DECORATIVE MATERIAL

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 . Note Applicant’s response filed on 07/21/2026 has been fully considered. Claims 1, 10, 19, 21 and 22 are amended, claims 9 and 18 are canceled, and claims 1-8, 10-17 and 19-22 are pending. Previous claim objection has been withdrawn in view of Applicant’s amendment. Claim Objections Claim16 is objected to because of the following informalities: Claim 16 does not further limit claim 1. See MPEP 37 C.F.R. 1.75(c). Appropriate correction is required. 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 1-8 and 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Harima (JP 2017165077 A) in view of Hikmet et al. (WO 2019/197289 A1) and Higashikawa (US 2020/0087529 A1). Claims 1, 13 and 16: Harima teaches a decorative material 10 comprising a medium coat layer 4, a first printed layer 3, a second printed layer 2 and a base material/substrate sheet 1 in the order thereof (Fig. 1, [¶100] and [¶101]). The medium coat layer 4 meets the claimed surface coating layer, the first printed layer 3 meets the claimed texture region/heaping layer having a plurality of projections {instant claim 16}. Harima teaches the medium coat layer 4 has a thickness of 1-5 µm [¶51]; and the first printed layer 3 has dot patterns ([¶34]-[¶40]) with the height of each dots being 25-34 µm [¶36]. Since the height of the dots (25-34 µm) of Harima is within the range of the height of the claimed projections (10-60 µm), and the thickness of the medium coat layer 4 is much smaller than the height of the dots; the surface of the decorative material of Harima would have function in a similar manner as Applicant’s, (i.e., the dots of Harima would have been felt through the medium coat layer 4). Harima teaches the first printed layer 3 comprises a bright pigment such as a pearl pigment/glitter pigment [¶43] and a binder resin [¶44]. Harima does not teach the bright pigment is flaky. However, Hikmet teaches particles in a decorative light source shielding, wherein the particles are flaky glass particles coated with a metal coating or a metal oxide coating {instant claim 13} (page 16, lines 29-34). Harima and Hikmet are analogous art because they are from the same field of endeavor that is the decorative material art. It would have been obvious to a person of ordinary skill in the art to combine the coated flaky glass particles of Hikmet with the invention of Harima, and the motivation for combining would be to control brightness of the decorative sheet. Harima teaches the base material 1 can be a titanium paper [¶20] but does not teach a metal base material. Higashikawa teaches a decorative material comprising a base material including titanium paper base material and metal based base material (abstract and [0058]). Higashikawa shows that titanium paper base material is an equivalent structure known in the art. Therefore, because these two base materials were art-recognized equivalents before the effective filing date of the invention, one of ordinary skill in the art would have found it obvious to substitute the titanium paper base material for the metal based base material. Harima teaches the binder resin comprises caseins, emulsion resins and/or latex resins, and water-soluble resins [¶46]. The caseins, emulsion resins or latex resins meet the claimed organic filler. With respect to the particle size, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the particle size, and the motivation would be to control the particles packing density or property. A prima facie case of obviousness may be rebutted; however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215. Claim 2: Harima teaches the height of the dots is 25-34 µm ([¶34]-[¶40]). Claim 3: Harima teaches a first dot D1 having a diameter of 150-210 µm [¶35] which overlaps with the claimed diameter of 100-500 µm. Claim 4: Harima teaches occupancy ratio of the glitter pigment is 50-80% [¶39] which overlaps with the claimed 20-70%. Claims 5 and 6: With respect to the claimed D/dave ratio and the claimed shortest distance of adjacent projections, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the D/dave ratio and shortest distance of adjacent projections, and the motivation would be to control the dispersion of the dots of the first printed layer 3. A prima facie case of obviousness may be rebutted; however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215. Claim 7: With respect to the content of the glitter pigment, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the content of the glitter pigment, and the motivation would be to control the shiny effect of the decorative material. A prima facie case of obviousness may be rebutted; however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215. Claims 8 and 14: Harima teaches the first printed layer 3 comprises a first dot D1 and a second dot D2 (¶34]-[¶38]). The area not occupied by the first dots D1 and second dots D2 meets the claimed gap region and another region {instant claim 14}, and there is nothing in Harima that teaches the gap region comprises any dots. Claim 10: With respect to the content of the caseins, emulsion resins or latex resins, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the content of the caseins, emulsion resins or latex resins, and the motivation would be to control viscosity and fluidity. A prima facie case of obviousness may be rebutted; however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215. Claim 11: Harima teaches the bright pigment includes pearl pigment/glitter pigment and metal powder [¶43] but does not teach the metal powder can be used in combination with the glitter pigment. However, it would have been obvious before the effective filing date of the invention to combine separately taught prior art ingredients which perform the same function; it is logical that they would produce the same effect and supplement each other. The metal powder meets the claimed inorganic filler. Claim 12: With respect to the content of the inorganic filler, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the content of the inorganic filler, and the motivation would be to control durability and thermal stability. A prima facie case of obviousness may be rebutted; however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215. Claim 13: Hikmet teaches particles in a decorative light source shielding, wherein the particles are flaky glass particles coated with a metal coating or a metal oxide coating (page 16, lines 29-34 and [¶8] above). Claim 14: Harima teaches the first printed layer 3 comprises a first dot D1 and a second dot D2 (¶34]-[¶38]). The area not occupied by the first dots D1 and second dots D2 meets the claimed gap region and another region, and there is nothing in Harima that teaches the gap region comprises any dots. Claim 15: With respect to the claimed gloss ratio, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in the art would have been motivated to adjust the gloss ratio, and the motivation would be to control shininess. A prima facie case of obviousness may be rebutted; however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 205 USPQ 215. Claim 16: The first printed layer 3 of Harima meets the claimed texture region/heaping layer having a plurality of projections. Claim 17: Harima teaches occupancy ratio of the dots is 50-80% [¶39] which overlaps with the claimed 10-90%. Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Harima (JP 2017165077 A) in view of Hikmet et al. (WO 2019/197289 A1) and Higashikawa (US 2020/0087529 A1). Claims 21: Harima teaches a decorative material 10 comprising a medium coat layer 4, a first printed layer 3, a second printed layer 2 and a base material/substrate sheet 1 in the order thereof (Fig. 1, [¶100] and [¶101]). The medium coat layer 4 meets the claimed surface coating layer, the first printed layer 3 meets the claimed texture region/heaping layer having a plurality of projections. Harima teaches the medium coat layer 4 has a thickness of 1-5 µm [¶51]; and the first printed layer 3 has dot patterns ([¶34]-[¶40]) with the height of each dots being 25-34 µm [¶36]. Since the height of the dots (25-34 µm) of Harima is within the range of the height of the claimed projections (10-60 µm), and the thickness of the medium coat layer 4 is much smaller than the height of the dots; the surface of the decorative material of Harima would have function in a similar manner as Applicant’s, (i.e., the dots of Harima would have been felt through the medium coat layer 4). Harima teaches the first printed layer 3 comprises a bright pigment such as a pearl pigment/glitter pigment [¶43] and a binder resin [¶44]. Harima teaches the first printed layer 3 has dot pattern ([¶34]-[¶40]). Harima teaches the dot pattern is formed by printing [¶33] an ink or a printing ink containing the bright pigment [¶43] and the binder [¶44]; and this teaching corresponds to the claimed resin binder and bright flaky particles are included only in the plurality of projections. Harima teaches occupancy ratio of the dots is 50-80% [¶39] which overlaps with the claimed 10-90%. Harima does not teach the bright pigment is flaky. However, Hikmet teaches particles in a decorative light source shielding, wherein the particles are flaky glass particles coated with a metal coating or a metal oxide coating (page 16, lines 29-34). Harima and Hikmet are analogous art because they are from the same field of endeavor that is the decorative material art. It would have been obvious to a person of ordinary skill in the art to combine the coated flaky glass particles of Hikmet with the invention of Harima, and the motivation for combining would be to control brightness of the decorative sheet. Harima teaches the base material 1 can be a titanium paper [¶20] but does not teach a metal base material. Higashikawa teaches a decorative material comprising a base material including titanium paper base material and metal based base material (abstract and [0058]). Higashikawa shows that titanium paper base material is an equivalent structure known in the art. Therefore, because these two base materials were art-recognized equivalents before the effective filing date of the invention, one of ordinary skill in the art would have found it obvious to substitute the titanium paper base material for the metal based base material. Claim 22: Harima teaches occupancy ratio of the glitter pigment is 50-80% [¶39] which overlaps with the claimed 30-60%. Response to Arguments Applicant’s argument is based on that selecting a particle size of 5-60 µm for the organic filler is critical to creating a superior visual and tactile effect of the decorative sheet; and Harima, Hikmet and Higashikawa do not teach the claimed particle size for the organic filler. This argument is not persuasive for the following reason. Harima teaches the binder resin comprises caseins, emulsion resins and/or latex resins, and water-soluble resins [¶46]. The caseins, emulsion resins or latex resins meet the claimed organic filler. With respect to the particle size, the Examiner showed it would be obvious to adjust the particle size of the emulsions and latexes so as to control particles packing density or property. The Applicant directed the Office to [0078], [0098] and [0208] of the Patent Application Publication to show the criticality of the particle size of the organic filler; and the Examiner reviewed these paragraphs but the current specification fails to provide evidence showing the criticality of the particle size. In Exs. 1 and 2, the particle size of the organic filler (acrylic bead) is 30 µm which is within the claimed range of 5-60 µm ([0230] and [0237]); in C.Ex. 1, there is no organic filler in the heaping layer ([0244]-[0246]); and in C.Ex. 2, the particle size of the organic filler (acrylic bead) is 30 µm which is within the claimed range of 5-60 µm [0251]. Ex. 1, Ex. 2 and C.Ex. 2 show advantageous visual effect and tactile (Table 1); however, C.Ex 1 shows poor visual effect and tactile (Table 1). The Exs. and C.Exs. show criticality of the presence of the organic filler, not the particle size of the organic filler because none of the Exs. or C.Exs show what the properties, (i.e., visual effect or tactile) would be when the particle size of the organic filler is out of the claimed range. Therefore, the current specification fails to show the claimed particle size of 6-60 µm of the organic fillers is critical to the claimed invention. None of the examples and comparative examples shows controlling the particle size of the organic fillers controls the properties of the claimed decorative material. Applicant further argued that claims 1 and 21 recite that the surface coating layer has a thickness such that the protrusions can be felt through the surface coating layer. This argument is persuasive for the following reason. The medium coat layer 4 of Harima meets the claimed surface coating layer. Harima teaches the medium coat layer 4 has a thickness of 1-5 µm [¶51]; and the first printed layer 3 has dot patterns ([¶34]-[¶40]) with the height of each dots being 25-34 µm [¶36]. Since the height of the dots (25-34 µm) of Harima is within the range of the height of the claimed projections (10-60 µm), and the thickness of the medium coat layer 4 is much smaller than the height of the dots; the surface of the decorative material of Harima would have function in a similar manner as Applicant’s, (i.e., the dots of Harima would have been felt through the medium coat layer 4). For the above reasons claims 1-8 and 10-17, 21 and 22 stand rejected. Allowable Subject Matter Claims 19-20 are allowed. Harima, Hikmet and Higashikawa either singly or as a combination do not teach or suggest a ratio of D/dave is 0.5-1.5 as recited in current claim 19. 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. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETELHEM SHEWAREGED whose telephone number is (571)272-1529. The examiner can normally be reached Monday -Friday 7am-4:30pm. 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, Mark Ruthkosky can be reached at 571-272-1291. 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. BS September 27, 2026 /BETELHEM SHEWAREGED/ Primary Examiner Art Unit 1785