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 .
Applicant's submission filed on 6/4/25 has been entered. Claims 1, 4-6, 8-12, 25-27, and 29 are currently pending examination, and claims 2-3, 7 and 13-24, and 28 are cancelled.
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 8 is 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 8 recites the limitation "solidifying the at least one droplet after spraying". There is insufficient antecedent basis for this limitation in the claim. Claim 1 by amendment already requires solidifying (congealing) of the droplet(s) upon contact with the workpiece / base layer. Therefore it is indefinite as to if the solidifying is referencing the congealing of claim 1 or requiring some additional step. For purposes of examination claim 8 will be interpreted as at least inclusive of either such scenario. The examiner notes that claim 8 as originally filed (1/2/23) did not possess the reference to solidifying, but was later added (10/23/23) as claim 1 did not previously describe a step of solidification. As claim 1 now does possess such a solidification step; if Applicant’s intention is to reference this congealing step in claim 1 as the solidifying, Applicant may want to consider returning to something resembling the originally filed language in claim 8.
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.
Claim(s) 1, 4, 6, 9-12, 26 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macor (WO 2018/069874; provided in 12/22/20 IDS, hereafter Macor) in view of Schacht et al (US 2012/0015107; hereafter Schacht), Marceau (US 2009/0098339; hereafter Marceau), and Jaeger et al (US 5,621,022; hereafter Jaeger) {Zoltner (US 2013/0182267; hereafter Zoltner relied upon as evidence only, particularly for claim 12}
Claims 1 and 26: Macor teaches a method for producing a structure on a surface of a workpiece (see, for example, abstract, Fig 1), the method having the following steps:
applying a liquid base layer (non-polymerized resin layer) onto the surface of the workpiece (substrate) (See, for example, abstract, Fig 1);
spraying on at least one droplet (embossing ink droplet) into the not yet congealed base layer wherein the at least one droplet penetrates (embossing depth) at least partially into the base layer (See, for example, abstract, Fig 1, pg 8 lines 2-29);
fixing the base layer (polymerizing / curing (See, for example, abstract, and pg 3 lines 26-34);
and at least partially removing the at least one droplet (embossing liquid) (see, for example, abstract, Figure 1, and pg 3 line 33).
Macor teaches the method above, but does not explicitly teach wherein the at least partially removing of the at least one droplet is performed by a first mechanical removal of the cured base layer. Schacht teaches a method for producing structure on a surface of a workpiece, including printing texturing / masking agents into a non-solidified coating layer (See, for example, abstract, Fig 16, [0116]). Schacht further teaches wherein further texturing of base layer surfaces between masked portions in addition to some degree of partial removal of the mask can be achieved via mechanical removal of the cured base layer, such as via sand blasting, suction, or abrasion (see, for example, Fig 16-18, [0026], [0045], [0072], [0116-117]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated at least partially removing of the at least one droplet by a first mechanical removal of the cured base layer as such an incorporation would predictable allow for enhanced surface structuring as well as provide a predictable method of removing the masking droplet from the surface.
Macor in view of Schacht teaches the method above and Schacht further teaches wherein the first mechanical removal method comprises a mechanical erosion technique such as sandblasting and further achieves texturing (matting ) of the treated surface (See, for example, [0045], [0072]). But they do not explicitly teach using a grinding or planning device for the mechanical erosion technique. Marceau teaches a method for producing a structure on a surface of a workpiece (See, for example, abstract). Marceau further teaches wherein its workpieces are similarly applicable for imitation wood flooring (See, for example, [0027]). Marceau further teaches wherein applying texturing can predictably be achieved by methods including sandblasting, grinding (sanding), or planning (See, for example, [0014],[0036], claim 15). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated using a grinding or planning device into the first removal method since they are disclosed as equivalents in the art at predictably texturing imitation wood flooring and since where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967). Further, with respect to particularly using a device to provide the grinding / planning, if not already inherent in the teaches of sanding and planning, such as device would have been an obvious incorporation to perform the grinding/ planning since the court has held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art, see In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958), MPEP 2144.04 III.
Macor has taught the desirability of enhanced versatility, resolution, flexibility, reduction of waste attributed to applying of the droplets via inkjet method (See, for example, pg 1 lines 19-24 and pg 4 lines 17-20); but it does not explicitly teach wherein the at least one droplet comprises droplets congealed when contacting the workpiece or base layer. Jaeger teaches a method of ink jetting and ink jetting compositions (See, for example, abstract). Jaeger further teaches wherein selection of phase change inks provide improvements to ink jetting as the inks when not in use remain solid aiding shipping and long term storage and further overcome problems associated with nozzle clogging improving reliability, and since such inks congeal / solidify immediately upon contact with receiving surface, migration of the ink along the printing medium is prevented improving dot quality and ensuring predetermined patterns are achieved (see, for example, col 1 lines 23-30, and col 1 lines 44-55). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a phase change ink as the composition of the droplet which congealed when contacting the workpiece/base layer of the receiving surface since such inks aid shipping and long term storage, prevent nozzle clogging improving reliability, and enhance pattern resolution by preventing ink migration.
By combination, the material of the at least one congealed droplet is a phase changing thermoplastic polymer based upon fatty-amide comprising tetra-amide compound and mono-amide compound, and typically possessing a melting point of at least 85oC; where the material is desired to be ductile with high elongation and elasticity and not brittle (see, for example, Jaeger col 1 line 65-col 2 line 4, col 2 line 34-49, col 7 lines 19-54, and col 6 lines 14-22, col 8 lines 10-35). Whereas the material of the cured base layer is taught as specifically possessing features of resistance to abrasion / scratching and hardness for applications such as floorings, including thermosetting materials like epoxy and polyurethane varnish (see, for example, Macor pg 1 line 30- pg 2 line 6, pg 4 lines 11-16, pg 5 lines 12-15, pg 6 lines 6-15, and examples). Thus the materials appear to intrinsically possess the claimed relationship of the at least one droplet is more elastic or softer compared to the cured base layer. Alternatively, for sake of argument that the above teaching is not intrinsic, it would have at least been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated at least one droplet is more elastic or softer compared to the cured base layer since the phase changing droplet material is specifically desired to be ductile with high elongation and elasticity and not brittle while the cured base layer is desired to hard, and be abrasion and scratch resistance for protecting surfaces such as flooring. Further the droplet material is a temporary placeholder, ultimately entirely removed by at least mechanical means, thus it would not make sense to select a material for it that possessed lower elasticity or softness as it would undermine the intended purpose, its ability to be removed.
Claim 4: Macor further teaches wherein by the spraying on the at least one droplet into the not yet congealed base layer, at least one recess is brought in, wherein the at least one recess is preferably completely filled by the at least one droplet (See, for example, Fig 1).
Claim 6: Macor further teaches wherein before the spraying on of the least one droplet, a further processing step in which a solidification of the base layer (2) takes place insofar as the base layer comprises a higher viscosity than upon its application onto the workpiece however, it is not yet congealed, takes place (see, for example, pg 3 lines 10-15 wherein application can proceed after the resin of base layer has partially hardened).
Claim 9: Macor further teaches wherein the at least one droplet consists of a material (water) which cannot be stimulated to cure by UV radiation (see, for example, pg 3 lines 21-24, and example 2). Additionally /alternatively Jaeger has taught a phase change material which coagulates / solidifies upon cooling, not UV (See, for example, col 1 liens 22-30); and further still Schacht has taught additionally using a UV resistant phase as the droplet phase to preferentially mask curing of the underlying substrate (See, for example, [0026]), [0051], [0097]).
Claim 10: Macor in view of Schacht, Marceau, and Jaeger teaches the method of claim 1 (Above), and Macor further teaches wherein the liquid base layer encompasses the at least one droplet (See, for example, Fig 1). Macor further teaches wherein its inventive embossing is used as aesthetic enhancement of the article to aid in reproducing the look of natural materials (See, for example, pg 2 lines 7-25). Macor further teaches wherein the depth of embossing is modified by different manners such as amount of liquid and duration between application and curing (See, for example, pg 8 lines 2-9). Although Macor does not explicitly depict an embodiment wherein an orifice having a smaller area then a vertically upward projection of the at least one droplets remains in the base layer it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated such a configuration, such as by increasing the duration between application and curing, as such adjustable depth has been taught by Macor, 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, 191USPQ 90 (CCPA 1976), and as it would predictably alter and expand the range of achievable embossed structures expanding the number of possible natural material surfaces that could be reproduced.
Claim 11: Macor further teaches wherein the base layer is fixed in such a manner that an area comprising the at least one droplet has a different hardness grade (due to different materials therewith) with respect to an area without applied droplet (see, for example, Example 1, wherein the area comprising the droplet possesses TEGO RAD 2100 acrylate silicone, or alternatively phase change materials as described in Jaeger, whereas areas without the droplet are of Renner UO-240 polyurethane).
Claim 12: Macor in view of Schacht, Marceau, and Jaeger teach the method of claim 1 above, wherein a phase change ink has been incorporated (Refer to rejection of claim 1 above) {Zoltner} evidences wherein phase change inks, thus the at least one droplet from thereof, undergoes a reduction of volume (contract) during congealing / solidification ([0004]).
Claim 29: Macor further teaches wherein the liquid base layer encompasses the at least one droplet (See, for example, Fig 1). Macor further teaches wherein its inventive embossing is used as aesthetic enhancement of the article to aid in reproducing the look of natural materials (See, for example, pg 2 lines 7-25). Macor further teaches wherein the depth of embossing is modified by different manners such as amount of liquid and duration between application and curing (See, for example, pg 8 lines 2-9). Although Macor does not explicitly depict an embodiment wherein the at least one droplet penetrates completely into the base layer it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated such a configuration, such as by increasing the duration between application and curing to the point of complete penetration, as such adjustable depth has been taught by Macor, and 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, 191USPQ 90 (CCPA 1976), and as it would predictably alter and expand the range of achievable embossed structures expanding the number of possible natural material surfaces that could be reproduced.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Macor in view of Schacht, Marceau, and Jaeger as applied to claim 1 above and further in view of Koike et al (US 2016/0238774; hereafter Koike).
Claim 5: Macor in view of Schacht, Marceau, and Jaeger teaches the method of claim 1 (above), and Macor further teaches wherein control of the embossing depth can be modulated in different manners including applying more embossing liquid before fixing the base layer (See, for example, [0057]). But it does not explicitly teach the at least one droplet comprises droplets placed one above the other at the same spatial place in the liquid base layer and/or on the workpiece so that, before the applying and/or before the fixing of the base layer, a compound droplet results. Koike teaches a method of jetting patterned ink onto surfaces (See, for example, abstract, [0075]). Koike further teaches wherein the amount of ink applied to a particular position can be predictably increased by repeatedly ejecting the ink onto the same position (See, for example, [0153]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated repeatedly applying a plurality of droplets placed one above the other at the same spatial place in the liquid base layer and/or on the workpiece so that, before the fixing of the base layer, a compound droplet results as such a repetition would predictably achieve the desired result of applying more embossing liquid to a particular position resulting in the ability to tailor the embossing depth.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Macor in view of Schacht, Marceau, and Jaeger as applied to claim 1 above and further in view of Wong et al (US 2007/0235410; hereafter Wong).
Claim 8: Macor in view of Schacht, Marceau, and Jaeger teaches the method of claim 1 wherein the at least one droplet is a phase change materials which undergoes a solidification step (congealing) (refer to rejection of claim 1 above), but does not explicitly teach subsequently re-liquefied by means of solvent after fixation of the base layer. Wong teaches a method of producing structure on a surface of workpiece (See, for example, abstract, Fig 3). Wong further teaches the printing of phase change material in combination with a curable layer and subsequent removal of the phase change material can provide a predictable means for producing structure on a surface of a workpiece with rapidity and reduced defect production (See, for example, [0013-0021], Fig 3B-J). Wong further teaches wherein removal, and further selective removal, of the solidified phase change material from the structure of the fixed base layer can be achieved by application of a solvent (See, for example, [0016], [0018], [0038], [0052]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a reliquefying the phase change material by a solvent after fixation of the base as such solvation would provide a predictable means of removal of the phase change material at desired areas resulting in production of desired structures on a surface with enhanced control over resolution, rapidity, and reduced defect production.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Macor in view of Schacht, Marceau, and Jaeger as applied to claim 1 above and further in view of JPH05278400 (machine translation provided herein and citations made therein; hereafter JP400).
Claim 25: Macor in view of Schacht, Marceau, and Jaeger teaches the method of claim 1 (above) and Macor has taught wherein the thickness of the coating is from 3 to 50 in areas without embossing (see, for example, pg 8 lines 15-20); and Schacht has taught wherein the mechanical removal can enhance the aesthetic by providing a matt surface texture to the areas without embossing (See, for example, [0045], [0072]). But Schacht is silent as to an appropriate depth of such a removal to achieve matting, so they not explicitly teach removal of 1 to 50 micron of the cured base layer. JP400 teaches a method of for producing a structure on a surface of a workpiece (See, for example, abstract, [0001]). JP400 further teaches wherein matte surfaces formed by abrasive methods are conventionally treated to a depth of about 1 to 10 micron and the degree is optimizable and controllable depending on the abrasive particle size, time, intensity, etc (See, for example, [0023]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated removal of from at least 1 micron to less than 50 micron since a depth of at least 1 micron would predictably provide the desired matte aesthetic and since removing more than 50 micron would essentially remove the entire cured base layer, and since when a primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Macor in view of Schacht, Marceau, and Jaeger as applied to claim 26 above and further in view of Capka (US 2012/0108148; hereafter Capka).
Claim 27: Macor in view of Schacht, Marceau, and Jaeger and teaches the method of claim 26 (above) wherein Marceau has further taught that the texturing is inclusive of brushing (See, for example, [0014]), but they do not explicitly teach a mechanical brushing out of exposed at least one droplet following the first mechanical removal. Capka teaches a method of producing a structure on a surface of a workpiece (See, for example, abstract, [0023]). Capka further teaches wherein initially worked mechanically worked / removed surfaces such as sandblasted surfaces can be further enhanced / tailored aesthetically and energetically (allowing enhanced ease of cleaning) (see, for example, [0006] [0016]). Capka further teaches wherein brushing following such initial mechanical removal provides for efficient removal of surface defects and fragile parts present and / or generated by the initial mechanical removal (see, for example, [0016]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated brushing following the sanding / planning, wherein the combination is used for the removal, since brushing has been identified as a predictable means in combination with sanding, planning, sandblasting to provide texture and as particularly providing brushing in combination following such processes allows for a more tailorable aesthetic, easier to clean surface, and more efficient removal of materials thereon.
Claim(s) 1, 4, 6, 9-12, 25-26 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Macor (WO 2018/069874; provided in 12/22/20 IDS, hereafter Macor) in view of Tingley (WO 96/08366; hereafter Tingley) and Jaeger. {Zoltner relied upon as evidence only, particularly for claim 12}
Claims 1 and 26: Macor teaches a method for producing a structure on a surface of a workpiece (see, for example, abstract, Fig 1), the method having the following steps:
applying a liquid base layer (non-polymerized resin layer) onto the surface of the workpiece (substrate) (See, for example, abstract, Fig 1);
spraying on at least one droplet (embossing ink droplet) into the not yet congealed base layer wherein the at least one droplet penetrates (embossing depth) at least partially into the base layer (See, for example, abstract, Fig 1, pg 8 lines 2-29);
fixing the base layer (polymerizing / curing (See, for example, abstract, and pg 3 lines 26-34);
and at least partially removing the at least one droplet (embossing liquid) (see, for example, abstract, Figure 1, and pg 3 line 33).
Macor teaches the method above, but does not explicitly teach wherein the at least partially removing of the at least one droplet is performed by a first mechanical removal of the cured base layer. Tingley teaches a method for producing recessed structure on a surface of a workpiece, including incorporation of void structuring agents into a coating layer before curing (See, for example, abstract, abstract, Figure 3-6, and pg 4). Tingley further teaches at least partial removal of the agent can be predictably achieved via mechanical removal of the cured base layer, such as grinding with a grit abrasive (see, for example, Fig 3-6, pg 10 lines 27-35). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated at least partially removing of the at least one droplet by a first mechanical removal via grinding of the cured base layer as such an incorporation would provide for predictable method of removing the structuring droplet from the surface allowing intended generation of the depressed pattern. Further, with respect to particularly using a device to provide the grinding / planning, if not already inherent in the explicit teaching of rubbing a grit adhesive (pg 10 lines 27-35 of Tingley), such a device would have been an obvious incorporation to perform the grinding/ planning since the court has held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art, see In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958), MPEP 2144.04 III.
Macor has taught the desirability of enhanced versatility, resolution, flexibility, reduction of waste attributed to applying of the droplets via inkjet method (See, for example, pg 1 lines 19-24 and pg 4 lines 17-20); but it does not explicitly teach wherein the at least one droplet comprises droplets congealed when contacting the workpiece or base layer. Jaeger teaches a method of ink jetting and ink jetting compositions (See, for example, abstract). Jaeger further teaches wherein selection of phase change inks provide improvements to ink jetting as the inks when not in use remain solid aiding shipping and long term storage and further overcome problems associated with nozzle clogging improving reliability, and since such inks congeal / solidify immediately upon contact with receiving surface, migration of the ink along the printing medium is prevented improving dot quality and ensuring predetermined patterns are achieved (see, for example, col 1 lines 23-30, and col 1 lines 44-55). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a phase change ink as the composition of the droplet which congealed when contacting the workpiece/base layer of the receiving surface since such inks aid shipping and long term storage, prevent nozzle clogging improving reliability, and enhance pattern resolution by preventing ink migration.
By combination, the material of the at least one congealed droplet is a phase changing thermoplastic polymer based upon fatty-amide comprising tetra-amide compound and mono-amide compound, and typically possessing a melting point of at least 85oC; where the material is desired to be ductile with high elongation and elasticity and not brittle (see, for example, Jaeger col 1 line 65-col 2 line 4, col 2 line 34-49, col 7 lines 19-54, and col 6 lines 14-22, col 8 lines 10-35). Whereas the material of the cured base layer is taught as specifically possessing features of resistance to abrasion / scratching and hardness for applications such as floorings, including thermosetting materials like epoxy and polyurethane varnish (see, for example, Macor pg 1 line 30- pg 2 line 6, pg 4 lines 11-16, pg 5 lines 12-15, pg 6 lines 6-15, and examples). Thus the materials appear to intrinsically possess the claimed relationship of the at least one droplet is more elastic or softer compared to the cured base layer. Alternatively, for sake of argument that the above teaching is not intrinsic, it would have at least been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated at least one droplet is more elastic or softer compared to the cured base layer since the phase changing droplet material is specifically desired to be ductile with high elongation and elasticity and not brittle while the cured base layer is desired to hard, and be abrasion and scratch resistance for protecting surfaces such as flooring. Further the droplet material is a temporary placeholder, ultimately entirely removed by at least mechanical means, thus it would not make sense to select a material for it that possessed lower elasticity or softness as it would undermine the intended purpose, its ability to be removed.
Claim 4: Macor further teaches wherein by the spraying on the at least one droplet into the not yet congealed base layer, at least one recess is brought in, wherein the at least one recess is preferably completely filled by the at least one droplet (See, for example, Fig 1).
Claim 6: Macor further teaches wherein before the spraying on of the least one droplet, a further processing step in which a solidification of the base layer (2) takes place insofar as the base layer comprises a higher viscosity than upon its application onto the workpiece however, it is not yet congealed, takes place (see, for example, pg 3 lines 10-15 wherein application can proceed after the resin of base layer has partially hardened).
Claim 9: Macor further teaches wherein the at least one droplet consists of a material (water) which cannot be stimulated to cure by UV radiation (see, for example, pg 3 lines 21-24, and example 2). Additionally /alternatively Jaeger has taught a phase change material which coagulates / solidifies upon cooling, not UV (See, for example, col 1 liens 22-30).
Claim 10: Macor in view of Tingly and Jeager teaches the method of claim 1 (Above), and Macor further teaches wherein the liquid base layer encompasses the at least one droplet (See, for example, Fig 1). Macor further teaches wherein its inventive embossing is used as aesthetic enhancement of the article to aid in reproducing the look of natural materials (See, for example, pg 2 lines 7-25). Macor further teaches wherein the depth of embossing is modified by different manners such as amount of liquid and duration between application and curing (See, for example, pg 8 lines 2-9). Although Macor does not explicitly depict an embodiment wherein an orifice having a smaller area then a vertically upward projection of the at least one droplets remains in the base layer it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated such a configuration, such as by increasing the duration between application and curing, as such adjustable depth has been taught by Macor, 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, 191USPQ 90 (CCPA 1976), and as it would predictably alter and expand the range of achievable embossed structures expanding the number of possible natural material surfaces that could be reproduced.
Claim 11: Macor further teaches wherein the base layer is fixed in such a manner that an area comprising the at least one droplet has a different hardness grade (due to different materials therewith) with respect to an area without applied droplet (see, for example, Example 1, wherein the area comprising the droplet possesses TEGO RAD 2100 acrylate silicone, or alternatively phase change materials as described in Jaeger, whereas areas without the droplet are of Renner UO-240 polyurethane).
Claim 12: Macor in view of Tingly and Jaeger teach the method of claim 1 above, wherein a phase change ink has been incorporated (Refer to rejection of claim 1 above) {Zoltner} evidences wherein phase change inks, thus the at least one droplet from thereof, undergoes a reduction of volume (contract) during congealing / solidification ([0004]).
Claim 25: Macor in view of Tingley and Jaeger teaches the method of claim 1 (above) and Macor has taught wherein the thickness of the coating is from 3 to 50 micron in areas without embossing (see, for example, pg 8 lines 15-20). Tingley further teaches wherein the grinding process is performed to remove a “small portion” of the cured resin (see for example, Fig 6a-b, pg 10 lines 27-35), but does not specifically quantify such an amount. It is further derived from the figures of Macor and Tingley that the cross sectional area of the exposed recess at the exterior surface would be effected by the depth at which the surface is ground. Additionally, as the thickness of the coating of Macor is at most 50 microns, the amount removed must be less than 50 micron, otherwise there would be no coating left. Therefore although the range of less than 50 micron is not explicitly at least 1 micron to less than 50 micron it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated removal within the claimed range since 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, 191USPQ 90 (CCPA 1976).
Claim 29: Macor further teaches wherein the liquid base layer encompasses the at least one droplet (See, for example, Fig 1). Macor further teaches wherein its inventive embossing is used as aesthetic enhancement of the article to aid in reproducing the look of natural materials (See, for example, pg 2 lines 7-25). Macor further teaches wherein the depth of embossing is modified by different manners such as amount of liquid and duration between application and curing (See, for example, pg 8 lines 2-9). Although Macor does not explicitly depict an embodiment wherein the at least one droplet penetrates completely into the base layer it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated such a configuration, such as by increasing the duration between application and curing to the point of complete penetration, as such adjustable depth has been taught by Macor, and 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, 191USPQ 90 (CCPA 1976), and as it would predictably alter and expand the range of achievable embossed structures expanding the number of possible natural material surfaces that could be reproduced.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Macor in view of Tingley and Jaeger as applied to claim 1 above and further in view of Koike.
Claim 5: Macor in view of Tingley and Jaeger teaches the method of claim 1 (above), and Macor further teaches wherein control of the embossing depth can be modulated in different manners including applying more embossing liquid before fixing the base layer (See, for example, [0057]). But it does not explicitly teach the at least one droplet comprises droplets placed one above the other at the same spatial place in the liquid base layer and/or on the workpiece so that, before the applying and/or before the fixing of the base layer, a compound droplet results. Koike teaches a method of jetting patterned ink onto surfaces (See, for example, abstract, [0075]). Koike further teaches wherein the amount of ink applied to a particular position can be predictably increased by repeatedly ejecting the ink onto the same position (See, for example, [0153]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated repeatedly applying a plurality of droplets placed one above the other at the same spatial place in the liquid base layer and/or on the workpiece so that, before the fixing of the base layer, a compound droplet results as such a repetition would predictably achieve the desired result of applying more embossing liquid to a particular position resulting in the ability to tailor the embossing depth.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Macor in view of Tingley and Jaeger as applied to claim 1 above and further in view of Wong.
Claim 8: Macor in view of Tingley and Jaeger teaches the method of claim 1 wherein the at least one droplet is a phase change materials which undergoes a solidification step (congealing) (refer to rejection of claim 1 above), but does not explicitly teach subsequently re-liquefied by means of solvent after fixation of the base layer. Wong teaches a method of producing structure on a surface of workpiece (See, for example, abstract, Fig 3). Wong further teaches the printing of phase change material in combination with a curable layer and subsequent removal of the phase change material can provide a predictable means for producing structure on a surface of a workpiece with rapidity and reduced defect production (See, for example, [0013-0021], Fig 3B-J). Wong further teaches wherein removal, and further selective removal, of the solidified phase change material from the structure of the fixed base layer can be achieved by application of a solvent (See, for example, [0016], [0018], [0038], [0052]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a reliquefying the phase change material by a solvent after fixation of the base as such solvation would provide a predictable means of removal of the phase change material at desired areas resulting in production of desired structures on a surface with enhanced control over resolution, rapidity, and reduced defect production.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Macor in view of Tingley and Jaeger applied to claim 26 above and further in view of Capka.
Claim 27: Macor in view of Tingley and Jaeger teaches the method of claim 26 (above) but they do not explicitly teach a mechanical brushing out of exposed at least one droplet following the first mechanical removal. Capka teaches a method of producing a structure on a surface of a workpiece (See, for example, abstract, [0023]). Capka further teaches wherein initially worked mechanically worked / removed surfaces such as sandblasted surfaces can be further enhanced / tailored aesthetically and energetically (allowing enhanced ease of cleaning) (see, for example, [0006] [0016]). Capka further teaches wherein brushing following such initial mechanical removal provides for efficient removal of surface defects and fragile parts present and / or generated by the initial mechanical removal (see, for example, [0016]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated brushing following the grinding, wherein the combination is used for the removal, since brushing has been identified as a predictable means in combination with sanding/ grinding to allow for a more tailorable aesthetic, easier to clean surface, and more efficient removal of materials thereon.
Response to Arguments
Applicant’s amendment of claim 25, filed 6/4/25, with respect to claim objection of the term “echanical” have been fully considered and is persuasive; therefore the objection has been withdrawn.
In response to the previously applied 35 USC 112 (b) rejection of claim 8, Applicant replied (pg 5 of 6/4/25 remarks) that : “Claim 8 has been cancelled in response to the Examiner’s indefiniteness rejection under 35 USC 112 (b)”. Applicant’s entered claim set of 6/4/25 does not reflect this statement, and currently lists claim 8 as pending and “(Previously Presented)”; therefore the examiner has maintained this rejection.
In response to the amended matter of claim 1, refer to rejection of claim 1 above.
In response to applicant's argument that Jaeger’s phase change inks are designed to remain as permanent decorative elements, teaching of ductility in Jaeger would require the base layer to similarly possess ductility, Jaeger doesn’t teach removal; the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The work piece and base material thereon are dictated by the primary reference (Macor), not Jaeger; wherein the work piece is taught as inclusive of flooring materials, and the base material as hard and abrasion / scratch resistant varnish further wherein the applied ink jetted liquid is a temporary placeholder specifically to aid in rendering an embossed surface; thus retention of the ink and properties of the base layer of Jaeger have not been relied upon, and would not be relied upon.
Applicant further argues that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation is explicitly provided in the prior art, as Jaeger has taught wherein selection of phase change inks provide improvements to ink jetting as the inks when not in use remain solid aiding shipping and long term storage and further overcome problems associated with nozzle clogging improving reliability, and since such inks congeal / solidify immediately upon contact with receiving surface, migration of the ink along the printing medium is prevented improving dot quality and ensuring predetermined patterns are achieved (see, for example, col 1 lines 23-30, and col 1 lines 44-55). Applicant echoes the position of permanence and retention within the teaching of Jaeger, to which the examiner maintains such conditions are not apt or requisite within the teaching of primary reference Macor (see preceding paragraph).
In response to applicant's argument that the examiner's conclusion of obviousness for the motivation that: “phase change inks ‘aid shipping and long term storage, prevent nozzle clogging improving reliability, and enhance pattern resolution’ are benefits identified only in hindgsight”, 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). The examiner maintains that such benefits are not derived from Applicant (in fact nowhere in Applicant’s specification can the Examiner find any recitation of aiding shipping, long term storage, prevention of nozzle clogging, improving reliability, or enhanced pattern resolution, thus such benefits are not derived from applicant, but rather are instead specifically articulated in the prior art (see, for example, Jaeger col 1 lines 23-30, and col 1 lines 44-55). Contrary to applicant’s argument that such benefits only relate to Jaeger, not Macor, the examiner notes that as Macor is specifically applying the ink via inkjet printing and the applied pattern is important to dictate the embossed structure, any and all of the above benefits are most assuredly relevant and apt with respect to Macor.
Applicant argues that the new limitation provides unexpected advantages in facilitating droplet removal. Applicant’s arguments are unconvincing because they are not accompanied by a showing of evidence commensurate in scope with the claims. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Further the examiner is unable to ascertain what is unexpected from selecting a material which is desired / intended to be removed as being softer from the material that is intended to be retained during a mechanical removal processes (grinding / plane device removal). As a softer material would be expected to be more readily removed than a harder material during a mechanical abrasion treatment.
As to the remaining dependent claims they remain rejected as no additional separate arguments are provided.
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 NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712
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