DETAILED ACTION
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 .
Claim Objections
Claim 11 objected to because of the following informalities: line 1 recites “the adhesive”, but this should be changed to “the adhesive layer” in order to be consistent with the independent claim. Appropriate correction is required.
Claim 20 objected to because of the following informalities: in line 2, “the same” should be replaced with “the three-dimensional structure”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6, 12, and 18 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites “are applied in a different order” in lines 1-2, which is not defined because the parent claim does not specify an order. If applicant amends claim 1 as to require a particular order, this would become indefinite under U.S.C. 112(d) as failing to contain all the limitations from which the claim depends.
Claim 12 recites the limitation "the PSA" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites “type” in line 2. The addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parteCopenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). Likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey. The interpretation was made more difficult by the fact that the zeolites defined in the dependent claims were not within the genus of the type of zeolites defined in the independent claim. Ex parteAttig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986).
Regarding claim 18, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim 4 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. The claim cites a different process than claim 1. The claim is directed to steps of “three-dimensional forming” and “the 3D structure is revealed”, which are not steps recited in the parent claim. 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 § 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.
Claim(s) 1-9 and 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHATWIN (US 5,413,839) in view of HILLEREAU (FR 2,293,188; citations to translation provided).
Regarding claims 1 and 5, CHATWIN teaches forming a 3D shaping layer 2 on a reusable support 1, applying a texturing layer 4 and a decorative layer 5, applying the layers to a material to be decorated 9, and removing the support without destroying the support to reveal a 3D texture without preformed polymer films (figs. 1 and 3; col. 6, lines 7-43). CHATWIN does not teach creating the shaping layer by inkjet printing. HILLEREAU teaches producing laminate transfer layers via inkjet printing (p.2, lines 61-64), wherein it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize inkjet printing to produce the shaping layer of CHATWIN in order to rapidly create differently shaped shaping layers without requiring a new embossing plate each time.
Regarding claims 2 and 6, CHATWIN teaches removing both the support and shaping layer (col. 6, lines 49-54), where it would have been obvious to one of ordinary skill in the art at the time of the invention to peel the two simultaneously, or separately, because changing the order of process steps has been held per se obvious (MPEP 2144.04), and there would have been a reasonable expectation of producing the same textured product (MPEP 2141; KSR).
Regarding claim 3, CHATWIN teaches applying a release layer, which can be construed as a temporary support, to the support in order to increase the releasability of the transfer surface (col. 3, lines 40-48).
Regarding claim 4, CHATWIN teaches inkjet printing the structure, which is equivalent to applying liquid and liquid coating, where a UV curable material is utilized (col. 4, lines 20-25 and 46-50).
Regarding claim 7, it would have been obvious to one of ordinary skill in the art at the time of the invention to duplicate application of layers because duplication of process steps has been held per se obvious.
Regarding claim 8, CHATWIN teaches radiation curable materials (col. 4, lines 20-25).
Regarding claim 9, in order to form a laminate, each layer must inherently comprise some degree of adhesive properties.
Regarding claim 11, CHATWIN teaches using a PSA (col. 2, lines 28-35).
Regarding claim 12, CHATWIN teaches curable material, but not a dual-cure type. However, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a common dual-cure adhesive as a UV curable adhesive of CHATWIN.
Regarding clam 13, it would have been obvious to one of ordinary skill in the art at the time of the invention to apply duplicate ink layers because duplicating process steps has been held per se obvious (MPEP 2144.04).
Regarding claims 14-15, the claims do not require utilizing the functional layer.
Regarding claim 16, it is inherent that some degree of reaction will occur between the layers during UV curing of the adhesive.
Regarding claim 17, it would have been obvious to one of ordinary skill in the art at the time of the invention to apply a layer before applying the transferrable decoration because re-arranging process steps has been held per se obvious, and there would have been a reasonable expectation of producing the same laminate (MPEP 2141).
Regarding claim 18, CHATWIN teaches applying the transfer to a substrate surface, wherein a surface is inherently the same as plural contiguous planes.
Regarding claim 19, CHATWIN teaches the texturing layer remains in the shape of the 3D structure after applying the transfer (fig. 3).
Regarding claim 20, CHATWIN teaches the texturing layer is a negative of the shaping layer after the shaping layer is removed (figs. 1 and 3).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over the references as combined as applied to claim 1 above, and further in view of NAKANE et al. (US 2005/0255259).
Regarding claim 10, the references as combined do not teach including anti-abrasive particles. NAKANE teaches producing another transfer laminate and transferring, wherein the transferable layer comprises anti-abrasive particles (para. 217), wherein it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize such particles in the texturing layer of the references as combined in order to prevent abrasion to the delaminate during use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nickolas R Harm whose telephone number is (571)270-7605. The examiner can normally be reached 10:00-6:00.
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, Phillip Tucker can be reached at 571-272-1095. 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.
/NICKOLAS R HARM/Examiner, Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745