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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/27/2025 has been entered.
Response to Amendment
Applicant amendment filed 12/27/2025 has been entered and is currently under consideration. Claims 1-2 and 4-11 remain pending in the application.
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.
Claims 1-2 and 4-6 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “the silica pigments… have an average particle size of 1 to 40 micrometer”, and the claim also recites “the silica pigments… have an average particle size at least 15 times larger than the average particle diameter of the color pigments” and “the color pigments having an average particle size larger than 150 nm”. The latter two limitations inherently limits the average particle size of the silica pigments to have a minimum size of 150 nm x 15 = 2.25 micrometers, which results in a narrower effective range of the silica pigment particle size than the above broader recitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
All claims dependent on the above rejected claims are rejected as well because they include all the limitations of the rejected claims.
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.
Claim(s) 1 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clement (US2016/0332479 of record) in view of Furuta et al. (2021/0381248 of record) hereinafter Furuta.
Regarding claim 1, Clement teaches:
A decorative paper layer (abstract) comprising:
a base paper layer (Fig 1: paper sheet 2; [0098]; resin layer 6B can be omitted);
an inkjet receiver coating provided on the base paper layer (Fig 1: digitally printed ink layer 5; [0098]); and
a wood pattern formed on the inkjet receiver coating by digitally applying inks from a set of a plurality of differently colored inks including a red ink ([0014, 0071-0074, 0099]);
wherein at least one of the inks includes color pigments, and the inkjet receiver coating includes silica pigments ([0034]);
wherein the silica pigments are particles of precipitated silica and/or silica gel ([0034]).
Clement does not explicitly recite color pigments having an average particle diameter larger than 150 nm.
However, Clement teaches a range of values for the average particle diameter of the color pigments that overlap with the claimed range ([0052]; less than 250 nm).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Since overlapping ranges are evidence of prima facie obviousness, it would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have chosen the portion of the average particle diameter of the color pigments as taught by Clement that overlaps with the claimed range.
Clement does not explicitly recite wherein the silica pigments have an average particle size that is at least 15 times larger than the average particle diameter of the color pigments and have an average particle size of 1 to 40 micrometer, with the average particle sizes and the average particle diameters being determined by laser light scattering granulometry technique.
However, Clement teaches a range of values for the absolute average particle diameter of the silica pigments that overlap with the claimed range ([0034]; 2 µm or less).
Clement teaches the ranges of values for the average particle diameter of the color pigments as less than 250 nm ([0052]). Clement teaches the ranges of values for the silica pigments having an average particle size that is 2 µm or less ([0034]). Therefore the range of values for the relative size between the average particle size of the silica pigments and the average particle diameter of the color pigments is close to the claimed range (e.g., 2 µm / 150 nm = 13.33 times larger; it is noted that 250 nm is the maximum size for the silica pigments disclosed by Clement and that choosing 150 nm is within the scope of Clement and overlaps with the claimed range for the size of the color pigments. This results in relative sizes that are close to the claimed range, e.g., 13.33 vs 15).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05.
Since overlapping ranges and close ranges are evidence of prima facie obviousness, it would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have chosen the portion of the average particle size of the silica pigments as taught by Clement that overlaps and/or is close with the claimed range.
Clement further teaches ink comprising reddish pigment ([0072]).
Clement does not teach wherein the color pigments comprise red pigments selected from the group consisting of C.I. Pigment Red 122, C.I. Pigment Red 144, C.I. Pigment Red 176, C.I. Pigment Red 188, C.I. Pigment Red 207, C.I. Pigment Red 242, C.I. Pigment Red 254, C.I. Pigment Red 272, mixed crystals of any of the aforementioned red pigments, quinacridone, mixtures of quinacridones, and quinacridones derivatives.
In the same field of endeavor regarding decorative layers, Furuta teaches quinacridone for red pigment in a colored ink ([0118-0119]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have combined the reddish pigment of Clement with the quinacridone as taught by Furuta and the results would have been predictable sine both references teach adding red pigment to a colored ink.
Regarding claim 4, Clement in view of Furuta teaches the decorative paper layer of claim 1.
Clement further teaches wherein silica particles are available on the surface of the base paper layer ([0014, 0019, 0034]).
Regarding claim 5, Clement in view of Furuta teaches the decorative paper layer of claim 4.
Clement further teaches wherein the silica particles are particles of precipitated silica, or silica gel, having an average particle size of 1 to 40 micrometer ([0029, 0034]).
Regarding claim 6, Clement in view of Furuta teaches the decorative paper layer of claim 1.
Clement further teaches wherein a core of the base paper layer is free or essentially free from silica particles ([0019, 0057-0059]; Clement teaches suitable materials for the paper layer, which does not include silica particles, and the silica particles in the pigment are only on the surface of the paper layer).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Clement in view of Furuta as applied to claim 1 above, and further in view of Kaplan et al. (US 6623851 of record) hereinafter Kaplan.
Regarding claim 2, Clement in view of Furuta teaches the decorative paper layer of claim 1.
Clement in view of Furuta does not teach wherein the thickness of the base paper layer is between 50 and 200 µm.
In the same field of endeavor regarding decorative paper layers, Kaplan teaches a paper layer with a surface coating with a range of values for the thickness of the paper layer that overlaps with the claimed range (Fig 1: overlay paper layer 16, surface coating 20; col 2, ln 63-col 3, ln 18) for the motivation of providing a dimensionally stable graphic art surface that is more resistant to warping and deterioration (col 1, ln 35-37).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Since overlapping ranges are evidence of prima facie obviousness, it would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have chosen the portion of the thickness of the base paper layer as taught by Kaplan that overlaps with the claimed range in order to provide a dimensionally stable graphic art surface that is more resistant to warping and deterioration.
Response to Arguments
Applicant's arguments filed 0 have been fully considered but they are not persuasive.
Applicant argues that Clement does not teach silica pigments having an average particle size that is at least 15 times larger than the average particle diameter of the color pigments. As argued by applicant, to meet the other limitations directed to the size of the silica pigment, the silica pigments must a have a minimum size of 2.25 micrometers. As argued by applicant, Clement teaches a range of 2 micrometers or less. However, as noted in the art rejection above, these values/ranges are close, and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05. Furthermore, applicant does not appear to provide or demonstrate any evidence of criticality or unexpected results for the claimed values/ranges in either the arguments or specification. To the contrary, the claimed particle sizes for the silica and color pigments are disclosed to be preferences per applicant specification. Therefore the claimed particle size for the silica pigments is made obvious by the prior art.
For at least the above reasons, the application is not in condition for allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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/ALEXANDER A WANG/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741