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 .
Response to Amendment
Applicant’s amendment and remarks, filed 05/12/2026, are noted with appreciation.
Claim(s) Status
Claims 1, 2, 5-16, 18, and 21-23 remain pending as presented in the amendment.
Support for the amendment can be found, inter alia, in originally filed claim 4.
Claims 12-16, 18, and 21-23 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/09/2025.
Response to Arguments
Applicant’s arguments in response to the non-final Office action (11/18/2025) (“non-final action”), presented in the remarks, have been fully considered.
Specification
The objection to the abstract has been withdrawn in view of the amendment.
Claim Objections
The objections to claims 7 and 10 have been withdrawn in view of the amendment.
Claim Rejections – 35 USC § 112
The rejection of claim 8 has been withdrawn in view of the amendment.
Claim Rejections – 35 USC § 103
Applicant has amended originally filed independent claim 1 to incorporate the subject matter of originally filed dependent claim 4. Applicant’s arguments are not persuasive and independent claim 1, as amended, is rejected herein below in view of the same are as cited in the non-final action.
I. Applicant’s arguments are not persuasive because they rely on features that are not recited in the claim.
Applicant argues that the cited prior art fails to teach various properties of the composite film, such as: wear resistance, scratch resistance, stain resistance, molecular chain entanglement, lamination quality, and durability. Remarks at 9. Applicant further argues that “there are essential difference in morphology, formation processes and core properties” between the prior art and the claimed invention. Id. at 11. Finally, Applicant argues that the embossing roller functions in a particular fashion in the instant invention. Id. at 14. These features are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
II. Applicant’s arguments are not persuasive because the prior art does not need to solve the same technical problem as the claimed invention.
Applicant argues that the cited prior art either does not or is unable to achieve formation of a relief pattern by local foaming inhibition. Remarks at 11. Applicant further argues “those skilled in the art would not usually refer to a technical solution for achieving effects A or solving technical problem A (avoiding embossing cracks) to achieve effects B (scratch-resistant, wear-resistant, stain-resistant, and a three-dimensional pattern) or solve another completely different problem B.” Id. at 13-14. In addition to not reciting such a formation process in the claims, see supra, “[t]he reason or motivation to modify a reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.” MPEP § 2144(IV) (citations omitted). Here, because US 704 does not place any limitation on the material and US 555 teaches that PVC printing layer-decorative layer structures are known in the laminate art, it would have been obvious to one of ordinary skill in the art to have utilized such a structure, with the expectation of forming a decorative laminate.
III. Applicant’s arguments are not persuasive because the claims are open to performing additional steps.
Applicant argues that use of a PVC plastisol requires additional heating and foaming steps not required by the present invention. “The transitional term ‘comprising’ . . . is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” MPEP § 2111.03(I) (citations omitted). Here, the claims recite the transitional phrase “comprising” and the additional heating and foaming steps are permitted within the scope of the claims.
IV. Applicant’s arguments are not persuasive because “pre-coating” does not have a specific definition that precludes in situ heating and foaming of the prior art PVC layer.
Applicant argues the coating of the prior art is not “a pre-prepared ‘film material’” and fails to meet the definition of “pre-coating.” Remarks at 11. “The presumption that a term is given its ordinary and customary meaning [in the BRI] may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification.” MPEP § 2111.01(I) (citations omitted). Here, Applicant sets forth no definition of the “pre-coating” that precludes the application of a PVC plastisol layer that is set and foamed in situ. According to the broadest reasonable interpretation of the claims, the polymeric transparent film is a “pre-coating” film insofar as it is deposited first, before the polymeric printing film is attached, given the phraseology “coating a . . . pre-coating film; and . . . attaching a polymeric printing film to a polymeric transparent film side of the pre-coating film.” See TALtech Ltd. v. Esquel Apparel, Inc., 279 Fed. Appx. 974, 978 (Fed. Cir. 2008) (claims can “as a matter of logic or grammar, [require] that . . . steps be performed in the order written.”).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claim(s) 1, 2, and 5-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110774625 A, published 02/11/2020 (reference made to US 11,938,704 B2 as the English-language equivalent) in view of US 2020/0269555 A1 and JP H06-13209 B2.
Claims 1 & 2
US 704 teaches a method of preparing a composite pre-coating film comprising: (1) laminating (i.e., “[t]o manufacture by placing layer upon layer of material”1) a PVC transparent film layer (i.e., “polymeric transparent film”) to a radiation-cured coating (i.e., radiation-cured coating A); followed by (2) laminating this structure to a printed decorative layer on a substrate [3:37-55]. The resulting structure may be represented as follows:
Radiation-cured coating
PVC transparent film layer
+
Decorative layer
Substrate
↓
Radiation-cured coating
PVC transparent film layer
Decorative layer
Substrate
Insofar as the radiation-cured coating and the PVC transparent film layer are laminated together, and that dual-layer structure is laminated to the decorative layer | substrate structure, the layers are laminated “in sequence” (i.e., in an order of one thing following another). The claim does not specify an order to the sequence (i.e., “in that sequence” or “in that order”). Moreover, the claim does not specify a substrate (permanent or temporary) as an “anchor” so as to identify which layer is attached to said substrate. See Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F. 3d 1323, 1342 (Fed. Cir. 2001) and TALtech Ltd. v. Esquel Apparel, Inc., 279 Fed. Appx. 974, 978 (Fed. Cir. 2008).
US 704 does not teach that the decorative layer is a polymeric printing film and that this film and the polymeric transparent film are prepared from the same material; here, PVC. However, US 704 does not place any limitation of the material: “The present application does not particularly limit the source of the printed decorative layer” [4:14-15]. It is the Primary Examiner’s position that it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have utilized any suitable material as the decorative layer.
US 555 teaches a process of manufacturing a composite pre-coating film (“upper intermediate product (1)”) including, inter alia, laminated layers including a transparent PVC layer, a PVC plastisol printing layer (5), and a decorative print layer (6) [0040, 0044]. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have either utilized, as the decorative layer in the process of US 704, a PVC printing layer, or included in the laminate structure, a PVC printing layer-decorative layer structure, as taught by US 555, e.g.:
Radiation-cured coating
PVC transparent film layer
+
Decorative layer
PVC printing layer
Substrate
↓
Radiation-cured coating
PVC transparent film layer
Decorative layer
PVC printing layer
Substrate
One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully providing a decorative layer in the process of US 704 since US 555 teaches that PVC is known in the art as suitable for this purpose. MPEP § 2143(A). In the alternative, one of ordinary skill in the art would have been motivated to do so by the desire and expectation of advantageously providing a resin layer capable of receiving and holding a pattern from, e.g., roto-gravure printing, as taught by US 555 [0041] (US 704 contemplates texture laminate materials [1:36-37 and 4:27-30]). See MPEP § 2144(II) (“the expectation of some advantage is the strongest rationale for combining references”). Finally, another advantage of this combination is the enhanced adhesion provided by the printing layer’s and the transparent film layer’s being made of the same material. Id.
US 704 further teaches joining the two components by press-fitting [3:44-46]. Neither US 704 nor US 555 teach that the press-fitting roller is an embossing roller.
JP 209 teaches that press fitting flooring laminates can be performed using a heated embossing roll, forming a desired pattern without causing cracks (“The decorative sheet and substrate are easily deformed by press-fitting molding while imparting plasticity using the embossing roll or embossing board on which the surface of the decorative plate is heated, forming sharp narrow groove recesses without causing cracks.”). See “Effect of the Invention.”
It would have been obvious to one of ordinary skill in the art, before the effective date of the claimed invention, to modify the process of US 704 in view of US 555 so as to utilize, as the pressing device during press fitting, an embossed roller. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully press fitting the two components together. MPEP § 2143(a). Moreover, an embossed press roller would have advantageously imparted a decorative pattern, taught as desirable by the cited prior art. MPEP § 2144(I).
Claim 5
US 704 further teaches “[i]n one embodiment, the radiation-cured coating comprises an adhesive primer layer, an elastic primer layer, and a top coating layer [i.e., “finishing coat”] sequentially from the bottom up” [4:18-20]. The layers are applied to the transparent film in sequence and the adhesive primer is radiation-cured [13:1-24].
Claim 6
US 704 teaches that the adhesion primer is cured by LED-UV coating [13:7-12].
Claim 7
US 704 teaches that the finishing coat (i.e., “top coating”) is cured by UV [21-23]. While US 704 does not specify the particular type of UV source, at least the claimed mercury lamp, UV-LED, halogen lamp, and light source with a wavelength of 254 nm (i.e., UV-C light) are all known sources of UV and it would have therefore been obvious to one of ordinary skill in the art to utilize any one or all of these based on the desire and expectation of successfully curing the finishing coat. MPEP § 2143(A)-(C).
Claim 8
US 704 does not explicitly teach a thickness of the claimed layers. Nevertheless, it is the Primary Examiner’s position that the thickness of each of the claimed layers is a result-effective variable. The layer must be thick enough to perform its function, while not being so thick as to be wasteful of materials, make the coating to thick or too heavy, be too slow to cure, or otherwise deleteriously affect further processing. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the thickness of the adhesion primer, finishing coat, and middle coating (adhesive primer, elastic primer, and top coating) by routine experimentation, absent evidence of criticality. MPEP § 2144.05. Nothing in the record indicates that the optimization of these thicknesses was anything other than the exercise of ordinary skill in the art and, moreover, “[t]he mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of one of a person having ordinary skill in the art.” In re Applied Materials, Inc., 692 F. 3d 1289, 1298-99 (Fed. Cir. 2012).
Claim 9
US 740 teaches that the elastic primer layer (i.e., “the middle coating”) comprises bifunctional polyurethane acrylic resins and bifunctional polyurethane acrylate monomers only [see Examples, e.g., 12:30-35].
US 740 does not teach the claimed additional multi-functional (functionality > 2) polyurethane acrylate resin.
Nevertheless, it would have been obvious to one of ordinary skill in the art to utilize a resin with any desired functionality sufficient to form the cured (i.e., cross-linked) film, including acrylate resins with a higher degree of functionality to get a faster or more complete cross-linking of the layer.
Claim 10
US 740 in view of and US 555 teach the limitations of this claim as explained above in connection with claims 1, 4, and 5.
Claim 11
The cited prior art does not teach the claimed film thicknesses and plasticizer content for the PVC films.
With respect to the former, film thickness is a result-effective variable. The layers must be thick enough to perform their functions, while not being so thick as to be wasteful of materials, make the coating to thick or too heavy, be too slow to cure, or otherwise deleteriously affect further processing. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the thickness of the PVC films by routine experimentation, absent evidence of criticality. MPEP § 2144.05. Nothing in the record indicates that the optimization of these thicknesses was anything other than the exercise of ordinary skill in the art and, moreover, “[t]he mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of one of a person having ordinary skill in the art.” In re Applied Materials, Inc., 692 F. 3d 1289, 1298-99 (Fed. Cir. 2012).
Similarly, the amount of plasticizer added to a PVC film is also a well-known result-effective variable. Addition of plasticizer makes the PVC film more flexible. Consequently, it would have been obvious to one of ordinary skill in the art to optimize the plasticizer in the PVC film(s) by routine experimentation to achieve the desired rigidity of the film, absent evidence of criticality. MPEP § 2144.05. Nothing in the record indicates that the optimization of these plasticizer concentrations was anything other than the exercise of ordinary skill in the art and, moreover, “[t]he mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of one of a person having ordinary skill in the art.” In re Applied Materials, Inc., 692 F. 3d 1289, 1298-99 (Fed. Cir. 2012).
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 WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
13 July 2026
1 Laminate, Oxford English Dictionary, https://www.oed.com/dictionary/laminate_v?tab=meaning_and_use&hide-all-quotations=true#39925321 (last visited Nov. 12, 2025).
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