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 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.
Claim 21 is 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 21 recites the limitation "the printing operation" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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.
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 17, 19, 20, 22, 26 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. US 2014/0017452 (hereinafter “Pervan”), and further in view of United States Patent Application Publication No. US 2018/0264789 (hereinafter “Whitesell”). Regarding claims 17 and 20 Pervan teaches a vision control system (system) for making a building panel comprising a decorative finish, which is applied by a digital coating (abstract). Pervan teaches the building panels may be used as panels for walls, floors, ceilings, etc. (paragraphs [0003] and [0004]). Pervan teaches the building panel 1 comprises a core 3, an adhesion coat L1, a base coat L2, and a top coat L3, where the building panel has a first surface having a first plane (Figure 3b and paragraph [0119]), where the core 3, adhesion coat L1, base coat L2, and top coat L3 corresponds to the claimed building panel, and the top surface of the top coat L3 corresponds to a first surface having a first plane of the building panel. Pervan teaches a top layer L3a-d (textured material comprising one or more materials that protrude to a second plane that is beyond the first plane) associated with the building panel 1 (Figures 4b-4c, and paragraph [0142]). Pervan teaches a digital printer (printing device) 35 comprising one or more non-contact print heads 30a-e (Figure 3b, paragraphs [0013], [0046], [0081] and [0137]) configured to print ink upon the surface of the building panel 1 (first surface having a first plane) and/or the top coat L3 (Figures 3a-4c, paragraphs [0042], [0043], [0060], and [0141]), which corresponds to a printing device configured to print ink upon the first surface in the first plane of the building panel. Pervan teaches the one or more print heads 30a-e undergo a non-contact printing process (positioned a predetermined distance above the first plane and a second plane that is beyond the first plane so as not to contact the surface of the building panel 1 and the textured material L3a-d) (Figures 3b and 4a, and paragraphs [0081] and [0141] – [0144]). Pervan does not explicitly teach a scrim coupled to the first surface of the building panel, the scrim comprising a textured material and having ink printed thereon, wherein the textured material comprises one or more materials that protrude to a second plane that is beyond the first plane, and wherein the one or more materials of the textured material comprises at least one second material, wherein the second material comprises one or more of a fiberglass scrim, wood, metal, plastic, composite fiber, wood fiber, or fabric. Whitesell teaches a decorative nonwoven laminate 100 comprising a first nonwoven layer (scrim comprising a textured material) 104 affixed to a second nonwoven layer (second textured material comprising a fabric) 120, and a colorant 110, such as ink for decorative purposes affixed to the first nonwoven layer 104 opposite the second nonwoven layer 120 (ink printed on the textured material of the scrim in the second plane), where the first nonwoven layer 104 comprises a scrim (abstract, Figure 3, and paragraphs [0040] and [0042]). Whitesell teaches the colorants for the decorative nonwoven laminate are applied in patterns, such as checkered, houndstooth, wood grain, carbon fiber, leather, camouflage, or other geometric designs to achieve desired aesthetics to the substrate being applied thereon (paragraphs [0002] and [0044]). Whitesell teaches the laminate may or may not be formed into a three-dimensional geometry to conform to the substrate it is applied to (paragraphs [0010] and [0050]). Therefore, it would have been obvious to a person having ordinary skill in the art to modify the top layer L3a-d of Pervan with the decorative nonwoven laminate of Whitesell to yield a decorative layer: capable of conforming to a panel having projections or depressions; and/or provide a variety of patterned design choices for the appearance of the panel. The combination of Pervan and Whitesell corresponds to the claimed features requiring “a scrim coupled to the first surface of the building panel, the scrim comprising a textured material, wherein the textured material comprises one or more materials that protrude to a second plane that is beyond the first plane,” and “a printing device comprising one or more non-contact print heads configured to print ink upon the first surface in the first plane of the building panel and protruding portions of the textured material of the scrim in the second plane during the same printing operation to yield the three-dimensional effect.”Regarding claim 19 In addition, Pervan teaches a three dimensional effect for the manufactured building panel comprises a three-dimensional image of wood or stone (paragraphs [0023] and [0134]). Whitesell teaches the design includes a three dimensional effect and includes patterns, such as checkered (artwork), houndstooth, wood grain (wood), carbon fiber, leather, camouflage, or other geometric designs (Figures 7-8 and paragraph [0044]).Regarding claim 22 In addition, Pervan teaches the ink is UV curable ink (paragraphs [0037], [0063], and [0155] – [0157]).Regarding claim 26 In addition, Pervan teaches the amount of ink applied by the digital printer may be a coating of 1-5 g/m2 (0.093 – 0.465 g/ft2) (paragraph [0139]), which falls within the claimed range. The limitation “to prevent displacement of the protruding portions of the scrim during the non-contact inkjet printing” has been considered. However, this limitation merely recites what occurs when the ink is applied in the claimed amount. Therefore, since the prior art teaches the same amount of ink as claimed, the structure of the claimed system is considered to be met.Regarding claim 33 In addition, Whitesell illustrates the ink colorant 110 defines an outermost exposed layer of at least a portion of the building member (from the combination of Pervan and Whitesell) (Figure 3).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Pervan and Whitesell as applied to claim 17 above, and further in view of KR 10-2019-0039369 with a machine translation (submitted on 28 June 2024) being used as the English language equivalent translation (hereinafter “Lee”).Regarding claim 21 The limitations for claim 17 have been set forth above. In addition, Pervan does not explicitly teach a vacuum system configured to vacuum a portion of the textured material that is not bound to the building panel. Lee teaches a decorative panel comprising a three dimensional structure (textured surface) (abstract). Lee teaches a method of forming the decorative panel includes a step of removing foreign matter with air (vacuum system configured to vacuum a portion of the textured material that is not bound to the building panel) prior to drying and completion of the decorative panel (page 5, 3rd to 7th paragraphs). Pervan and Lee are analogous inventions in the field of decorative panels. It would have been obvious to one skilled in the art at the time of the invention to modify the vision control system of Pervan with the vacuum system of Lee to include a step of removing foreign matter (material not bound to the building panel) from the panel. The combination of Pervan and Lee does not explicitly teach the vacuuming process occurs “prior to the printing operation.” However, it would have been an obvious matter of design choice to perform the vacuuming process of Lee prior to the printing operation of Pervan to ensure the removal of foreign matter which may adversely affect the quality of the ink printed thereon. The limitation “to prevent ink distortion and print-head fouling during the non-contact inkjet printing” has been considered. However, this limitation merely recites what occurs when the vacuuming process occurs prior to the non-contact inkjet printing. Therefore, since the prior art combination renders obvious the implementation of the vacuuming process prior to the printing process, the structure of the claimed system is considered to be met.
Claims 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Pervan and Whitesell as applied to claim 17 above, and further in view of United States Patent Application Publication No. US 2019/0100915 (hereinafter “Bridenstine”).Regarding claim 23 The limitations for claim 17 have been set forth above. In addition, Pervan teaches the edges of the panel includes bevels (Figure 3b, and paragraphs [0084] and [0119]). Pervan also teaches the building panel is fed to the digital printer (printing device) 35 by a conveyor (bed moving the building panel) 21 (Figure 3b and paragraph [0126]). Pervan does not explicitly teach the printing device is configured for shimming one or more ends of the building panel, wherein the shimming maintains a predetermined gap between the building panel and the conveyor (bed moving the building panel). Bridenstine teaches a tapered board having a first surface and an opposing second surface, and a first edge and an opposing second edge that bound the first surface and second surface (abstract). Bridenstine teaches the first surface is formed using a first guide element, and the second surface is formed using a second guide element (paragraphs [0040] and [0044]). Bridenstine teaches the tapered or beveled surfaces may be formed using the second element guide, where the second element guide includes a platform (bed moving the panel) 450, also referred to as a moving conveyor, and wedge shaped shims 466, 467 which maintain a predetermined gap between the tapered board 400 and the platform 450 (paragraphs [0072] and [0080], and Figure 5). Pervan and Bridenstine are analogous inventions in the field of building panels. It would have been obvious to one skilled in the art at the time of the invention to modify the printing device of Pervan with the second element guide, including the wedge shaped shims 466, 467 of Bridenstine to provide a guiding element to control the location of the panel prior to printing. The limitation “to maintain the predetermined distance between the print heads and both the first plane and the second plane during transport” has been considered. However, this limitation merely recites what occurs when the shimming of Bridenstine takes place. Therefore, since the prior art combination renders obvious the implementation of the wedge shaped shim for providing a guiding element to control the location of the panel prior to printing, the structure of the claimed system is considered to be met.Regarding claim 24 In addition, Bridenstine teaches the second element guide, including the wedge shaped shims 466, 467, is removed (shimming is ceasable) prior to removing facing sheets 470 (Figures 3 and 5-8). Pervan also teaches the printing occurs adjacent to formed beveled edges (Figure 3c). The combination of Pervan and Bridenstine corresponds to shimming of the one or more ends of the building panel is ceasable prior to the printing of the three-dimensional effect on the surface of the building panel. The limitation “[the shimming of the building panel is ceasable prior to the printing] such that the ink is printed while the building panel is unshimmed and positioned solely by the printing device” has been considered. However, this limitation recites the process of manufacturing the building panel using the claimed system or apparatus. It has been held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, as long as the prior art apparatus teaches all the structural limitations of the claim. See MPEP §2114(II). Therefore, due to the fact that the prior art combination teaches all the structural limitations of the claimed system or apparatus, the claim is considered to be met.
Claims 18 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Pervan and Whitesell as applied to claim 17 above, and further in view of United States Patent Application Publication No. US 2019/0136524 (hereinafter “Zhang”).Regarding claims 18 and 34 The limitations for claim 17 have been set forth above. In addition, Pervan does not explicitly teach: (i) the building panel comprises a porous body comprising inorganic fibers and a binder; or (ii) the building panel is an acoustic panel. Zhang teaches an acoustic building panel useful in ceiling applications (title and paragraphs [0006]). Zhang teaches the acoustic panel 100 comprises a porous body 200 including inorganic fibers 230 and a binder (paragraphs [0049], [0051] and [0056], and Figures 1-2). Zhang teaches the acoustic panel has the ability to reduce the amount of reflected sound in a room, and exhibits superior sound attenuation—which is a measure of the sound reduction between an active room environment and a plenary space (paragraphs [0064], [0067] and [0069]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the building panel of Pervan with the acoustic building panel of Zhang to improve sound reflection and sound attenuation of the panel.
Response to Arguments
Applicant's arguments filed 21 January 2026 have been fully considered but they are not persuasive.
The applicant argued Pervan does not disclose or suggest (1) printing across two spatially offset planes; (2) printing simultaneously onto both planes; or (3) maintaining a stand-off distance relative to both planes during a single printing operation. Additionally, Pervan’s non-contact printing merely avoids contact with the surface being printed and does not address coordinated inkjet deposition across protruding geometry that defines a second plane. These arguments are not commensurate in scope with the rejection of record because the examiner relies upon a combination of Pervan and Whitesell to meet the limitations from at least claim 17. However, the following analysis are provided when considering the combination of Pervan and Whitesell. Regarding argument (1), printing across two spatially offset planes occurs because a person having ordinary skill in the art would readily recognize the modification of Pervan’s building panel with the textured surface of Whitesell, as proposed in the rejection of record, would result in printing on a textured surface, or printing across two spatially offset planes. Regarding argument (2), an inkjet printing process performed on a textured surface, or a surface having a first plane and a second plane that is beyond the first plane, would result in ink which conforms to the topography of the material being printed thereon, or printing simultaneously onto both planes. Regarding argument (3), a person having ordinary skill in the art would recognize Pervan’s teaching of a non-contact printing apparatus in combination with Whitesell’s textured material would require nothing more than common sense to maintain a stand-off distance relative to both planes during a single printing operation or avoid contact with the textured surface of Whitesell.
The applicant argued Whitesell fails to cure the deficiencies of Pervan and argued Whitesell does not disclose non-contact printing, printing across multiple planes, printing during a single coordinated operation, or print head stand off control relative to protruding portions of a scrim. The examiner respectfully disagrees and contends Whitesell generally teaches (paragraph [0049]) the colorant is applied a printing process, with preferred embodiments including the processes highlighted by the applicant. However, the general teaching of a printing process does not disparage against (or teaches away from) the use of the non-contact printing disclosed by Pervan, which also corresponds to printing during a single coordinated operation, or print head stand-off control relative to the article receiving the ink (which corresponds to the protruding portions of the scrim from Whitesell). Furthermore, Whitesell’s teaching (paragraph [0049]) of applying a colorant on the first nonwoven, which is taught as comprising a scrim, corresponds to printing across multiple planes.
It is additionally noted the applicant's arguments are against the references individually, and 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).
The applicant concluded by arguing the combination of Pervan and Whitesell is based on hindsight reconstruction using the applicant’s disclosure as a roadmap, rather than on teachings or suggestions found in the disclosure. The examiner respectfully disagrees and contends that it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). It is the position of the examiner, which is supported by the current record, that the teachings and motivation for combining Pervan and Whitesell comes from the references themselves and does not include knowledge gleaned only from the applicant's disclosure. Therefore, such a reconstruction is proper.
The remaining arguments are directed to how dependent claims 18, 21, 23, 24 and 34 are patentable over the prior art based on the amendments provided or the additional references failing to remedy the alleged deficiencies, previously identified. However, the amendments have been addressed in the updated rejection of record, and the alleged deficiencies have been addressed. In summary, the rejections of claims 18, 21, 23, 24 and 34 are considered to be appropriate for at least these same reasons and in light of the updated rejection of record.
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 BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783