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Claim 8 withdrawn from further consideration pursuant to 37 CFR 1.142(b), a3.
being drawn to a nonelected group II, there being no allowable generic or linking claim.
Applicant timely traversed the restriction (election) requirement in the reply filed on 06/14/24. Applicant's election with traverse of group I in the reply filed on 06/14/24 is
acknowledged. The traversal is on the ground(s) that claim 8 depends on claim 1 and -
includes all limitation of claim 1. This is not found persuasive because claim 8 belongs
to different class/sub-class and is not a method claim. The requirement is still deemed
proper and is therefore made FINAL.
Claim Interpretation
"diffractive index" in claims and in specification is same as "refractive index'.
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, 9 are rejected under 35 U.S.C. 103 as being unpatentable over William J. Castle et al (U.S. Patent: 6692819, here after Castle), further in view of Sukeji
Wakaura et al (Japanese Patent: H08164700, here after Wakaura), and Frederick W Hochstetter (U.S. Patent: 1419379, here after Hochstetter).
Claims 1-2, and 9 are rejected. Castle teaches a method of printing at least one
transparent area on a major surface of a non-coated paper [abstract lines 1-10],
wherein an optical transmittance (measured with spectrophotometry or not) through the
substrate at a printed transparent area is at least 20% (opacity of 40-65 results in
transparency of 60-35%) higher than through the substrate at a non-printed area of the
same paper substrate at a wavelength in the electromagnetic spectrum of wavelengths
of green or red spectrum [column 4 lines 2-19], the method comprising:
(1) contacting at least one area of a major surface of the non-coated paper substrate
with a polymerizing composition [column 3 lines 2-4], using a printing press
(flexographic, fig. 1), and the size of the area is more than 100 um2[fig. 1];
(2) allowing the composition to penetrate through the thickness of the substrate [column
5 lines 59-62], and
(3) drying the at least one printed area [column 5 lines 63-end column 6 lines 1-5],
forming at least one printed transparent area on the substrate, whereby any content in
an envelope formed by the substrate is visible from outside of the substrate through the
at least one printed transparent area [column 4 lines 10-19, column 1 lines 9-14]. Castle
does not teach the polymerizing composition comprising a drying or semi-drying oil such
as alkyd oil(resin). Wakaura teaches forming a clear coating on paper by applying a
curable(polymerizable) composition comprising alkyd resin(oil) [page 13 lines 15-20].
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the
invention was made to have Castle method and add alkyd oil (resin) to polymerizable
composition, because it is suitable Component to add to polymerizable compound to
form clear coat on paper substrate. Alkyd oil(resin) has refractive index of 1.46-1.54. Castle teaches using solvent such as water to increase penetration of polymerizable
composition, which in fact with (alkyd resin) alkyd oil forms emulsion. Castle does not teach heating the oil composition prior to applying it to the substrate (before contacting the at least one area with the oil composition). Hochstetter teaches a method of forming transparent area on surface of paper by applying composition comprising drying oil (Linseed oil), resin and alcohol and also teach to heat the composition prior to applying to the substrate to give a hard smooth surface to the paper to which dust will not cling [column 2 lines 76- 93]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of Castle, and Wakaura and heat the oil prior to applying to substrate, because it helps avoiding dust on surface of the paper.
Claim 4 is rejected. Wakaura teaches amount of the alkyd oil (resin)in the
composition is more than 10 wt% [ page 13 lines 15-20].
Claim 5 is rejected as Castle teaches the at least one printed area is dried at
room temperature (UV curing which is at room temperature) [column 6 lines 9-11].
Claim 6 is rejected as Castle teaches the at least one printed area is dried at an
elevated temperature [column 5 lines 63-66].
Response to Arguments
Applicant's arguments filed 12/11/25 have been fully considered but they are not persuasive. The applicant argument regarding heating Castel’s oil renders the method unsuitable is not persuasive. Castle teaches as preferred embodiment of cooling the substrate after heating(curing) step or transparentizing composition [column 3 lines 60-63]. Furthermore, Hochstetter only teaches heating the oil to 100F (37 centigrade) and for achieving a benefit of avoiding dust to stick on paper is used. Alkyl oil, or Linseed oil do not loose transparency by heating less than 100C. The applicant argument regrading combining Castle and Wakaura is not persuasive, on fact Walaura teaches processing a paper that is made transparent by applying a mixture of Canadian balsam, turpentine oil, vegetable oil, etc. to thin paper(forming impregnating paper)[page 3 paragraph 4 lines 3-5], and impregnating paper with transparency of 65%[page 13 line 14] addition to strentening the paper with clear coating. Hochstetter also teaches preheating helps preventing dust to stick on paper which can be combine with prior references.
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 TABASSOM TADAYYON ESLAMI whose telephone number is (571)270-1885. The examiner can normally be reached M-F 9:30-6.
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/TABASSOM TADAYYON ESLAMI/Primary Examiner, Art Unit 1718