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 12/11/2025 has been fully considered. Claim 1 is amended, claim 18 is canceled and claims 1-17 are pending.
Previous Double Patenting rejection has been withdrawn in view of the Approved Terminal Disclaimer.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Harima (JP 2017165077 A) in view of Illkmet 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, [0100] and [0101]). The first printed layer 3 meets the claimed texture region/heaping layer having a plurality of projections {instant claim 16}. 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 does not teach the bright pigment is flaky. However, Illkmet 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, 29-34). Harima and Illkmet 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 Illkmet 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 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 short distance, 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 ratio, 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 9: 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 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 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 17: Harima teaches occupancy ratio of the dots is 50-80% [¶39] which overlaps with the claimed 10-90%.
Response to Arguments
Applicant’s arguments with respect to claims 1-17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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
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BS
January 6, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785