DETAILED ACTION
Response to Amendment
Applicant's amendment filed 12/19/2025 has been entered. Currently, claims 12-14, 16-19 and 23-36 are pending and claims 1-11, 15 and 20-22 are canceled.
Claim Objections
Claims 12, 23, 26 and 34 are objected to because of the following informalities:
In claim 12 on line 6, the phrase “the lower layer coupled with the core” is objected to grammatically as this is merely restating the step of “coupling a lower layer” on line 5 of the claim. The objection can be overcome by deleting the phrase, which is how the claim will be interpreted.
In claim 23 on line 6, the phrase “the lower layer coupled with the core” is objected to grammatically as this is merely restating the step of “coupling a lower layer” on line 5 of the claim. The objection can be overcome by deleting the phrase, which is how the claim will be interpreted.
In claim 26 on line 2, the phrase “the first resin of includes” is objected to grammatically. The objection can be overcome by changing the phrase to “the first resin includes”, which is how the claim will be interpreted.
In claim 34, the phrase “between 40% and 70% of a total resin composition of the first resin” is objected to grammatically. The objection can be overcome by changing the phrase to “between 40% and 70% of the first resin”, which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 29-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 29, 31 and 32, the Examiner does not find support for “first particles” in the specification as originally filed. There is support for high-density particles or inorganic particles, but this does not provide support for the generic recitation of “first particles” as claimed.
In claim 31, the Examiner does not find support for the limitations “so as to increase a weight of the at least one card relative to each of the at least one card being formed without the first particles being spaced apart within the resin-impregnated paper” in the specification as originally filed. The specification states that the particles “increase the weight of the card…without having to include metal layers within the sheet assembly or the cards” at least at [0035] but this does not support the relative weight difference being compared to cards being formed without particles as claimed.
Claim Rejections - 35 USC § 102
Claims 12, 16-18 and 29-31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (WO 2011/096614) machine translation included.
The Examiner is interpreting the term “biobased resin” as meaning “a polymer or plastic that is made wholly or in part from natural, renewable resources instead of traditional petroleum-based products”.
With regard to claims 12, 16 and 29, Kim teaches a method of making the card of Figure 2 [0040].
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The method includes impregnating a paper sheet with thermosetting resins for both the base sheet 10, which reads on applicants’ core, and the protective sheets 30 on either side of the base sheet 10, which read on applicants’ upper layer and lower layer [0066] and [0070]. The thermosetting resin can be a poly lactic acid natural plant-derived synthetic resin, which reads on applicants’ biobased resin [0053]. The paper sheets may include illite, which is a clay particle and reads on applicants’ first/inorganic particle including a metal oxide pigment [0047]-[0050]. The structure also includes transparent sheets 40, which read on applicants’ upper and lower clear overlay layers [0066]. These layers may be made from the same resin-impregnated paper [0042] and [0070]. The figure shows that the layers continuously extend from the two pairs of opposite edges; further, there is no conductive material added to the base sheet 10 and the protective sheets 30, which means the card will inherently not conduct electricity as in claim 16.
The layers are then sequentially laminated to both sides of the base sheet, which reads on applicants’ coupling of the upper and lower layers of claim 12 and the coupling of the upper and lower layers of claim 29 [0072]. The laminated sheets are then heated and pressed to combine them, which reads on applicants’ bonding step of claim 29 [0072].
With specific regard to the limitations in claim 30, the Examiner notes that the limitations concerning what the laminate can form, e.g. be cut into a card, are intended use limitations are not dispositive of patentability; furthermore, the rough edges of the card could be cut off, which means it meets these functional/intended use limitations.
With regard to claim 31, the paper sheets may include illite, which is a clay particle and reads on applicants’ first particle spaced apart within the resin-impregnated paper and the inorganic particles including a metal oxide pigment [0047]-[0050]. Clay is not conductive, which means the resin impregnated paper of Kim will inherently prevent formation of a continuous conductive path and will inherently increase the weight relative to the card formed without the clay particle.
With regard to claims 17, the base sheet 10 can be formed by laminated multiple sheets, which reads on applicants’ upper core layer and lower core layer [0056]. An outer surface of the base sheet can have holographic printing or gold foil, which reads on applicants’ holographic feature or reflective feature [0014].
With regard to claim 18, in an alternative reading of Figure 2, the top-most transparent sheet 40 reads on applicants’ upper layer, the protective sheet 30 above the RFID tag 20 that has an antenna loop reads on applicants’ upper core layer and inlay, and the base sheet 10 reads on applicants’ lower core layer. An outer surface of the protective sheet can also have holographic printing or gold foil, which reads on applicants’ holographic feature or reflective feature [0014].
Claim Rejections - 35 USC § 103
Claims 13, 14, 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (WO 2011/096614).
With regard to claims 13 and 33, Kim teaches all of the limitations of claims 12 and 29 above. He also teaches that the resin in the impregnated paper can include more than one resin, including the poly lactic acid natural plant-derived synthetic resin and a phenol resin, which reads on a petroleum-based resin [0053]; however, Kim does not specifically teach an example with a combination of resins.
It would have been obvious to one having ordinary skill in the art to have combined multiple resins together for impregnating the paper layers in the card of Kim, including the PLA and phenol resins. It is prima facie obvious to combine equivalent known for the same purposes to form a third composition useful for the same purpose. Also, the results of such a combination would have been predictable and each of the elements would have performed the same in combination as they had separately.
With regard to claims 14 and 34, it would have been obvious to have combined the PLA and phenol resins in any amount, including having the PLA be from 40% to 70% of the resin composition, such that the card had the required property of being environmentally friendly while also having the desired amount of waterproofness.
Claims 12, 23-31 and 33-36 are rejected under 35 U.S.C. 103 as being unpatentable over Riebel et al. (US 2012/0015176).
Please note that claim 12 is rejected as new claim 36 includes all of the limitations of claim 12.
With regard to claims 12, 23, 26, 29, 35 and 36, Riebel et al. teach a method of making a biolaminate composite assembly 100 that includes forming a non-plastic rigid substrate 106 that reads on forming a core and then laminating with a biolaminate layer 102 onto both sides of the substrate, which reads on coupling an upper and lower layer to form a sheet assembly and the bonding of the three layers together to form a multi-layer sheet assembly [0067], [0232] and Figures 1 and 2. The biolaminate layers can use impregnated cellulosic papers that may be formed by saturating the cellulosic papers with polylactic acid biopolymer, which reads on applicants’ at least one of the upper and lower layers being formed from paper impregnated with a first resin [0087] and [0274]. The polylactic acid of Riebel et al. is a thermoplastic [0048]. A clear polylactic acid layer can be fused onto the biolaminate layers, which reads on applicants’ providing an upper clear overlay layer and the lower clear overlay layer formed of a biobased polymer [0090]. Additives such as colorant systems can be in the biolaminate layers, wherein the colorant can be metal oxide pigments [0075] and [0130]. The biolaminate composite assembly can be used for flooring [0328]; however, they do not specifically teach a laminate having all of these materials.
It would have been obvious to one having ordinary skill in the art to have formed a biolaminate composite assembly having the structure of Fig 1 with the layer order of a clear polylactic layer/PLA and colorant impregnated paper layer/non-plastic rigid substrate/PLA and colorant impregnated paper layer/clear polylactic layer as these are specific materials taught in the reference for this structure. There would have been a reasonable expectation of success in forming this biolaminate composite assembly as these materials are known to produce the product and the rationale to use a colorant is to adapt the product for the desired end use by customers.
With specific regard to claims 12 and 23, the limitations that the upper layer is configured to receive a first printing of first indicia for one or more cards and the lower layer is configured to receive a second printing are intended use limitations that are not dispositive of patentability.
With specific regard to claims 29, in an alternative reading, the layer order of the clear polylactic layer/PLA and colorant impregnated paper layer/non-plastic rigid substrate reads on the upper layer, core layer and lower layer, respectively.
With regard to claims 24, 25, 33 and 34, the additives in the biolaminate layer can also include petrochemical polymers, which reads on applicants’ petroleum-based resin [0082]. These additives can be present at less than about 50% of the film/layer [0082]; however, they do not specifically teach an example having a petrochemical polymer mixed with the polylactic acid resin in one of the biolaminate layers.
It would have been obvious to one having ordinary skill in the art to have combined the petrochemical polymer additive into the PLA and colorant impregnated paper layer as this is expressly suggested in the reference. The results of such a combination would have been predictable; further, each of the elements would have performed the same in combination as they had separately. The rationale to add this material is the impart changes to the functionality and performance of the composite.
It would also have been obvious to have combined the petrochemical polymer additive in an amount of 50% or less of the biolaminate layer and then making the polylactic acid the remainder of the resin of the layer. It would have been obvious to have made the polylactic acid be from 50% to 70% of the resin in the layer as it would be in majority and then have the petrochemical polymer additive be the minority of the resin of the layer to adjust the functionality of the layer.
With regard to claims 27, the limitations of this claim represent a mere duplication of the non-plastic rigid substrate 106 to be two layers. It has been held that "mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
It would have been obvious to one having ordinary skill in the art to have merely duplicated the non-plastic rigid substrate 106 to be a laminate of two layers in order to make the substrate thicker to increase its strength. One of these duplicated layers reads on an upper core layer and the other reads on the lower core layer.
With regard to claim 28, the non-plastic rigid substrate 106 can be made of metal, such as aluminum, which would read on applicants’ reflective feature as the metal would intrinsically be reflective [0047] and [0156].
With specific regard to the limitations in claim 30, the Examiner notes that the limitations concerning what the biolaminate composite assembly can form, e.g. be cut into a card, are intended use limitations are not dispositive of patentability. Additionally, the biolaminate composite assembly would necessarily need to be able to be cut into sizes for the intended uses stated at [0328].
With regard to claim 31, the metal oxide colorants read on applicants’ first particles spaced apart within the resin-impregnated paper [0130]. These oxide particles, including titanium oxide, are not conductive, which means the resin impregnated paper of Riebel et al. will intrinsically prevent formation of a continuous conductive path and will intrinsically increase the weight relative to a card formed without the metal oxide particles.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Riebel et al. (US 2012/0015176) in view of Han et al. (CN 106497469), machine translation included.
Riebel et al. teach all of the limitations of claim 29 above. They also teach that functional additives can be placed into the biolaminate layer [0036] and [0064]; however, they do not teach a functional additive being one of the conductive particles claimed.
Han et al. teach that copper particles can be placed into the impregnation fluids for paper layers of decorative materials to improve the heat transfer efficiency and reducing energy consumption for the curing of the decorative materials [0006], [0009] and [0020]. The metal particles may include copper particles [0012].
Since Riebel et al. and Han et al. are both drawn to impregnation materials for decorative papers for laminates, it would have been obvious to one having ordinary skill in the art to have added in the copper particles of Han et al. as the functional additive of Riebel et al. The rationale to have done so would be to lower energy consumption in the drying and curing of the laminate.
Claims 12, 29-31 and 33-36 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (US 2010/0320030).
Please note that claim 12 is rejected as new claim 36 includes all of the limitations of claim 12.
With regard to claims 12, 29, 35 and 36, Ogawa et al. teach method of making a sound absorbing material that includes impregnating a stretchable paper with a synthetic resin that may be a cellulose acetate resin, which reads on applicants’ biobased resin that is a thermoplastic resin and the method steps of impregnating a paper and forming a core [0036], [0058] and [0059]. A fiber sheet 3 can be laminated to the stretchable paper, which reads on applicants’ coupling an upper layer to the core, and then a felt 7 is laminated to the other surface of the stretchable paper, which reads on applicants’ coupling a lower layer to the core and the bonding of the three layers together to form a multi-layer sheet assembly [0052]. Ogawa et al. also teach that inorganic fillers can be added to the synthetic resin used for the impregnation, such as silica or alumina that read on applicants’ metal oxide pigment [0105]; however, they do not specifically teach an example with these materials.
It would have been obvious to one having ordinary skill in the art to have formed sound absorbing material by impregnating the stretchable paper with a cellulose acetate resin and silica or alumina as these are specific materials taught in the reference for this purpose. There would have been a reasonable expectation of success in forming a sound absorbing materials as these materials are known to produce the product and the rationale to use the filler is to reduce the amount of resin needed for the impregnation process to thereby save money.
With specific regard to claims 12 and 36, the limitations that the upper layer is configured to receive a first printing of first indicia for one or more cards and the lower layer is configured to receive a second printing are intended use limitations that are not dispositive of patentability; further, the fiber sheet and the felt layer of the prior art could intrinsically be printed upon.
With specific regard to the limitations in claim 30, the Examiner notes that the limitations concerning what the sound absorbing material can form, e.g. be cut into a card, are intended use limitations are not dispositive of patentability. Additionally, the sound absorbing materials would necessarily need to be able to be cut into sizes for the intended uses stated at [0001].
With regard to claim 31, the silica and alumina particles reads on applicants’ first particle spaced apart within the resin-impregnated paper [0105]. Silica and alumina are not conductive, which means the resin impregnated paper of Ogawa et al. will intrinsically prevent formation of a continuous conductive path and will intrinsically increase the weight relative to a card formed without the silica and alumina particles.
With regard to claim 33, the Examiner notes the presence of the product-by-process limitations of a “petroleum-based resin”. It has been held that “even 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.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Ogawa et al. teach that the resin in the impregnated paper can include more than one resin, including polyethylene, which reads on the petroleum-based resin as petroleum can be used to make polyethylene [0059] and [0060]; however, Ogawa et al. do not specifically teach an example with a combination of resins.
It would have been obvious to one having ordinary skill in the art to have combined multiple resins together for impregnating the stretchable paper of Ogawa et al., including polyethylene and cellulose acetate. It is prima facie obvious to combine equivalent known for the same purposes to form a third composition useful for the same purpose. Also, the results of such a combination would have been predictable and each of the elements would have performed the same in combination as they had separately.
With regard to claim 34, it would have been obvious to have combined the polyethylene and cellulose acetate resins in any amount, including having the cellulose acetate be from 40% to 70% of the resin composition, such that the sound absorbing material had the proper rigidity as required for the intended use.
Potential Allowable Subject Matter
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art does not teach or suggest the structure of an upper film, a upper biobased film, an upper core layer, an inlay, a lower core layer, a lower biobased film and a lower layer in this order, wherein one of the upper layer, core or lower layer is formed from paper impregnated with a resin that comprises a biobased resin, the upper and lower biobased films are biobased polycarbonate films, the inlay includes an RFID antenna, at least one of the upper core layer or lower core layer incudes a reflective, diffractive, or holographic feature and at least one of the upper and lower biobased films has a metallized, holographic, diffractive, refractive, color shifting or security feature in combination with the rest of the limitations claimed.
The closest prior art to claim 19 is Yokogi et al. (US 2013/0075480); however, there is no rationale save improper hindsight to have combined in the plant-derived polycarbonate sheet of Yokogi et al. into the card of Kim that also has layers with impregnated paper. There would have been no predictability in the combination as there is no guidance on where to put the plant-derived polycarbonate sheet of Yokogi et al. within the card of Kim.
Response to Arguments
Applicant’s arguments, see Remarks, filed 12/19/2025, with respect to the objections to claims 14 and 18, the previous 112(a) rejections, the previous 112(b) rejections and the rejection of claims 23-28 based upon Kim have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
The Examiner notes that applicants have addressed the definitions of “biobased resin” at page 12 of their Remarks. The Examiner notes that he has provided a definition that was read in context of the entire specification and was given the “broadest reasonable interpretation consistent with the specification”, see MPEP 2111. It is clear from [0014] of applicants’ specification that biobased resins and petroleum-based resins are two categories of resins that differ from each other as they are listed as alternatives in this paragraph.
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive.
Applicants argue on page 9 of their Remarks that Kim does not teach of suggest the particles recited in claims 12 or 29.
The Examiner respectfully disagrees and notes that the previous rejection made the factual finding that the clay particles of illite read on applicants’ high-density particles, inorganic particles and metal oxide pigment. The illite material includes metal oxides, i.e. alumino-silicates, and this is why the rejection said it read on the metal oxide pigment claimed. This means that the Examiner has set forth a proper prima facie case that Kim teaches all of the limitations of the claims. Applicants have not pointed out how the Examiner clearly erred in his factual finding, and therefore the Examiner maintains that Kim teaches the limitations claimed.
Applicants argue on page 10 of their Remarks that there is no rationale to have combined the thermoplastic biobased resin and thermoset phenolic resin of Kim as there would be incompatible cure and flow behaviors.
The Examiner respectfully disagrees with applicants’ arguments for at least the reason that the polylactic acid polymer of Kim is a thermoset material and [0053] teaches that “one or more” thermosetting resins can be used. This suggests combining multiple resins, and since both resins are thermosets, there would not be problems of incompatibility as suggested by applicants.
Applicants argue on page 11 of their Remarks that there is no suggestion of selecting a biobased fraction of 40 to 70% as claimed as they do not recognize it as a result-effective variable.
The Examiner respectfully disagrees and notes that MPEP 2144.05 holds that “differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical”. Applicants have not provided evidence in the form of examples commensurate in scope with the claims showing that this range is critical and provides unexpected results. Applicants’ paragraph [0019] does not have examples or unexpected results.
Additionally, MPEP 2144.05 also states that “after KSR, the presence of a known result-effective variable would be one, but not the only motivation for a person of ordinary skill in the art to experiment to reach another workable product or process”. The prior art suggests combining multiple polymers. At this point, it is logical and common sense to experiment with combining these polymers in different ratios, including the percentages claimed. This is a proper motivation to render obvious the claimed invention.
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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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/Gerard Higgins/Primary Examiner, Art Unit 1785