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 amendment filed 06/04/2026 has been entered and is currently under consideration. Claims 1-2 and 4-11 remain pending in the application.
Claim Objections
Claims 1 and 5 objected to because of the following informalities:
In claims 1 and 5, “40 micrometer” should read --40 micrometers--.
Appropriate correction is required.
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 5 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 5 recites a range of values for the average particle size of the silica particles (1-40 micrometers) that is broader than the range required by claim 1 (2.25-40 micrometers see art rejection below) upon which the claim depends. The claim is rendered indefinite because the range of values recited by claim 5 includes values that are excluded by claim 1 and therefore the metes and bounds of the claim is not clear.
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 Taniguchi et al. (US2002/0029725) hereinafter Taniguchi.
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 ([0051-0052]), and the inkjet receiver coating includes silica pigments ([0034]);
wherein the silica pigments are particles of precipitated silica and/or silica gel ([0034]).
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.
In the same field of endeavor regarding pigmented inks, Taniguchi teaches Red 122 pigment for use in a colored ink for the motivation of imparting dispersion stability, color tone reproducibility, and lightfastness ([0021-0022]).
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 modified the pigment of Clement with the pigments including Red 122 as taught by Taniguchi in order to impart dispersion stability, color tone reproducibility, and lightfastness.
Clement in view of Taniguchi does not explicitly recite color pigments having an average particle diameter larger than 150 nm.
However, Taniguchi teaches a range of values for the average particle diameter of the color pigments that overlap with the claimed range ([0008]; 200 nm or less).
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 Taniguchi that overlaps with the claimed range.
Clement in view of Taniguchi 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 less than 40 micrometer, with the average particle sizes and the average particle diameters being determined by laser light scattering granulometry technique.
The above limitations in combination with the requirement that the color pigments have an average particle diameter larger than 150 nm, effectively results in the claim requiring an average particle diameter of the silica pigments within a range of 2.25 (150 nm x 15) to 40 micrometers. See also applicant remarks.
Clement teaches a range of values for the average particle diameter of the silica pigments that is close with the claimed range ([0029, 0034]; 0.01 to 40 micrometers).
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 size of the silica pigments as taught by Clement that overlaps with the claimed range.
Regarding claim 4, Clement in view of Taniguchi teaches the product 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 Taniguchi teaches the product 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 Taniguchi teaches the product 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 Taniguchi 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 Taniguchi teaches the product of claim 1.
Clement in view of Taniguchi 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 06 have been fully considered but they are not persuasive.
Applicant argues that Clement does not teach or suggest the claimed sizes and relationship of the color pigment and silica particles. Applicant argues that selection of 150 nm for the color pigment is arbitrary. However, rather than arbitrary, such a selection is obvious in light of the overlapping range of 200 nm or less as taught by Taniguchi ([0008]). See MPEP 2144.05. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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). Furthermore, applicant has provided no evidence in the specification or response that demonstrates criticality of the claimed sizes and relationship of the color pigment and silica particles.
Applicant argues that silica particles of the previous rejection dated 02/04/2026 that are 13.33 times in larger than the color pigments are “far and away from” at least 15 times larger as claimed. However, the examiner notes that the claimed range is preferred and that relative sizes of larger than 10 times are deemed appropriate by applicant specification (ln 26-27 applicant specification). This disclosure of mere preference in addition to a lack of any evidence showing criticality of the claimed ranges render the claimed ranges obvious in light of the prior art sizes and relationship of the color pigment and silica particles. Furthermore, as relied upon in the art rejection above, Clement teaches a range of values for the silica particles of 0.01 to 40 micrometer ([0029, 0034]). As explained in the art rejection, selection of any value size of the silica particles that overlaps with the claimed range, for example, 40 micrometers is obvious to one of ordinary skill in the art. Similarly, any value size of the color particles that overlaps with the claimed range, for example, 200nm is obvious to one of ordinary skill in the art. The relative size of the silica and pigment particles of the prior art therefore include, for example, 40/.200 micrometer = 200 times, which falls within the scope of the claimed range.
Applicant argues that Clement does not disclose values for silica pigment larger than 40 nm. This assertion completely ignores [0029] and [0034] of Clement as cited in the art rejection which states “Particularly preferred inorganic pigments are silica particles, colloidal silica, alumina particles and pseudo-boehmite, as they form better porous structures” and “when a pigment is applied in said inkjet receiver coating, it preferably has a mean particle size of 0.01 to 40 micrometer or 0.01 to 5 micrometer”, respectively. The examiner notes that this range overlaps with the claimed range to a significant degree. The examiner also notes that the discussion silica particles cited in [0036] of Clement in applicant discussion relates specifically to fumed silica specifically. While fumed silica is preferred, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123. Applicant arguments regarding the preferred size of silica particles appear to be directed to preferred embodiments and cannot be constituted as a teaching away from the broader disclosure of 0.01 to 40 micrometer as cited in the art rejection. Furthermore, applicant has provided no evidence in the specification or response that demonstrates criticality of the claimed sizes and relationship of the color pigment and silica particles.
Applicant arguments regarding the red color pigments are moot in light of the new grounds of rejection necessitated by applicant amendment.
For at least the above reasons, the application is not in condition for allowance.
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 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
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