DETAILED OFFICIAL 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 .
Examiner Note
It is noted that all references hereinafter to Applicant’s specification (“spec”) are to the published application US 2023/0323051, unless stated otherwise. Further, any italicized text utilized hereinafter is to be interpreted as emphasis placed thereupon.
Election/Restrictions
Applicant’s election without traverse of Species I, claim 2 in the reply filed on 08 December 2025 is acknowledged. Claims 3 and 5-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
As such, claims 1-18 remain pending, claims 3 and 5-18 are withdrawn, and claims 1-2 and 4 are under examination on the merits.
Information Disclosure Statement
The information disclosure statements (IDS) filed 13 July 2023, 17 August 2023, and 31 August 2023 are in compliance with 37 CFR 1.97 and have been considered.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herring et al. (GB 2342071A; “Herring”) (copy provided herewith).
Regarding claim 1, Herring discloses a hydrographic sheet comprising a water-soluble film formed from water-soluble polyvinyl alcohol (PVOH), and an ink-jet printed image, color, pattern, design, text, or texture (“decoration”) formed from water-insoluble (non-aqueous) ink (“ink layer”) on a surface of the water-soluble film. The hydrographic sheet is floated on the surface of a water bath (e.g. tank) with the ink layer facing upward, the water-soluble film undergoes partial dissolution such that the ink layer releases therefrom and remains floating on the surface of the water such that the ink molecules are held in position by the dissolving/partially-dissolved film, and an object intended to receive the decoration on one or a plurality of its surfaces is lowered through the ink layer and dissolving film and immersed in the water bath [Abstract; p. 1 ln. 10-24, 29-37; p. 2 ln. 1-10; p. 4 ln. 1-15; p. 5 ln. 1–p. 6 ln. 8; p. 8 ln. 1-12; p. 13 ln. 34-37; p. 15 ln. 21-25; p. 16 ln. 27–p. 17 ln. 17].
After the object has been immersed and thereby received the ink layer (decoration) thereon, the object is removed from the water bath, and traces of the water-soluble film (partially-dissolved or undissolved) which may remain on the surface of the object are cleaned therefrom, such as by use of air, water, or solvent [p. 11 ln. 27–p. 12 ln. 14].
Suitable objects for receiving the decoration via the hydrographic sheet and foregoing process – which is known/recognized by one of ordinary skill in the art as surface water printing, immersion printing, water transfer printing, hydrodipping, and/or hydrographic printing – are suitably formed from, e.g. plastic or metal [p. 1 ln. 35–p. 2 ln. 10].
The hydrographic sheet disclosed by Herring anticipates the hydrographic sheet defined by each and every limitation of claim 1. The water-soluble PVOH film reads on the claimed water-soluble film, the ink layer comprising the decoration formed from water-insoluble ink reads on the claimed decoration art formed from a non-aqueous ink or dye disposed on at least one side of the sheet, and the water transfer printing process steps set forth/cited above read on “wherein the hydrographic sheet leaves floating decoration art upon dissolution in water, and wherein the floating decoration art comprises at least partially solubilized water-soluble with decoration art for adhering to an article”.
Regarding claim 2, the rejection of claim 1 above reads on the hydrographic sheet defined by claim 2 – the water-soluble film of the hydrographic sheet of Herring is formed from PVOH.
Regarding claim 4, the rejection of claim 1 above reads on the hydrographic sheet defined by claim 4 – the object suitable for receiving the decoration formed by the ink layer of the hydrographic sheet is suitably formed from metal or plastic.
Further, it is noted, in regard to claims 1 and 4, that the limitation in claim 1 of “for adhering to an article” constitutes functional language (see MPEP 2173.05(g)) and/or a recitation of the intended use of the claimed hydrographic sheet akin to intended use language typically recited in the preamble of a claim (see MPEP 2111.02(II)). In the instant case, the invention defined by claim 1 is directed to the hydrographic sheet itself, and does not require “an article” to which the claimed decoration art is intended to adhere. That is, the metes and bounds of the scope of claim 1 do not encompass the aforesaid article – and the claimed phrase “for adhering to an article” is interpreted as a phrase describing the function or intended use of the hydrographic sheet, of which is read on by prior art which is capable of performing the function/intended use, in the instant case, read on by the hydrographic sheet of Herring which is explicitly disclosed as capable of transferring the floating decoration defined by the ink layer to the object such that the ink layer adheres thereto. As such, claim 4, which is directly dependent upon claim 1, is interpreted wherein the hydrographic sheet (decoration art thereof) is intended for, and must be capable of, adhering to articles formed of the claimed species of material, rather than the claimed invention encompassing the article itself formed from the claimed species of material.
Claims 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Velamakanni et al. (WO 2021/191773) (copy provided herewith).
Regarding claim 1, Velamakanni discloses a hydrographic sheet suitable/intended for use in a hydrographic printing process, i.e. water transfer printing to form a decorative and/or functional layer (“image layer”) on one or more surfaces of a dental appliance (e.g. aligner, retainer) [Abstract; p. 2 ln. 8-31; p. 3 ln. 4–p. 4 ln. 14].
The hydrographic sheet comprises a water-soluble carrier substrate (14), and an image layer (12) formed on at least one surface of the substrate (e.g. printed or coated thereon); the water-soluble carrier substrate (14) is suitably formed from a water-soluble film including, inter alia PVOH, polyethylene glycol (PEG), polyacrylic acid (PAA), polyacrylamides, or polyvinylpyrrolidone (PVP) [p. 5 ln. 1-16]. The image layer (12) is formed from, inter alia a liquid, non-aqueous (e.g. solvent-based) ink, including a hardenable (curable) liquid resin, optionally dyes/pigments, and one or more additives [p. 5 ln. 17–p. 13 ln. 25].
The image layer (12) to be transferred to the dental appliance may be selected from graphics, pictures, textures, multi-colors, aesthetic patterns, photographic images, logos, bar codes, QR codes, geometric arrays, and the like [p. 5 ln. 25-30]. The dental appliance is suitably formed from, inter alia thermoplastic polymeric material [p. 13 ln. 27–p. 14 ln. 22].
The hydrographic sheet is placed in an aqueous solution bath having a controlled temperature, with the image layer (12) facing upward, wherein at least a portion of the carrier substrate (14) (water-soluble film) floats on the surface of the aqueous solution; the substrate (14) begins to dissolve or is activated to start dissolution, and the image layer (12) begins to soften; after a predetermined duration, the substrate (14) at least partially dissolves, leaving the image layer (12) floating on the surface of the aqueous solution [p. 15 ln. 24–p. 16 ln. 15]. The dental appliance is then lowered through the floating image layer and at least partially dissolved substrate, wherein the image layer is received on the surface(s) of, and adheres to, the dental appliance, followed by removal of the dental appliance having the image layer transferred/adhered thereto from the aqueous solution bath [p. 16 ln. 17-35].
Thereafter, undissolved and/or remaining portions of the substrate (14) (water-soluble film) which remain on the surface of the dental appliance are washed away with water or other rinsing/finishing solutions [p. 17 ln. 1-6].
It is noted that the analysis set forth at ¶15 above is incorporated herein by reference (not repeated). The hydrographic sheet of Velamakanni anticipates the hydrographic sheet defined by each and every limitation of claim 1. The carrier substrate (14) formed from the water-soluble polymeric film reads on the claimed water-soluble film; the image layer (12) formed from the non-aqueous, liquid ink composition reads on the claimed decoration art formed from a non-aqueous ink or dye disposed on at least one side of the sheet; and the hydrographic sheet reads on “wherein the hydrographic sheet leaves floating decoration art upon dissolution in water, and wherein the floating decoration art comprises at least partially solubilized water-soluble film with decoration art for adhering to an article”.
Regarding claim 2, the rejection of claim 1 above reads on the hydrographic sheet defined by claim 2 – the carrier substrate (14) is formed from a water-soluble polymeric film comprising, inter alia PVOH, PEG, PAA, polyacrylamides, or PVP (each corresponding to the respective claimed polymeric species).
Regarding claim 4, the rejection of claim 1 above reads on the hydrographic sheet defined by claim 4 – the dental appliance, which reads on the claimed article, is formed from thermoplastic polymeric material (plastic). Further, see ¶15 above, of which is also incorporated by reference into the rejection of claim 1 above.
Claims 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Migas et al. (US 2018/0043671; “Migas”).
Regarding claim 1, Migas discloses a hydrographic film (hydrographic sheet) comprising a layer of water-soluble PVOH, printed on one surface thereof with a solvent-based (or UV-cured) decorative ink (non-aqueous ink) which forms a fanciful, abstract, and/or decorative pattern or image (decoration) [Abstract; 0007-0008, 0012, 0029-0030, 0041, 0048-0049, 0051, 0063-0064, 0078-0091].
The hydrographic film, substantially immediately after having been printed with the decorative ink (e.g. within 60 seconds), is positioned on the surface of a temperature-controlled water bath with the ink still (i.e. remaining) in a wetted state and facing upward; the PVOH layer begins to dissolve; and a molded closure (article) formed from polyolefin is immersed into the water bath through the (floating) ink layer and dissolving film to transfer the decorative ink (decoration) to the closure [0051-0091]. The closure is removed from the bath, and residual PVOH is rinsed therefrom, followed by drying of the resultant closure having the decoration adhered thereto [0078-0091].
is noted that the analysis set forth at ¶15 above is incorporated herein by reference (not repeated). The hydrographic film of Migas anticipates the hydrographic sheet defined by each and every limitation of claim 1. The PVOH layer reads on the claimed water-soluble film; the solvent-based decorative ink forming the decoration reads on the claimed decoration art formed from a non-aqueous ink or dye disposed on at least one side of the sheet, and the hydrographic film reads on “wherein the hydrographic sheet leaves floating decoration art upon dissolution in water, and wherein the floating decoration art comprises at least partially solubilized water-soluble film with decoration art for adhering to an article”.
Regarding claims 2 and 4, the rejection of claim 1 above reads on each hydrographic sheet defined by claims 2 and 4. The water-soluble PVOH layer reads on the claimed water-soluble film species PVOH (claim 2), and the closure formed from a polyolefin reads on the claimed plastic (species of article material) (claim 4).
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
US 6,935,230 to Walker et al. – discloses a dip transfer printing process, apparatus for use therein, and water-transfer film comprising water-soluble film having printed thereon a layer of solvent-based ink [Abstract; cols. 1-3; col. 4 ln. 54–col. 5 ln. 55]
US 6,623,817 to Yang et al. – teaches various species of synthetic, water-soluble polymers which are suitable for use in transfer printing processes [Abstract; col. 2 ln. 34-53]
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Michael C. Romanowski whose telephone number is (571)270-1387. The Examiner can normally be reached M-F, 09:30-17:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C. ROMANOWSKI/Primary Examiner, Art Unit 1782