DETAILED ACTION
Contact Information
Applicant is requested to update their attorney correspondence information with respect to the current application. Applicant’s attorney is currently listed as being Bryan Loeffler and as having an address in Naples, FL. This appears to no longer be correct.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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.
Claim 4 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The claim(s) contains subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention. Claim 4 now recites “the visual elements comprise an ink layer secured between the clear film and an adhesive promotion layer", but depends from claim 3, which recites “an adhesive layer secured between the clear film and solid material carrier”. Although a medium comprising an “adhesive layer” (32), e.g. Fig. 4, and a medium comprising an “adhesion promotion layer” (28), e.g. Fig. 5, are separately disclosed, there appears to be no depictions or discussion of a medium that comprises both an “adhesive layer” and an “adhesion promotion layer”, or “adhesive promotion layer”, as claimed. Therefore, the requirement to such appears to combine embodiments to create a new embodiment that is not supported by the instant disclosure and that constitutes new matter. Appropriate correction is required.
Claim 4 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor or a joint inventor regards as the invention.
The meaning of claim 4 is unclear for multiple reasons. First, as the claim does not positively recite “further comprising an adhesive promotion layer”, it is not clear if the “adhesive promotion layer” is actually required to be present in the medium or not, particularly as claim 3 already recites an adhesive layer.
Second because the claim recites “the visual elements comprise an ink layer secured between the clear film and an adhesive promotion layer" and depend from claim 1, which recites “said solid material carrier containing hidden visual elements", it is not clear how the visual elements can be located "between the clear film and an adhesion promotion layer", while still being "contained" within the solid carrier material". As such, it is not clear if the "visual elements" of claims 4 are considered to be part of the solid carrier material or not. Given that the visual elements are located above the “adhesive promotion layer” in claim 4, it is also not clear if the adhesive promotion layer should be considered part of the solid carrier film or not.
For the sake of compact prosecution, because claim 4 does positively not recite that the medium “further comprises” an adhesion promotion layer, and because the instant disclosure states that an “adhesion promotion layer” can be an adhesive (Applicant’s published application, par. 68), a product with either of an "adhesive layer" or an "adhesive promotion layer" positioned as claimed is considered herein to meet the claim requirement. Appropriate correction is required.
The rejections of claims 1-3, 5-8, 11, and 12 are withdrawn in view of Applicant’s amendments, filed September 26, 2025.
Claim Rejections - 35 USC § 102
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 1-3, 7, 8, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okawa (US Pat. No. 4,810,562), as evidenced by HiFull, “HiFull, “Silica, Synthetic Silica and Fumed Silica – Definition and Relationship”, 2025, p. 1-12).
Regarding claims 1, 2, and 8, Okawa teaches a medium comprising an opaque absorbing layer (2) secured to a solid material carrier (3, 5, 6) containing hidden graphical visual elements (5) under the absorbing material, with a clear film (1) secured between the absorbing layer and material carrier (Figs 1-6; col. 2, ln. 19-36).
Okawa teaches that the hidden visual elements under the absorbing material are revealed when the sheet is wetted with water (col. 1, ln. 5-10; col. 1, ln. 38-45). Although Okawa does not explicitly teach that his visual elements become visible when an oil applied, as recited in claim 1, Okawa does teach that the water used to reveal visual elements wets the surface by entering through fine pore channels in the absorbing layer (col. 4, ln. 5), thereby establishing that the absorbing layer is porous and capable of absorbing liquids. Okawa also teaches that his opaque layer may comprise synthetic silica as a white pigment, which provides opacity, and a binder with good transparency, and exemplifies a medium including an opaque layer that, in its dried state, is about 39.8 wt. % synthetic silica (col. 2, ln. 65-col. 3, ln. 10; Table 1). As evidenced by HiFull, synthetic silica is amorphous silica (p. 1). The instant disclosure also teaches that a preferred opaque absorbing layer, which behaves as claimed, comprises 35 to 38 wt. % amorphous silica (Applicant’s published application, par. 64). Therefore, Okawa’s dried, porous opaque coating, which comprises approximately the same amount of synthetic silica as the that of the instant disclosure is expected to behave like the instantly disclosed and claimed absorbing layer, including being capable of absorbing oil and decreasing in opacity to at least some degree, thereby rendering the visual elements at least somewhat visible.
Furthermore, although Okawa does not explicitly teach that the hidden visual elements are "gradually revealed" until they become "visible" with the application of an oil, the limitation is, at least in part, a statement of intended use regarding how liquid is applied to the medium. As just mentioned, Okawa establishes that his opaque coating is porous and wetted by liquid entering the fin pre channels with in the layer (col. 4, ln. 5). As such, the layer's transparency depends upon how far into the pore channels the liquid has traveled into the material, which is a gradual process because the entire layer cannot be instantaneously wetted. Therefore, the hidden elements are gradually revealed when liquid, e.g. oil, is applied and wicked further and further into the absorbing layer. Additionally, if the oil is applied in a gradual manner by a user, e.g. by gradually applying oil from left to right, then the hidden elements are also necessarily revealed in a gradual manner. As such, Okawa's product meets the claim requirement because it functions and is capable of being used as claimed.
Regarding claim 3, Okawa's solid material carrier includes a base paper (3) that is colored with ink (i.e. forming the colored surface, 5) by coating or printing in advance of making the laminated product (col. 3, ln. 47-50; col. 6, ln. 45-55; col. 7, ln. 8-11; col. 8, ln. 16-42). Okawa teaches that the colored base paper is adhered to the clear film with an adhesive (col. 8, ln. 16-42). As such, Okawa's product includes an adhesive layer secured between the clear film and the solid material carrier.
Regarding claim 7, as shown in Figure 5, multiple, different regions of ink (6), are positioned between the base paper (3) and the clear film (1) (Fig. 5). As no particular features are claimed or defined that distinguish a "visual element" from an "ink layer" from "marking materials", some of the regions of ink (6) may be considered "visual elements", some of the regions of ink may be considered "ink layers", and some of the regions of ink may be considered "marking materials". As such, Okawa's product comprises "visual elements", as recited in claim 1, and an "ink layer" and "marking materials" between the clear film and solid material carrier, as recited in claim 7.
Regarding claim 11, as no particular texture is claimed, any texture on the solid material carrier may be considered to meet the requirement that "the solid material carrier has a texture". Okawa's solid material carrier layer has an upper surface and, therefore, necessarily has a texture. Figures 2 and 5 show that the layer (3, or a combination of 3, 5, and 6) has a smooth texture (Figs. 2, 5).
Regarding claim 12, as shown in Figures 2, 3, 5, and 6, Okawa's solid material carrier (3, or a combination of 3, 5, and 6) has a length, width, and thickness and, therefore, is three-dimensional (Figs. 2, 3, 5, 6; note: Figs. 3 and 6 demonstrate that the layer is planar and, therefore, has a length and width in addition to having a thickness).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mabbott (US PG Pub. No. 2021/0146671).
Regarding claim 1, Mabbott teaches a medium comprising an opaque absorbing layer (12) secured to a solid material carrier (22, or the combination of 20 and 22), which Mabbott teaches is an oil painting, containing hidden visual elements under the absorbing layer (Figs. 7, 8; par. 40, 19, 47, 48). As oil is applied to the absorbing layer, the visual elements are gradually revealed until they become visible (par. 47).
As no actual requirements about the composition or structure of the “solid material carrier” are claimed other than it contains visual elements, the combination of Mabbott’s layers 14, 18, 20, and 22 may also be considered to correspond to the recited “solid material carrier containing hidden visual images under the absorbing layer”, that are revealed as claimed.
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 1-3, 7, 8, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Okawa, as evidenced by HiFull.
Regarding claims 1-3, 7, 8, 11, and 12, as discussed above Okawa teaches a medium comprising an opaque absorbing layer including amorphous silica that is expected to behave as instantly disclosed and claimed and, therefore, Okawa’s product is considered herein to meet the limitations of claims 1-3, 7, 8, 11, and 12.
To the extent that Okawa’s lack of an explicit teaching of his opaque layer absorbing oil and revealing visual elements is considered a difference from the current invention, it is noted that in addition to the exemplified coating, Okawa also teaches that his coating may be composed mainly of a white pigment, such as synthetic silica (i.e. “amorphous silica”) and a binder with good transparency (col. 2, ln. 65-col. 3, ln. 10). Accordingly, it would have been obvious to one ordinary skill in the art to configure Okawa’s porous opaque coating to only comprise synthetic silica as the white pigment Okawa explicitly teaches that synthetic silica is an appropriate white pigment for his product. Therefore, Okawa renders obvious an opaque, absorbing layer that is made up of synthetic amorphous silica, which becomes transparent upon absorbing oil (as evidenced by the instant disclosure and discussed above), and a transparent binder. As the instant disclosure teaches that an opaque coating comprising the amorphous silica behaves as claimed, the product rendered obvious by Okawa is expected to do the same.
Claims 2, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Mabbott.
Regarding claim 2, the teachings of Mabbott differ from the current invention in that he does not explicitly teach a clear film secured between the absorbing layer and the solid material carrier. However, Mabbott’s medium does comprise an adhesive layer (18) positioned between the absorbing layer (12) and the solid material carrier (22, or a combination of 20 and 22) and, as noted above, layer 22 is an oil painting (par. 22, 44; Fig. 7). One of ordinary skill in the art would understand that the oil painting would not be visible after the absorbing layer was made transparent if the adhesive layer was not clear. Accordingly, it would have been obvious to one of ordinary skill in the art to configure the adhesive layer to be a clear film in order to allow the layer(s) beneath it, including the oil painting, to be visible.
Regarding claims 5 and 6, Mabbott’s medium further comprises a printed inkjet image (14), which comprises/is a visual element, applied to the absorbing layer (par. 47; Figs. 7, 8). Given that the image (14) is printed above the oil painting layer (22), the image necessarily selectively blocks the revealing of at least some of the oil painting layer (22) and its “visual elements’” and makes only selective areas of the oil painting layer and its visual elements visible (par. 47; Fig. 7).
Claims 1-3, 5-8, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Netsch (US Pat. No. 6,364,993).
Regarding claims 1, 2, and 8, Netsch teaches a medium comprising an opaque layer (10, i.e. "opaque absorbing layer") secured to a solid material carrier (16) containing hidden graphical visual elements (undepicted/unlabeled) under the absorbing material, with a clear film (14) secured between the absorbing layer and material carrier (Figs 1-6; Abstract; col. 3, ln. 14-40). Netsch's opaque layer qualifies as an "absorbing layer" because, at very least, it is capable of absorbing heat.
Netsch teaches that the hidden visual elements under the absorbing material become visible and may be clearly seen when the sheet is wetted with water (Abstract; col. 4, ln. 37-45). Although Netsch does not explicitly teach that the hidden visual elements are "gradually revealed" with the application of a liquid, the limitation is, at least in part, a statement of intended use regarding how liquid is applied to the medium. As water is applied to the outer surface of the opaque absorbing material layer, the layer necessarily becomes more transparent as it becomes more wetted (i.e. as the water penetrates more deeply into the layer). As such, the absorbing layer's transparency depends upon how far into it the water has traveled, which is a gradual process because the layer cannot be instantaneously wetted. Therefore, the hidden elements are gradually revealed when water is applied and travels further into the absorbing coating. Additionally, if the water is applied in a gradual manner by a user, e.g. by gradually applying water from left to right, then the hidden elements are also necessarily revealed in a gradual manner. As such, Netsch's product, functions and is capable of being used as claimed when water is absorbed.
The teachings of Netsch differ from the current invention in that his product is not taught to behave as claimed when oil is absorbed. However, as noted above, Netsch does teach that his opaque layer should become transparent as it is wetted with water to reveal a hidden image. Mabbott teaches a similar product that includes an opaque layer that reveals a hidden underlying image when it is wetted, but teaches that a microporous formulation called PrintRite DP 338 is preferred as the material for the opaque coating layer (par. 40). As oil is applied to Mabbott’s opaque absorbing layer, underlying visual elements are gradually revealed until they become visible (par. 47). Mabbott’s coating material is beneficial because it can be applied simply with inkjet printing, is capable of receiving inkjet images, and can be “painted” over with brushes loaded with a liquid—thereby demonstrating that the formed coating has mechanical integrity (par. 41, 47). Mabbott also teaches that the coating may be used for the repeatable emulation of oil paintings using artistic endeavor, thereby enabling anyone with little or no skill to achieve artistic results both consistently and reliably (par. 2, 6). Therefore, it would have been obvious to one of ordinary skill in the art to utilize PrintRite DP 338 as the opaque absorbing layer on Netsch’s product because Mabbott teaches that the coating material is preferred for such image-revealing products, because the coating may be applied simply using inkjet printing, can further receive inkjet images, and is mechanically robust, and in order to permit Netsch’s product to be used with oil as the absorbed, image-revealing liquid, thereby allowing the product to be used for the repeatable emulation of oil paintings using artistic endeavor, while enabling anyone with little or no skill to achieve artistic results both consistently and reliably. As such, the product of Netsch and Mabbott behaves as claimed and meets the claim requirements.
Regarding claim 3, Netsch's solid material carrier includes a base layer (18) onto which a colored image is printed in advance of making the laminated product (col. 3, ln. 14-25). After the image is formed, the printed base layer is attached to the clear substrate with an adhesive (col. 3, ln. 30-33). As such, Netsch's product includes an adhesive layer secured between the clear film and the solid material carrier.
Regarding claims 5 and 6, Netsch teaches that the absorbing layer may contain printed indicia, lines, or images (i.e. "printed areas" or "visual elements") that are visible without wetting and that such indicia, lines, or images may be enhanced by the underlying hidden color or images that are present in/on the solid material carrier (col. 4, ln. 50-55). As shown in Figures 4 and 5 and discussed by Netsch, the printed image on the opaque layer (66) is overlaid with the hidden images (62, 64). Therefore, the Netsch's absorbing layer comprises visible elements that at least partially obscure (e.g. even if only in intensity of colors) the underlying visual elements (i.e. "the absorbing layer further comprises printed areas/visual elements that block revealing of underlying visual elements and make only selected areas of the underlying visual elements visible").
Even if Netsch's lack of an explicit teaching that the elements on his absorbing layer obscure/cover the elements on/in his solid material carrier is considered a difference from the current invention, it is noted that the visual elements that are present on the absorbing layer and the visual elements that are present in/on the solid material carrier layer in Netsch's product are clearly ornamental in nature and achieve a desired decorative effect (see, for example, Figures 4 and 5). As such, it would have been obvious to one of ordinary skill in the art to fashion the visual elements on the absorbing layer in Netsch's product to have any arrangement or positioning, including being arranged such that the visual elements on the absorbing layer block the revealing of or make visible only some of the visual elements on/in the solid material carrier, according to the desired ornamental/decorative effect that was intended to be achieved. Additionally, as the requirement that the visual elements on the absorbing layer are arranged such that they block some visual elements from visibility and/or only allow some underlying visual to be reveal is one of ornamentation only, the requirement is a prima facie obvious aesthetic design choice that does not distinguish the claimed invention over the prior art. See MPEP 2144.04.
As noted above, visual elements that are taught to be covered or obscured with other elements are considered to be "not visible". Further, the claim requirements that the printed areas/visual elements of the absorbing layer are "designed to selectively block revealing" or "designed to make only selective areas…visible" do not distinguish the claimed invention over the prior art because there is no specific difference in structure between printed areas/visual elements that were "designed to" do the recited tasks in a "selective" manner versus printed areas/visual elements that accomplish the tasks without having been "designed" to "selectively" do so. Therefore, Netsch's product including printed areas/visual elements on its absorbing layer that obscure the underlying elements on the solid material carrier meet the requirements of claims 5 and 6.
Regarding claim 7, as shown in Figures 4 and 5, multiple, different regions of ink (62, 66), are positioned on/at the top of solid material carrier (Figs. 4, 5). Therefore, multiple, different regions are positioned between the solid material carrier and the clear film in Netsch's product. As no particular features are claimed or defined that distinguish a "visual element" from an "ink layer" from "marking materials", some of the regions of ink (62, 66) may be considered "visual elements", some of the regions of ink may be considered "ink layers", and some of the regions of ink may be considered "marking materials". As such, Netsch's product comprises "visual elements", as recited in claim 1, and an "ink layer" and "marking materials" between the clear film and solid material carrier, as recited in claim 7.
Regarding claim 11, as no particular texture is claimed, a solid material with any texture may be considered to meet the requirement that "the solid material has a texture". Netsch's solid material carrier layer has an upper surface and, therefore, necessarily has a texture. Figure 2 shows that the layer (16) has a smooth texture.
Regarding claim 12, as shown in Figures 2, 4, and 5, Netsch's solid material carrier (16) has a length, width, and thickness and, therefore, is three-dimensional (Figs. 2, 4, 5; note: Figs. 4 and 5 demonstrate that the layer is planar and, therefore, has a length and width in addition to having a thickness).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Netsch and Mabbott, as applied to claims 1 and 2, and further in view of Makar (US Pat. No. 5,891,520).
Regarding claims 3 and 4, the teachings of Netsch differ from the current invention in that he does not disclose a medium that includes an adhesive layer secured between the clear film and the solid material layer, wherein the visual elements comprise an ink layer that is secured between the clear film and an adhesive or adhesive promoting layer. However, Netsch does teach that his product can include a variety of different substrate types, such as glass and ceramic (col. 3, ln. 14-18).
Makar further teaches decorating glass or ceramic articles and discloses applying a silane adhesion promoter (i.e. thereby forming an "adhesive layer" or "adhesion promotion layer") to the articles prior to applying non-ceramic screen inks, such as non-heavy metal colorants including titanium oxide and organic dyes dispersed in an organic carrier (col. 4, ln. 13-21; col. 4, ln. 46-51). Makar's method is advantageous because it eliminates the need for ceramic inks, thereby also avoiding high-temperature treatments and eliminating the environmental and health risks associated with exposure to heavy-metal inorganic pigments (col. 21-31). As such, it would have been obvious to one of ordinary skill in the art to make Netsch's product discussed above with and/or to include a glass or ceramic substrate as or as part of the solid material carrier and to coat the substrate with a silane adhesion promoter and any of the common non-ceramic inks discussed by Makar, thereby creating an "adhesive layer" or "adhesive/adhesive promotion layer" secured between the clear absorbing film and the solid material, wherein the an ink layer is secured between the clear film and the adhesive/adhesion promotion layer, because Netsch explicitly teaches that glass and ceramic substrates are appropriate for his product and because Makar teaches that doing so advantageously allows glass and ceramics to be decorated with colored inks while avoiding high temperature treatments and risks associated with exposure to heavy-metal inorganic pigments. As noted above, an "adhesion/adhesion promotion layer" is considered herein to qualify as an "adhesive layer" and vice versa.
Response to Arguments
Applicant's arguments filed September 26, 2025 have been fully considered but they are not persuasive.
Applicant has argued that the amendment to claim 4 makes the claim definite under 35 U.S.C. 112(b). However, the claim remains indefinite for the reasons discussed above.
Applicant has further argued that the claimed invention is distinguished over Okawa and Netsch because neither discloses that their product reveals visual elements with applied oil. However, as discussed above, Okawa teaches and renders obvious an absorbing layer comprising a transparent binder and amorphous silica. As the instant disclosure indicates that amorphous silica-containing coatings behave as claimed, Okawa’s is expected to do the same. Additionally, as also discussed above, it would have been obvious in view of the teachings of Mabbott to configure Netsch’s product to include an absorbing layer that behaves as claimed.
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 JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784