least one contour of” another recess. However, comparing Figures 2 and 3b of the immediate specification, it would appear the former shows two recesses separated from each other and the latter shows two recesses adjoined at their borders. As such, it would appear that disclosure would not be enabled for one of skill in the art. Correction is required.
Because all other claims depend from claim 1, they are also rejected on this basis.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 and 9-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (2020/0325689).
Regarding claim 1, Li teaches a method for producing a relief on a substrate, the relief comprising a recess area and a second area, the recess area being adjacent to the second area and forming a recess with respect to the second area, comprising:
extending a relief base layer (fig. 1b, item 101) on the substrate (fig. 1a, item 100),
digitally printing with a first volume per area of liquid recess printed product in the form of droplets on the outer surface of the relief base layer to obtain the recess area, the recess area forming the recess with respect to an outer surface of the relief base layer (see illustration, note deep recess 103 created by six droplets 102 in a recess area and four droplets creating a recess 103 in second area),
digitally printing with a second volume per area of the liquid recess printed product in the form of droplets on the outer surface of the relief base layer, in at least one contour
wherein each of (1) the step of printing with the first volume per unit area of liquid recess printed product and (2) the step of printing with the second volume per area of the liquid recess printed product individually generates recesses in the relief base layer,
the second area including one or more surfaces obtained by digitally printing with the second volume per unit area of recess printing product on the outer surface of the relief base layer, in the at least one contour
wherein the second area obtained comprises a matte surface and/or a surface with a roughness less than or equal to 10% of a maximum value of a maximum recess depth of the recess in the recess area (Note that the recess in the second contour area forms a matte surface. Note that, because the limitation is in the alternative, the limitation is met simply by the matte surface. That said, the art could also be said to meet the alternative limitation. That is, “maximum value of a maximum recess depth of the recess” has not been defined in any way so as to preclude the interpretation of the art to meet the limitation).
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Regarding claim 2, Li teaches the method for producing a relief on a substrate according to claim 1, further comprising removing a mixture of printed product and relief base layer, such that the recess corresponds to the volume occupied by the mixture removed in the relief base layer (see fig. 1d, Note that the embossing liquid droplets 102 combine with the relief base layer 101 to so as to be removed when mixed).
Regarding claim 3, Li teaches the method for producing a relief on a substrate (3) according to claim 1, wherein the recess is obtained by digital embossing ([0005]).
Regarding claim 4, Li teaches the method for producing a relief on a substrate according to claim 1, wherein the digital printing is performed on the relief base layer (see fig. 1).
Regarding claim 5, Li teaches the method for producing a relief (20) on a substrate according to claim 1, wherein the relief base layer is cured ([0005]).
Regarding claim 6, Li teaches the method for producing a relief on a substrate according to claim 1, wherein the digital printing with the second volume per area is performed simultaneously or before the digital printing with the first volume per area (see fig. 1, Note that, as defined in the rejection of claim 1, the recess and second areas are printed simultaneously).
Regarding claim 7, Li teaches the method for producing a relief on a substrate according to claim 1, wherein the digital printing with the second volume per area is also performed on the relief base layer on which the digital printing is performed with the first volume per area (see fig. 1).
Regarding claim 9, Li teaches the method for producing a relief on a substrate according to claim 1, wherein a droplet volume for the second volume per area is less than or equal to 70% of a maximum droplet volume for the first volume per area, preferably less than or equal to 50%, more preferably to 30% (see fig. 1, Note that this is the case. Note that the claimed “maximum droplet volume” has not been defined in any concrete way and thus can be any number).
Further, according to MPEP 2114, where the general conditions of a claim are present in the prior art, it is not inventive to discover workable ranges through routine experimentation. Here, Li teaches all conditions of the claim except for explicitly teaching the claimed ranges, but the claimed ranges have been obtained through routine experimentation and are not inventive.
Regarding claim 10, Li teaches the method for producing a relief on a substrate according to claim 1, wherein the second volume per area and, optionally, the droplet volume for said second volume per area, is uniform along the relief base layer (Note that on a high enough level, elevations 105 would be considered uniform. That is, if the pattern shown is repeated several times on the substrate, uniformity is achieved).
Further, according to MPEP 2114, where the general conditions of a claim are present in the prior art, it is not inventive to discover workable ranges through routine experimentation. Here, Li teaches all conditions of the claim except for explicitly teaching the claimed ranges, but the claimed ranges have been obtained through routine experimentation and are not inventive.
Regarding claim 11, Li teaches the method for producing a relief on a substrate according to claim 1, wherein the second area obtained has a superficial roughness less than or equal to 20 microns, preferably to 10 microns, more preferably to 5 microns ([0010]), and/or a brightness at 60° greater than or equal to 10 GU, preferably to 20 GU, more preferably to 50 GU, measured.
Further, according to MPEP 2114, where the general conditions of a claim are present in the prior art, it is not inventive to discover workable ranges through routine experimentation. Here, Li teaches all conditions of the claim except for explicitly teaching the claimed ranges, but the claimed ranges have been obtained through routine experimentation and are not inventive.
Regarding claim 12, Li teaches the method for producing a relief on a substrate according to claim 1, wherein the relief is made in register with an image printed on the substrate, visible through the relief base layer ([0011]).
Regarding claim 13, Li teaches the method for producing a relief on a substrate according to claim 1, wherein the extended relief base layer has a thickness greater than or equal to 20 microns, preferably to 30 microns, more preferably to 50 microns, and/or less than or equal to 300 microns, preferably to 200 microns, more preferably to 100 microns ([0010]).
Further, according to MPEP 2114, where the general conditions of a claim are present in the prior art, it is not inventive to discover workable ranges through routine experimentation. Here, Li teaches all conditions of the claim except for explicitly teaching the claimed ranges, but the claimed ranges have been obtained through routine experimentation and are not inventive.
Regarding claim 14, Li teaches a machine for producing a relief on a substrate further comprising a computer system that stores a computer program configured to carry out the method according to claim 1 when the computer program is run by the computer system (Note that such system and program are necessarily required for executing the process of Li).
Regarding claim 15, Li teaches a panel comprising a substrate with a relief on the substrate, wherein the relief is produced according to the method according to claim 1 (see fig. 1) and/or with a machine according to claim 14.
Regarding claim 16, Li teaches the method for producing a relief on a substrate according to claim 8, wherein the second volume per area is greater than or equal to 30% of the maximum first volume per area for the recess area, and/or less than or equal to 70% of said maximum first volume per area (see fig. 1, Note that any area can be selected so that the claimed limitation is met. Further, the “and/or” in the claim means that any value whatsoever of the volumes per area will me the limitation).
Further, according to MPEP 2114, where the general conditions of a claim are present in the prior art, it is not inventive to discover workable ranges through routine experimentation. Here, Li teaches all conditions of the claim except for explicitly teaching the claimed ranges, but the claimed ranges have been obtained through routine experimentation and are not inventive.
Regarding claim 17, Li teaches the method for producing a relief on a substrate according to claim 9, wherein the droplet volume for the second volume per area is less than or equal to 50% of the maximum droplet volume for the first volume per area (see fig. 1, Note that any area can be selected so that the claimed limitation is met. Further, again, note that “maximum” has not been defined in any way).
Further, according to MPEP 2114, where the general conditions of a claim are present in the prior art, it is not inventive to discover workable ranges through routine experimentation. Here, Li teaches all conditions of the claim except for explicitly teaching the claimed ranges, but the claimed ranges have been obtained through routine experimentation and are not inventive.
Regarding claim 18, Li teaches the method for producing a relief on a substrate according to claim 11, wherein the second area obtained has a superficial roughness less than or equal to 10 microns ([0010]), and/or a brightness at 60° greater than or equal to 20 GU measured.
Further, according to MPEP 2114, where the general conditions of a claim are present in the prior art, it is not inventive to discover workable ranges through routine experimentation. Here, Li teaches all conditions of the claim except for explicitly teaching the claimed ranges, but the claimed ranges have been obtained through routine experimentation and are not inventive.
Regarding claim 19, Li teaches the method for producing a relief on a substrate according to claim 13, wherein the thickness is greater than or equal to 30 microns, and/or less than or equal to 200 microns.
Further, according to MPEP 2114, where the general conditions of a claim are present in the prior art, it is not inventive to discover workable ranges through routine experimentation. Here, Li teaches all conditions of the claim except for explicitly teaching the claimed ranges, but the claimed ranges have been obtained through routine experimentation and are not inventive.
Response to Arguments
Applicant's arguments filed 12/26/2025 have been fully considered but they are not persuasive. The claims have been amended to further specify the operation of the method, but the amendments fail to distinguish the claimed invention from the prior art. The rejections above have been updated to reflect the changes to the claims. The standing prior art rejection is maintained.
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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/ALEJANDRO VALENCIA/Primary Examiner, Art Unit 2853