Detailed Office Action
Applicant's amendments and arguments filed on 2/25/2026 has been entered. Claim 1 is amended. Claims 1-3 remain pending.
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 Amendments and Arguments
Applicant’s amendments have overcome the 35 USC 112(b) rejections previously set forth in the non-final office action of 12/2/2025. These rejections are withdrawn.
Applicant arguments (under item II 1) regarding technical incompatibility of combination of PREISNER and YANG are not persuasive (see arguments of 2/25/2026, page 5).
The Examiner never relied on PREISNER for a mechanism for application of selective pressure. As detailed before (e.g., in the final office action 4/23/2025), and since the primary art of INCREMONA teaches that manual pressure can be used {[C4, L28-29]}, the Examiner only relied on teachings of PREISNER regarding the advantage of applying selective pressure and not the mechanism for this application. Therefore, the argument that the mechanism of application of pressure of PRESNER is incompatible with YANG is moot.
Applicant arguments (under item II 2) that INCREMONA teaches away from selective pressing are not persuasive (see arguments of 2/25/2026, page 6).
Applicant states that INCREMONA explicitly teaches away from selective or point pressure. In its "Background of the Invention" and "Summary," INCREMONA identifies the requirement for "high pressure or point pressure" in prior art as a significant
disadvantage. INCREMONA's primary innovation lies in eliminating the need for such
"point pressure," allowing for application with "minimal pressure" ("The present
invention provides a transfer article, ... achieves excellent weeding characteristics via an
easy application technique that employs minimal pressure"). This is because selective transfer is achieved automatically through the materials' physical properties (differential tackification) rather than through pressure control. Reintroducing "selective point pressure" from PREISNER into INCREMONA would force an operator to perform the very "labor-intensive pressure control" that INCREMONA sought to eliminate. There is no motivation for a PHOSITA to modify a simple, minimal pressure process into a more complex selective-pressing process that runs counter to the invention's stated purpose.
The Examiner disagrees with the Applicant’s interpretation of “point pressure” as being equivalent to “selective pressure”. Selective pressure means that pressure is only applied over a selective area and thus is not exerted over all areas including unselected areas. INCREMONA does not teach away from selective application of pressure. Nowhere in INCREMONA exclusive use of uniform pressure over the entire area is recited. Use of “minimal pressure” is not equivalent to “uniform pressure” or “non-selective pressure”.
Indeed, INCREMONA teaches away from applying high pressure and not selective pressure (emphasis added by the Examiner). For example, INCREMONA teaches avoidance of using high laminations pressures {[C4, L14-15]}. Does this mean that INCREMONA teaches away from lamination pressure or teaches aways from high pressure? If the former, and since lamination indicates a uniform pressure, does this indicate that INCREMONA teaches away from applying uniform/unselective pressure?
Also, INCREMONA does not mention the phrase “labor-intensive” throughout its disclosure. Applicant is requested to provide reference to such teachings in INCREMONA. INCREMONA teaches using simple hand pressure or manual operation that can actually be considered labor intensive {[C4, L28-29]}.
Applicant arguments (under item II 3) are not persuasive (see arguments of 2/25/2026, pages 6-7).
Applicant states that “hand pressure” and “burnishing” in INCREMONA are described as means to ensure overall contact, not as means to "trace" the image portion
This is just a statement by Applicant and is not supported by factual evidence. As described above, hand pressure can indeed be applied to select areas. Again avoiding “point pressure” as taught by INCREMONA does not forbid an artisan to apply pressure to a selected area and not to apply pressure to an unselected area.
Applicant arguments (under item II 4) are not persuasive (see arguments of 2/25/2026, page 7).
Applicant states that PREISNER's teaching of "selective pressing" is inseparable from its specific hardware: a sheet-fed printing press with a transfer gap (nip) between cylinders. PREISNER's "selective pressing" is achieved by attaching a "partial pressing surface" or "pressing segment" to a rotating press cylinder.
This is just a statement by Applicant and is not supported by factual evidence. Nowhere PREISNER teaches that the “selective pressure” only and only can be performed by its disclosed mechanism and that no other mechanism in the world can accomplish such selective pressure. It is obvious to one of ordinary skill in the art that by using one’s finger, pressure can be applied to select areas.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over INCREMONA (US 4,919,994), hereinafter INCREMONA, in view of SCHUH (US-2019/0284448), hereinafter SCHUH, YANG (US-2003/0082326), hereinafter YANG, and PREISNER (US-2012/0031538), hereinafter PREISNER. Note that the italicized text below are the instant claims.
Regarding claim 1, INCREMONA discloses An image transfer method {[abstract]}, comprising the steps of:
forming a glue layer {[C4, L62-65]}.
INCREMONA discloses forming the glue coating directly on the release paper {[C10, L16] note liner is release paper} and therefore is silent on forming the glue coating on a substrate first and then transferring the glue coating to the release liner by a substrate that has previously been provided with the glue coating or the limitation “by pressure-gluing a glued sheet, defined by a substrate and a glue coating provided on a lower surface of the substrate, onto an upper surface of a release paper, and subsequently peeling and removing the substrate and exposing the glue layer”.
In the same filed of endeavor that is related to transferring adhesive layers, SCHUH discloses that it is known that an alternative technique involves or is possible by transfer of an adhesive layer by lamination onto a liner {[0123] note the transfer requires a substrate and eventual peeling and removing the substrate}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of SCHUH in the method of INCREMONA and instead of directly providing the glue coating on the release liner of INCREMONA, have transferred it using a substrate to the release liner of INCREMONA. As disclosed by SCHUH, this alternative method is known and possible {[0123]}.
Regarding the next limitation of claim 1, modified INCREMONA discloses printing ink on the exposed upper surface of the glue layer by a non-contact printer to thereby provide an image layer on part of the glue layer {[C2, L58-59], [C7, L68], [C8, L63], [C9, L2] note nonimpact technique that reads on non-contact};
affixing a transfer film on the glue layer provided with the image layer to thereby forming an image transfer sheet {[FIG. 1] carrier 2 is the transfer film, 2/4/5 is the image transfer sheet},
wherein the transfer film is releasable from the image layer and adhesive to the glue layer, and causing the transfer film to contact with a lower surface of the transfer film onto the image layer where there is the image layer, and with the glue layer where there is no image layer {[FIG. 2] note 2 is releasable and contacts both 4 (the image layer) and 5 (not 5a) that is the glue layer where there is no image layer};
peeling and removing only the release paper from the image transfer sheet {[FIGs. 1 & 2] note that 7 (release paper) shown in FIG. 1 is not present in FIG. 2 thus, peeled and removed};
pressure-gluing the lower surface of the glue layer of the image transfer sheet, with the release paper removed, onto a transfer target object {[FIG. 2] 8 is the transfer target object, {[C4, L57-58] note the teaching of applying pressure or pressure-gluing};
applying a pressure from above the transfer film {[C4, L57-58] note the teaching of applying pressure on the carrier sheet that indicates from above},
and peeling and removing the transfer film from the image transfer sheet pressure-glued to the transfer target object {[FIG. 2] note transfer film 2 is removed}.
Modified INCREMONA, however, is silent on the release paper “having many fine recesses”.
In the same filed of endeavor that is related to pressure sensitive adhesives, YANG discless that protrusions or recesses in a release liner creates recesses in the adhesive layer and thus allows egress of fluids or air to the periphery of adhesive layer for exhaustion in the surrounding environment {[0044], [0055]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of YANG in the combination method of INCREMONA and SCHUH and have provided recesses in the release paper or liner of INCREMONA.
As disclosed by YANG, the advantage of these recesses is that they allow movement and release of air bubbles from underneath of the adhesive layer to the outside and thus prevention of formation of trapped air {[0044]}.
Combination of INCREMONA, SCHUH, and YANG however is silent on the last limitations of claim 1 reciting “selectively applying a pressure”, and “only to a portion of the image layer where an image is present, so as to move air trapped between the glue layer of said portion and the transfer target object trough a space created by the many fine recesses to a portion of the image layer where no image is present, or to discharge said air to the outside from an edge of the image transfer sheet, thereby enabling transfer of the image layer to the transfer target object having a curved surface and/or preventing transfer failures when transferring an image layer”.
In the same field of endeavor that is related to transfer of image forming layers, PREISNER discloses that to improve transfer characteristics, a limited pressing surface can be provided that can be directly applied only to those areas where the image forming layer is present {[0025], [0032]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of PREISNER, regarding application of pressure to the image, in the combination method of INCREMONA, SCHUH, and YANG and have applied pressure only exclusively or selectively to the areas where the image pattern 4 of INCREMONA is present. The Examiner notes that, upon incorporation of teachings of PREISNER regarding selective pressuring, an artisan can exert pressure exclusively on the image of INCREMONA, for example manually, as taught by INCREMONA {[C4, L28-29] note manual or hand pressure that can be used to exclusively apply pressure to graphic pattern 4 of INCREMONA as shown in figures}.
As disclosed by PREISNER, the advantage of this selective pressing is that it enables pressuring only those surfaces/portions of the transfer target object with an image {[0032]}.
The Examiner notes that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant {see MPEP 2144 (IV)}.
Regarding the limitations reciting moving of trapped air through a space created by the many fine recesses and discharging said air to the outside from an edge of the image transfer sheet and preventing transfer failures when transferring an image layer, the Examiner submits that these limitations are the intended results of the applying the process steps. As the combination of INCREMONA, SCHUH, YANG, and PREISNER discloses the same process steps in substantially the same manner as the instant claims, it is the Examiner’s position that substantially the same results will occur which is the removal of trapped air and prevention of transfer failure. Notably, the applicant’s disclosure does not specify any additional method steps that results in such outcome. If applying the same method steps in substantially the same manner does not inherently result in these outcomes, then a question of scope of enablement and/or omitting essential method limitation can be brought for claim 1.
Additionally, and as disclosed above by YANG, the advantage of these recesses is that they allow movement and release of air bubbles from underneath of the adhesive layer to the outside and thus prevention of formation of trapped air {[0044]}.
Regarding claim 2, INCREMONA discloses wherein the image layer is UV ink printed on the upper surface of the glue layer by a UV printer {[C15, L2], [C17, L4]}.
Allowable Subject Matter
Claim 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 3, no prior art was found to teach “wherein the image layer contains an image for transferring and an image for non-transferring and the image for transferring is printed by an ink having a threshold density per unit area or above the threshold density and the image for non-transferring is printed by an ink having a density below the threshold density per unit area”.
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 S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
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