DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/18/2026 has been entered.
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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 1-2, 6-7, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0067350 to Janssen.
Re claims 1 and 9, Janssen discloses color-matching article comprising protective overlay, pressure sensitive adhesive (corresponding to claimed pressure sensitive adhesive), transparent base film (corresponding to clear substrate sheet), and transparent colored layer (corresponding to claimed transparent coating) [9, 10, 60-62, 101]. The color-matching article is used to compare to a target substrate and then the colored region that most closely matches is selected [3040]. Given that the color matching article is identical to that claimed, it would necessarily be configured to facilitate selection of a liquid stain having a color as claimed. Further, given that the color-matching article is selected that most closely matches the target article, the color value of the color matching article would necessarily be within +/-10% the color value of the target.
In light of the overlap between the claimed color sample and that disclosed by Janssen, it would have been obvious to one of ordinary skill in the art to use a color sample that is both disclosed by Janssen and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Re claim 2, given that the color matching article is used on vehicles [9], the base material would necessarily be metal.
Re claim 6, the transparent base film is a polyester and has thickness of 0.5-10 mils [78, 80].
Re claim 7, given that the claims are drawn to a final product where any solvent would be evaporated, the pressure sensitive adhesive of Janssen is considered to meet that presently claimed.
Re claim 11, given that the color matching article is identical to that claimed, it would necessarily be configured to facilitate selection of a liquid stain having a stain color, the stain applied to wood as presently claimed. Further, given that the color-matching article is selected that most closely matches the target article, the Delta E of the color matching article would necessarily be within 2 of the Delta E of the target.
Claims 3-5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over
US 2004/0067350 to Janssen in view of US 20070131136 A1 to Zhang et al.
Re claims 3-5 and 12, Janssen is relied upon above, but is silent to micronized pigments or metal complex dyes and the specific lacquer as claimed and silent to pine wood.
Zhang teaches micronized pigments and metal complex dyes as colorants in compositions to color wood [12-17] including pine (see Examples 11-19 per claim 12) and [131], Zhang teaches nitrocellulose inherently clear base liquid binders as the carrier for colorants.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to add, use, or substitute metallic complex dyes, pigments and lacquers as claimed with pine wood and taught in the composition of Janssen for Zhang teaches the pigments and dyes add color to pine wood and the nitrocellulose is a suitable carrier for colorants.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0067350 to Janssen et al. in view of US 20190338166 A1 to Hebert et al.
Re claim 8, Janssen is relied upon above, but is silent to solvent based pressure sensitive adhesive with liner as claimed.
Hebert teaches [58] both types of adhesives and liner [71] for use with adherence to wood. That the release is printable only requires that it is capbable of being so and is product by process language in a product claim. Further, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that the combination meets the requirements of the claimed body, the combination clearly meet the requirements of the present claim.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to add, use, or substitute solvent based PSA with liner of Hebert in the PSA of Janssen to secure to wood.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0067350 to Janssen in view of US 20100252187 A1 to Calderas et al.
Janssen is relied upon above.
Re Claim 10, Janssen is silent to a flattening agent.
Calderas teaches a flattening agent in a similar color surface and composition [0031] for yielding a matte finish, and the topcoat can contain a dispersed filler or flattening agent such as silica to lower the gloss of the matte finish of the dry color laminate.
It would have been obvious to one having added the flattening agent of Calderas to the composition of Janssen to produce a matte finish.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0067350 to Janssen in view of US 20100252187 A1 to Calderas et al. in view of US 20190338166 A1 to Hebert et al. and further in view of US 20070131136 A1 to Zhang et al.
Janssen is relied upon above.
Re claims 13 and 15, Janssen is silent to micronized pigments or metal complex dyes and the specific lacquer as claimed while teaching pigments/dyes and lacquer [32], Janssen.
Zhang teaches micronized pigments and metal complex dyes as combined colorants in compositions to color wood [12-17] and [131], Zhang teaches nitrocellulose inherently clear base liquid binders as the carrier for colorants.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to add, use, or substitute metallic complex dyes, pigments and lacquers as claimed and taught in the composition of Janssen for Zhang teaches the pigments and dyes add color to wood and the nitrocellulose is a suitable carrier for colorants.
Further, the thickness of the lacquer is within the skilled artisan to have modified it would have been obvious to one of ordinary skill in the art to lacquer sheets with thickness, including that presently claimed, in order to produce lacquer layers with effective functionality.
Re claim 14, Janssen is silent to a flattening agent.
Calderas teaches a flattening agent in a similar color surface and composition [0031] for yielding a matte finish, and the topcoat can contain a dispersed filler or flattening agent such as silica to lower the gloss of the matte finish of the dry color laminate.
It would have been obvious to one having added the flattening agent of Calderas to the composition of Janssen to produce a matte finish.
Response to Applicant’s Arguments
Applicant’s arguments are not found convincing as the new limitations are moot in view of the new reference and new ground of rejection. See Office Action above.
Conclusion
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
US 6045914 A to Sullivan et al. teaches pearlescent glass pigment using micron sized pigment and metal complex pigment combinations in paint compositions.
Zeik essentially teaches the same invention and is similar to Calderas.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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