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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/15/25 has been entered.
Claims 1, 3, 6-7, and 11-16 are pending examination, claims 8-10 are withdrawn, claims 2, and 4-5 canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 requires “wherein the digital printing facility is also used to print the printing ink onto the base paper”, and claim 15 requires: “wherein the ink and the primer are printed by the digital printing facility”; however, claim 1 now already requires that “printing at least one printing ink onto the surface of the printed base paper by the digital printing facility” and “wherein the primer is only printed onto the surface of the base paper at points using the digital printing facility wherein the printing ink is also applied”. The claim 11 and 15 limitations would thus fail to further limit the subject matter of claim 1 from which they each depend. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 3, 6, 11-13, and 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moriyama et al (US 2002/0140790; hereafter Moriyama).
Claim 1, 11, 15: Moriyama teaches a method for producing a decorative paper (paper possessing printed high quality image(s) / pictures) by a digital printing (inkjet printing) facility, (See, for example, abstract, Figures, [0001-0004]),
the method comprising:
a. providing at least one base paper (paper) (See, for example, [0004], figures),
b. printing a primer (layer of print quality improver, P) so that a printed base paper is obtained (see, for example, Fig 14, abstract, [0028], [0105], [0122], [0125]])
c. printing at least one printing ink (such as black, or colored) onto the surface of the printed base paper by a digital printing (inkjet) facility (See, for example, abstract, Fig 14, [0028], [0105], [0122], [0125]).
wherein neither the primer nor the printing ink is printed onto the surface of the base paper at at least one point (see, for example, abstract, Fig 14, [0037], [0116], [0122], [0125]).
Wherein the primer is only printed onto the surface of the base paper at points using the digital printing facility where the printing ink is also applied (See, for example, Fig 14, [0116], [0122], [0125]).
And further comprising accessing a same digital template to generate control signals from an electronic control unit to print both the primer onto the surface of the base paper and to print the printing ink onto the surface of the printed base paper (see, for example, Fig 4, 12-15, [0116], [0122], [0125]).
Claim 3: Moriyama further teaches wherein the printing ink is only printed onto the surface of the printed base paper at points where the primer has been printed beforehand (see, for example, Fig 14, [0116], [0122], [0125]).
Claims 6, 12, and 13: Moriyama further teaches the primer is printed onto at most 55%, further 45%, further 35%, of the surface of the base paper (see, for example, Fig 14, wherein the depicted embodiment appears to possess an area of primer (3) coverage on the order of ~12.3% of the surface of the base paper (calculation derived from dividing areas from screen measurement of 3*length*width of an “I” (1.1cm high, 0.6 cm wide) (though not required, for simplicity, this calculation includes the cut-out areas of the “I”) by the area of paper at 14(f) (~7 cm x ~2.3 cm)).
Claim 16: Moriyama further teaches wherein the digital printing facility comprises multiple printheads arranged on behind another in the direction of printing and wherein the primer is printed on the surface of the base paper using a first printing head of the multiple printing heads of the digital printing facility and the printing ink is printed on the base paper using at least a second printing head of the multiple printing heads of the digital printing facility (See, for example, [0401-404], wherein large scale full-line type printing is taught, including serial passage of the substrate beneath fixed printing heads spanning the entire width of the substrate, wherein P and each ink are provided their own head, and as described above as P is deposited before the other ink(s) it would intrinsically be positioned upstream in such a serial process).
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.
Claim(s) 6, 12- 13 and 16 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Moriyama.
Claims 6, 12, and 13: Moriyama further teaches the primer is printed onto at most 55%, further 45%, further 35%, of the surface of the base paper (see, for example, Fig 14, wherein the depicted embodiment appears to possess an area of primer (3) coverage on the order of ~12.3% of the surface of the base paper (calculation derived from dividing areas from screen measurement of 3*length*width of an “I” (1.1cm high, 0.6 cm wide) (though not required, for simplicity, this calculation includes the cut-out areas of the “I”) by the area of paper at 14(f) (~7 cm x ~2.3 cm)). If the claimed matter is not already anticipated by the depiction of Fig 14 of Moriyama; the figure at least suggests that the primer is used on a minor portion of the paper, and further Moriyama explicitly teaches application of the primer should be formed only in register with the intended overlying ink pattern to avoid pattern distortion / feathering, and reduce wasted primer and costs associated therewith (See, for example, [0037], [0120]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have printed the primer onto at most 55%, further 45%, further 35%, of the surface of the base paper since Moriyama suggests such limited application, and since the subsequently applied ink layer (which would dictate the area to which the primer should be applied) serves an ornamentation function wherein matters related to the choice of ornamentation producing no mechanical effect or advantage considered to constitute the invention are considered obvious and do not impart patentability, In re Seid 73 USPQ 431.
Claim 16: Moriyama teaches the method of claim 1 above, and further teaches wherein the digital printing facility comprises multiple printheads arranged one behind another in the direction of printing and wherein the primer is printed on the surface of the base paper using a first printing head of the multiple printing heads of the digital printing facility and the printing ink is printed on the base paper using at least a second printing head of the multiple printing heads of the digital printing facility (See, for example, [0401-404], wherein large scale full-line type printing is taught, including serial passage of the substrate beneath fixed printing heads spanning the entire width of the substrate, wherein P and each ink are provided their own head, and as described above as P is deposited before the other ink(s) it would intrinsically be positioned upstream in such a serial process). Although no singular exemplary collective embodiment is discussed in detail, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated have incorporated wherein the digital printing facility comprises multiple printing heads arranged one behind the another in the direction of printing wherein the primer is printed on the surface of the base paper using a first printing head of the multiple printing heads of the digital printing facility and the printing ink is printed on the base paper using at least a second printing head of the multiple printing heads of the digital printing facility as such a orientation would predictably lend to the full width serial printing of Moriyama since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 950), and since a reasonable expectation of success exists from choosing the specific taught species from explicitly taught lists. Further when the species is clearly named, the species claim is anticipated (rendered obvious) no matter how many other species are additionally named. Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990).
Claim(s) 1, 3, 6- 7, and 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa (JP 2001071446; citations directed to machine translation provided previously, hereafter Ogawa) in view of Moriyama.
Claims 1, 11, and 15: Ogawa teaches a method for producing a decorative paper (decorative sheet from paper) by a digital printing (inkjet printing) facility, (See, for example, abstract, Fig 1, Fig 4, Fig 7-8),
the method comprising:
a. providing at least one base paper (paper 5) (See, for example, Fig 1, bottom of pg 3),
b. printing a primer (layer 10, which prevents overlying inkjet layer 20 from blurring and seeping), onto a surface of the base paper so that a printed base paper is obtained (see, for example, Fig 1, abstract, [0005-0007])
c. printing at least one printing ink (layer 20) onto the surface of the printed base paper by a digital printing (inkjet) facility (See, for example, abstract, Fig 1, [0005-0010]).
wherein neither the primer nor the printing ink is printed onto the surface of the base paper at at least one point (see, for example, abstract, [0003-7] Fig 1, wherein the both primer layer 10 and ink layer 20 are applied per a particular pattern and only to particular areas of the surface).
Ogawa teaches the method above and further teaches wherein the primer layer (10) can be deposited by a conventional printing method ( See, for example, [0005-8]) but it does not explicitly teach using the digital printing facility (inkjet printer). Moriyama teaches a method for producing a decorative paper (paper possessing printed high quality image(s) / pictures) by a digital printing (inkjet printing) facility, (See, for example, abstract, Figures, [0001-0004]). Moriyama further teaches application of a priming layer (P) to similarly combat bleeding / feathering of applied ink layers thereon, and further emphasizes wherein the primer should be formed only in register with the intended overlying ink pattern to prevent pattern distortion / feathering, while further reducing wasted primer and costs associated therewith (See, for example, [0037], [0120]). Moriyama teaches wherein synchronized ink jet printing of primer and ink enables such cost and quality savings by targeted application with enhanced reliability (See, for example, [0016-26], and rejection of claim 1 over Moriyama above). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated the synchronous ink jet printing of primer and ink using a shared ink jet printing facility as it would predictably enable cost saving and image quality improvements with enhanced reliability.
By combination with Moriyama, Moriyama further teaches wherein neither the primer nor the printing ink is printed onto the surface of the base paper at at least one point (see, for example, abstract, Fig 14, [0037], [0116], [0122], [0125]). Wherein the primer is only printed onto the surface of the base paper at points using the digital printing facility where the printing ink is also applied (See, for example, Fig 14, [0116], [0122], [0125] of Moriyama). And further accessing a same digital template to generate control signals from an electronic control unit to print both the primer onto the surface of the base paper and to print the printing ink onto the surface of the printed base paper (see, for example, Fig 4, 12-15, [0116], [0122], [0125] or Moriyama).
Claim 3: Ogawa in view of Moriyama teach the method of claim 1 (above) and Moriyama further teaches wherein the printing ink is only printed onto the surface of the printed base paper at points where the primer has been printed beforehand (see, for example, Fig 14, [0116], [0122], [0125]).
Claims 6, 12, and 13: Ogawa in view of Moriyama teach the method of claim 1 above. Ogawa further teaches wherein the application of primer and ink layers is intended to provide an aesthetic décor, further such as an inlaid pattern such as imitating wood (See, for example, [0001-4], Fig 1) Ogawa teaches wherein primer (lower printing layer) may be formed only partially, and serves as a means to prevent overlying ink jet layer from blurring / seeping (See, for example, [0005-0007], Fig 1). Further by combination with Moriyama, the area of primer coverage would further correspond to the area of the overlying printed aesthetic. Ogawa does not explicitly quantify “partially”, nor does it quantify the area of the printing ink, per Moriyama, Fig 14, it demonstrates the capability of the method to readily achieve coverages on the order of ~12.3% (refer to rejection of claim 6 over Moriyama alone, above). Although Ogawa does not explicitly teach printing the primer / ink onto at most 55%, further 45%, further 35%, as claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have printed the primer onto at most 55%, further 45%, further 35%, of the surface of the base paper since the general teaching of “partially” encompasses any sub portion less than the whole, thus overlapping the claimed range, (in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); and / or the amount of coverage directly influences the aesthetic produced, thus “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and since matters related to the choice of ornamentation producing no mechanical effect or advantage considered to constitute the invention are considered obvious and do not impart patentability, In re Seid 73 USPQ 431.
Claim 7: Ogawa further teaches d. impregnating the base paper onto which the printing ink has been printed with at least one synthetic resin (See, for example, abstract, Fig 1, Fig 7-8, pg 4 paragraph 6-8 claims)
Claim 14: Ogawa further teaches wherein the at least one synthetic resin comprises a melamine resin (See, for example, top of pg 4, top of pg 10).
Claim 16: Ogawa in view of Moriyama teach the method of claim 1 above, and Moriyama further teaches wherein the digital printing facility comprises multiple printheads arranged one behind another in the direction of printing and wherein the primer is printed on the surface of the base paper using a first printing head of the multiple printing heads of the digital printing facility and the printing ink is printed on the base paper using at least a second printing head of the multiple printing heads of the digital printing facility (See, for example, [0401-404], wherein large scale full-line type printing is taught, including serial passage of the substrate beneath fixed printing heads spanning the entire width of the substrate, wherein P and each ink are provided their own head, and as described above as P is deposited before the other ink(s) it would intrinsically be positioned upstream in such a serial process). Although no singular exemplary collective embodiment is discussed in detail, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated have incorporated wherein the digital printing facility comprises multiple printing heads arranged one behind the another in the direction of printing wherein the primer is printed on the surface of the base paper using a first printing head of the multiple printing heads of the digital printing facility and the printing ink is printed on the base paper using at least a second printing head of the multiple printing heads of the digital printing facility as such a orientation would predictably lend to the full width serial printing of Moriyama since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 950), and since a reasonable expectation of success exists from choosing the specific taught species from explicitly taught lists. Further when the species is clearly named, the species claim is anticipated (rendered obvious) no matter how many other species are additionally named. Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990).
Response to Arguments
Applicant’s amendments to claims 3 have been fully considered and are persuasive with respect to the 35 USC 112 d rejection of claim 3; therefore they have been withdrawn.
Upon consideration of Applicant’s amendments and the present scope of all the claims the Examiner has applied 35 USC 112 d rejections over claims 11 and 15, as described in detail above.
Applicant’s amendments to claim 1, filed 10/15/25, have been fully considered and persuasive with respect to the 35 USC 103 rejections of the claims over Ogawa in view of Loccufier and Schmid and Hirasawa in view of Loccufier. Therefore, these rejections has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Moriyama (alone) and Ogawa in view of Moriyama.
Conclusion
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/NATHAN H EMPIE/ Primary Examiner, Art Unit 1712