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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 29th, 2026, has been entered.
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, 4, 6, 18, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Shioda et al (JP2012250459A). Shioda is read from an English machine translation located in the Application File.
With regards to claim 1, Shioda discloses a decorative material in the form of a multilayer film (i.e., a decorative sheet) comprising a substrate P, a colored layer 104 (i.e., picture layer), and a surface transparent layer 106 formed of a resin (i.e., transparent resin layer), laminated in order from bottom to top (i.e., the decorative sheet comprising the picture layer and the transparent resin layer at least in a stated order on one side of the substrate) (Shioda – Translation: Section titled “ADVANTAGE OF THE INVENTION,” including the sentences “Hereinafter, the present invention.... and a primer”; page 3, the third paragraph, “(3) Surface transparent layer.... From the viewpoint of embossing”; Fig. 1). Note that the phrase “at least in a stated order” does not actually state the order required, nor does it preclude the existence of intervening layers. The colored layer 104 is depicted as having regions with and without depressions which face the surface opposite the substrate, and the surface transparent layer 106 further has depressions located over the depressions of the colored layer 104 and also facing the surface opposite the substrate (i.e., the picture layer includes a characteristic part, which is a region with depressions D2, and a non-characteristic part, which is a region without depressions, and the transparent resin layer has depressions D1 which are harmonizing, or in other words, overlapping, with the characteristic part of the picture layer on a side opposite to a side facing the picture layer, the depressions D2 depicted in a lamination direction of the depressions D1 on a side opposite to a side facing the substrate) (Shioda: Fig. 1). The depressions of the surface transparent layer 106 are further depicted as having a greater depth than the depressions of the colored layer 104 (i.e., the depressions D1 have a depth H greater than a depth h of the depressions D2) (Shioda: Fig. 1). With regards to the claimed picture layer thickness, Shioda discloses its colored layer 104 (i.e., picture layer) as having a thickness of 0.01 to 30 microns, which overlaps the claimed range of 0.1 to 3 microns, thereby establishing a prima facie case of obviousness (Shioda: page 3, “From the viewpoint of the effect of the present invention…”). See MPEP 2144.05. In the interest of compact prosecution and in an alternative, Shioda teaches that the embossing depth of the laminated film 10 of the present invention is 30% to 100% of its thickness, and given that the base concealing layer has a thickness of 50 to 300 microns, in the event that the picture layer is construed as a combination of both the colored layer 104 and concealing layer 102, the combination of these layers has a thickness range of 330 microns or less (i.e., 30 microns + 300 microns = 330 microns; the thickness is unbounded below as the embossing depth includes 100% of the film thickness), which would establish a separate case of overlapping ranges (Shioda: page 2, “Further the thickness of the base concealing layer 102…”; page 3, “Moreover, the embossing depth of the laminated film 10…”). Shioda does not appear to explicitly disclose Applicant’s exact range for a ratio (h/H) of the depth h of the depression D2 to the depth H of the depression D1 of 0.25 or more and 0.60 or less as claimed. However, Shioda teaches that the depths of its depressions are adjustable via embossing (Shioda – Translation: page 3, “Moreover, the embossing depth…”). In particular, Shioda teaches that excessively low embossing depths prevent transparency and a synchronized design feeling, while excessive depths can lead to hole formation (Shioda – Translation: page 3, “Moreover, the embossing depth…”). Shioda further depicts a ratio of embossing depths which, as best understood, appears consistent with the presently claimed range (i.e., the ratio h/H can be estimated to be slightly less than 0.5 from Figure 1 of Shioda) (Shioda: Fig. 1). Based on the foregoing, a person of ordinary skill in the art would have found it obvious to have optimized the ratio h/H for the decorative sheet of Shioda, in order to provide a balance of transparency, design feeling, and structural integrity (Shioda – Translation: page 3, “Moreover, the embossing depth…”). In addition, a person of ordinary skill would have tended towards values within the claimed depth range based on the depths depicted in Figure 1 of Shioda (Shioda: Fig. 1).
With regards to claim 4, the depressions (i.e., characteristic parts) are depicted as having a trench-shape (i.e., the shape of a vessel) (Shioda: Fig. 1). Alternatively, the depressions of the colored layer 104 contain the material of surface transparent layer 106 (i.e., and therefore, they function as a vessel) (Shioda: Fig. 1).
With regards to claim 6, Shioda further discloses its decorative sheet as adhered to a stainless-steel plate via an adhesive (i.e., the decorative sheet is placed on adherend to form a decorative panel) (Shioda – Translation: page 3, “(2) Coating processability on the back side…. by applying an adhesive…. and applying it to a stainless steel plate…”).
With regards to claim 18, Shioda further discloses its decorative sheet as adhered to a stainless-steel plate via an adhesive (i.e., the decorative sheet is placed on adherend to form a decorative panel) (Shioda – Translation: page 3, “(2) Coating processability on the back side…. by applying an adhesive…. and applying it to a stainless steel plate…”).
With regards to claim 21, Shioda does not appear to explicitly disclose a color difference ΔE between its characteristic part and its non-characteristic part of 1.3 or more. However, the present specification notes color difference ΔE as being dependent on the degree of lightness L* and the chromatic parameters a* and b*, and further, that the color difference leads to improvement of design properties (i.e., as best understood from the present specification, results in picture visibility). Shioda teaches that depressions accommodate a printed pattern (i.e., implies selective application of a material, such as ink, which produces a specific image which is contrasted against the remaining layers) (Shioda – Translation: page 3, “Moreover, the embossing depth…”). Shioda further teaches L* affects brightness and picture visibility (Shioda – Translation: page 2, “ADVANTAGE OF THE INVENTION”; page 3, “Moreover, the embossing depth…”). As best understood from the present specification, the claimed color difference ΔE is indicative of a visible image, and as best understood from Shioda, the characteristic part is printed so as to produce a picture (i.e., a visible image) (Shioda – Translation: page 2, “ADVANTAGE OF THE INVENTION”; page 3, “Moreover, the embossing depth…”). In view of the foregoing, the structure of Shioda is expected to possess the claimed color difference ΔE (i.e., since, as best understood, both Shioda and the present specification enact selective printing to produce visible images, and therefore, their color differences ΔE, which are indicative of visible images, should be expected to be similar or overlap) (Shioda – Translation: page 2, “ADVANTAGE OF THE INVENTION”; page 3, “Moreover, the embossing depth…”). Alternatively, Shioda acknowledges that L* and color (i.e., the parameters which determine color difference ΔE) are known to adjust in order to create a visible image, and therefore, a person of ordinary skill in the art would have found the color difference ΔE obvious to optimize (Shioda – Translation: page 2, “ADVANTAGE OF THE INVENTION”; page 3, “Moreover, the embossing depth…”).
Claims 3, 8, 11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Shioda et al as applied to claim 1 above, and in further view of Ueno (WO2018062299A1). Ueno is read from its English Language equivalent US 2021/0283879 A1.
With regards to claim 3, Shioda discloses a decorative sheet as applied to claim 1 above (see above discussion). Shioda does not appear to disclose the decorative sheet as further comprising a surface protective layer on a side opposite to a side facing the picture layer of the transparent resin layer.
Ueno is directed to a decorative sheet comprising a surface-protecting layer 16 located above a resin layer 14 on a side opposite a decorative layer 12 (i.e., the surface-protecting layer of Ueno is on a side opposite to a side facing a picture layer of the transparent resin layer) (Ueno: para. [0013]; Fig. 2). Ueno further depicts its surface-protecting layer as including a plurality of concave parts 19 which coincide with respective concave parts of adjacent layers (i.e., the structure of the surface-protecting layer of Ueno is analogous in design to the individual layers of the decorative sheet of Shioda) (Ueno: Fig. 2). Ueno notes that its surface-protecting layer 16 is designed to prevent expansion of minute cracks which form during long-term use of its decorative sheet, thereby preventing advancement of deterioration (Ueno: para. [0011]). Shioda and Ueno are analogous art in that they are related to the same field of endeavor of decorative sheets comprising which include layers with synchronized concave portions. A person of ordinary skill in the art would have found it obvious to have applied the surface-protecting layer of Ueno to the transparent resin layer of Shioda on a side opposite its picture layer in order to prevent the expansion of minute cracks which form during use, thereby reducing the rate of deterioration of the decorative sheet (Ueno: para. [0011]).
With regards to claim 8, Ueno depicts its surface-protecting layer as having depressions w formed on a side opposite to a side facing the transparent resin layer in a lamination direction of the depression of the adjacent color layers (Ueno: Fig. 2). Ueno further depicts the depressions as having a depth which is greater than a depth of any other depressions within the other layers of its laminate (i.e., a D5 being the greatest depth within the laminate) (Ueno: Fig. 2). Ueno teaches such a structure as resulting in a laminate having “excellent texture” (Ueno: para. [0120]). Therefore, a person of ordinary skill in the art would have found it obvious to have selected a depth D5 to be the greatest depth (i.e., and therefore, larger than the depth D1) in order to provide an improved textural feel to the formed laminate (Ueno: para. [0120]; Fig. 2).
With regards to claim 11, the depressions (i.e., characteristic parts) are depicted as having a trench shape (i.e., the shape of a vessel) (Shioda: Fig. 1). Alternatively, the depressions of the colored layer 104 contain the material of surface transparent layer 106 (i.e., and therefore, they function as a vessel) (Shioda: Fig. 1).
With regards to claim 17, Shioda further discloses its decorative sheet as adhered to a stainless-steel plate via an adhesive (i.e., the decorative sheet is placed on adherend to form a decorative panel) (Shioda – Translation: page 3, “(2) Coating processability on the back side…. by applying an adhesive…. and applying it to a stainless steel plate…”).
Response to Arguments
Applicant’s arguments have been fully considered but they are not found persuasive.
On pages 5-9, Applicant summarizes aspects of the present specification and claims. Applicant describes the claimed ratio h/H as preferably 0.25 or more and 0.60 or less from the viewpoint of suitably imparting a three-dimensional appearance. Applicant argues that the ratio h/H is not merely a dimensional depth ratio, but rather, an indicator of how effectively deformation is applied. Applicant argues that ratios outside this range results in insufficient transmittal of deformation to the claimed picture layer, resulting in weak pattern-following, or alternatively, a reduced visual contrast or distinction. Applicant regards the claimed range as representing a critical balance between transmission and deformation. Applicant’s arguments are not found persuasive as the mere existence of beneficial properties is insufficient to overcome a case of obviousness. It is possible Applicant believes the claimed range is critical and/or exhibits unexpected results. However, Applicant has not provided any data in support of an assertion of criticality and/or unexpected results. In addition, Shioda acknowledges small embossing depths as preventing a synchronized design feeling (i.e., insufficient synchronization of pattern and deformation), which is almost identical rationale for Applicant’s selection against an excessively small ratio h/H. Shioda also teaches excessive depth as leading to hole formation, which, as best understood, encompasses a mechanism described by Applicant which leads to a loss of layered visual effect (i.e., the lack of material prevents a “layered” appearance, since there is not material to form the “layered” appearance). Therefore, Shioda actually describes the effects of layer depth argued by Applicant. Moreover, these arguments do not seek to rebut the rejection’s assertion of obviousness in view of Figure 1 of Shioda (i.e., Applicant’s arguments do not compensate for Shioda’s express depiction of a ratio h/H which is within the claimed range).
On page 9, Applicant argues that Shioda does not disclose or suggest the claimed technical concept that the relationship between D1 and D2 should be controlled within a specific intermediate ratio range so as to balance deformation transmission and visual depth perception. Applicant argues that Shioda therefore does not provide motivation to arrive at the claimed range of 0.25 to 0.60 for the purpose of achieving a specific visual effect. This argument is not found persuasive since Shioda describes small embossing depths as preventing a synchronized design feeling, while larger embossing depths lead to hole formation. As best understood, these reasons are the same as (or at least similar to) Applicant’s reasoning for the selection of the claimed range. In addition, these arguments do not appear to acknowledge Shioda’s depiction of a ratio h/H which is within the claimed range (i.e., the rejection rationale isn’t simply one of optimization in view of the text of Shioda – the rationale suggests that the combination of the teachings of Shioda, in view of what is depicted in Figure 1, obviates the claimed range, even if the claimed range is not explicitly recited by Shioda).
On pages 9-10, Applicant argues that the claimed ratio h/H is not merely a result-effective variable that could be optimized by routine experimentation, and Shioda does not recognize the ratio h/H as an indicator of deformation transmission or deterioration of three-dimensional appearance. Applicant argues that any optimization suggested by Shioda would be optimization of film thickness, and not the claimed invention. Applicant argues that the total breadth of the disclosure, without more (i.e., Applicant cites to Shioda’s embossing depth percentage range), cannot establish a prima facie case of obviousness. These arguments are not found persuasive as they do not acknowledge Shioda’s rationale for adjustment of embossing depth (i.e., to provide a synchronized pattern without hole formation), nor do they acknowledge Shioda’s depiction of an embossing depth within the claimed range. The Examiner disagrees with Applicant’s assertions, and notes that the proper formation of a synchronized pattern without holes is an indicator of deformation transmission and lack of deterioration of three-dimensional appearance. These teachings are directed to embossing depth, and not thickness alone. In addition, these teachings are taken in conjunction with Shioda’s embossing depth percentage. Shioda provides more teachings than what Applicant characterizes (i.e., Shioda is not limited to its teaching of an embossing depth of 30% to 100% as argued by Applicant).
Conclusion
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
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