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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/2026 has been entered.
Status of the Claims
Claims 1 and 3-15 are currently pending.
Claims 2 and 16-19 have been canceled.
Response to Amendments
Applicant’s amendments filed 01/20/2026 have been entered.
Claim 1 has been amended. Claims 2 and 16-18 have been canceled.
The Section 102 rejection rejections of claims 16-18 have been withdrawn in view of cancelation of the claims.
The Section 103 rejections have been updated to reflect Applicant’s amendments.
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.
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.
Claim(s) 1 and 3-15 are rejected under 35 U.S.C. 103 as being unpatentable over Saito et al. (US 2022/0185007 A1; with a 04/16/19 priority) in view of Saito (US 2021/0129577 A1; with a 12/19/2016 priority; herein referred to as Saito577).
Regarding claims 1, 6, and 8-15,
Saito teaches a film comprising a surface layer (10) which may be embossed (Saito: abstract: Fig. 1; par. 0079-0081). The surface layer comprises a low gloss layer (20) and a gloss printed pattern (30) partially covering the low gloss layer (Saito: Fig. 1; par. 0017 and 0051-0060). The surface layer has a 85-degree surface glossiness of the surface layer is less than or equal to 4.5 GU as an in-plane average value (as it is measured using the same device such as the BYK-Gardner micro-TRI-gloss device) (Saito: par. 0071 and 0082; Applicant’s as filed specification: par. 0077).
The low gloss layer includes a binder including a resin, resin beads having an average particle size of greater than or equal to 4 µm and less than or equal to 20 µm, and nano-silica particles (Saito: par. 0017). The binder includes a urethane resin wherein the urethane resin is a cured product of a two-part urethane resin composition (Saito: par. 0018 and 0019). The binder may further contain a cellulose ester (Saito: par. 0025). The resin beads may be urethane resin beads and may be included at greater than or equal to 70 parts by mass and less than or equal to 240 parts by mass of the resin beads based on 100 parts by mass of the binder (Saito: par. 0030-0032). The nano-silica particles may have an average particle size of greater than or equal to 10 nm and less than or equal to 100 nm (Saito: par. 0035). The nano-silica particles may be present greater than 5 parts by mass or less than or equal to 120 parts by mass of the binder (Saito: par. 0036).
The gloss printed pattern includes gloss ink, such as acrylic ink (Saito: par. 0058).
Saito is silent towards the surface roughness Ra of an embossed surface of the film is greater than or equal to 3.5 µm and a maximum height Rz of the embossed surface of the film is greater than or equal to 30 µm.
Saito577 teaches a decorative sheet having a film layer including a printed portion (Saito:577). The surface roughness (Ra) and the surface roughness (Rz) of the film and the printed portion is adjusted to provide greater decoration with the stereoscopic effect (Saito577: par. 0029 and 0030). The surface roughness (Ra) of an embossed surface may be, for example, 4.5 µm and the surface roughness (Rz) may be, for example, 32.3 µm (Saito577: Table 2, Example 2).
Saito and Saito577 are in the corresponding field of films with printed layer to provide enhanced decorative effects. Therefore, it would have been obvious to one of ordinary skill in the art to select a surface roughness (Ra) and a surface roughness (Rz) for the film of Saito to be within the claimed ranges to provide improved stereoscopic decorative effects as taught by Saito577.
Saito is silent towards the Δ85-degree surface glossiness defined by a difference between an in-plane maximum value of the 85-degree surface glossiness and the in-plane average value of the 85-degree surface glossiness of the surface layer is 0.2 to 2.5.
However, Saito further teaches adjusting the degree of surface glossiness with the structure and placement of the printed pattern to achieve the desired decorative characteristics in addition to teaching the claimed 85-degree surface glossiness average value (Saito: par. 0068-0073). Thus, it would be obvious to one of ordinary skill the in the art to adjust the maximum and average difference in the 85 degree glossiness to achieve the desired decorative characteristics.
Alternatively, as Saito teaches the same structure and 85-degree glossiness values as explained above, the film of Saito would be expected to inherently possess the same properties such as the surface glossiness difference between the 85-degree maximum and average. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
The limitation requiring “the surface layer is formed by forming the gloss printed pattern on the low gloss layer and then embossing the gloss printed pattern” is a product by process limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, there appears to be no structurally difference between the claimed surface layer and the surface layer disclosed by the prior art combination as no specific embossment structure is claimed and the printed gloss layer (30) of Saito has a discontinuous or continuous surface of bumps (texture patterns) as shown in Fig. 1 which may be considered structurally the same as “an embossment” as generally claimed.
Regarding claim 3,
Saito in view of Saito577 teaches the film required by claim 1. Saito further teaches the low gloss layer is embossed and the gloss printed pattern may be disposed to correspond to a portion or a plurality of portions of the surface of the film (Saito: par. 0054 and 0079-0081). As the gloss printed pattern corresponds to a portion or a plurality of portions of the surface of the low glass layer, it would structurally be the same as the embossed surface it corresponds to and would thus be structurally the same as being embossed.
Regarding claim 4,
Saito in view of Saito577 teaches the film required by claim 1. Saito further teaches the gloss printed pattern may cover the entire surface of the film and thus may be considered to be distributed at a bottom portion of the surface layer embossed (Saito: par. 0054).
Regarding claim 5,
Saito in view of Saito577 teaches the film required by claim 1. Saito further teaches the printed pattern may be continuous or discontinuous, may be disposed so as to correspond to the entire surface of the film or disposed so as to correspond to a portion or a plurality of portions of the surface of the film (Saito: par. 0054). Thus, there would be a portion, such as the circled portion below, that the gloss printed pattern (30) and a pattern of the embossing are not synchronized because the they have different texturing or different structures.
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Regarding claim 7,
Saito in view of Saito577 teaches the film required by claim 1. Saito further teaches the gloss printed pattern is a printing patter (Saito: par. 0008). The limitation requiring the printed pattern to be done by “a printing plate” is a product by process limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, there appears to be no structural difference between the claimed printed pattern and a printed pattern performed by a printing plate.
Response to Arguments
Applicant’s arguments filed 01/20/2026 have been fully considered but they are not found persuasive.
Applicant argues that the amended manufacturing sequence limitations would result in different structures and thus inherency could not be applied. Applicant points to Table 3 of Saito results in Ra and Rz outside the claimed range. Thus, Applicant argues Saito does not teach the claimed embossment structure on the gloss printed layer.
The argument is not found persuasive as the rejection is not just Saito (Applicant appears to be referring to only the 2021 Saito reference referred to as Saito577 in the Office action) but Saito 2022 and Saito 2021 reference in combination. The limitation requiring “the surface layer is formed by forming the gloss printed pattern on the low gloss layer and then embossing the gloss printed pattern” is a product by process limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, there appears to be no structurally difference between the claimed surface layer and the surface layer disclosed by the prior art combination as no specific embossment structure is claimed and the printed gloss layer (30) of Saito has a discontinuous or continuous surface of bumps (texture patterns) as shown in Fig. 1 which may be considered structurally the same as “an embossment” as generally claimed. Applicant’s arguments that doing the process in different order resulted in different Ra and Rz as shown in comparative examples in Table 3 of Applicant’s specification being outside the claimed range is also not found persuasive as those limitations are specifically met by modification of Saito with Saito577 resulting in no apparent structural difference between the prior art combination and the claims. It is also noted that the Ra and Rz structural limitations required by claim 1 refer to an additional or another embossment structure on the surface layer, generally, and are met by the combination through the modification of Saito and Saito577 and do not necessarily require the gloss printed pattern itself to have the Ra and Rz ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Travis M Figg whose telephone number is (571)272-9849. The examiner can normally be reached M-F 9am-5pm.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783