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 along with the Request for Continued Examination (RCE) filed on 04/07/2026 has been fully considered. Claim 1 is amended, claims 9 and 18 are canceled, claims 19-22 are added and claims 1-8, 10-17 and 19-22 are pending.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10 depends upon cancelled claim 9. 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, [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, 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, 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 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%.
Claims 19-20 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).
Claim 19: 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. 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, 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, 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 claimed D/dave 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 D/dave 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.
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 20: Harima teaches occupancy ratio of the glitter pigment is 50-80% [¶39] which overlaps with the claimed 30-80%. Harima teaches occupancy ratio of the dots is 50-80% [¶39] which overlaps with the claimed 30-60%.
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, [0100] and [0101]). The first printed layer 3 meets the claimed texture region/heaping layer having a plurality of projections. 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 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, 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 the emulsion resin and latex resin of Harima are dispersed in an ink in the form of particles or colloids, but when the ink is applied to a substrate and dried to form a film, these resins do not remain as particles or colloids but instead form a continuous coating, thus they cannot exist as organic fillers. This argument is not persuasive for the following reasons. Applicant claims textured coating/layer not a continuous coating/layer. Evidence shows that an emulsion exists in particle format (see col. 6, lines 6-7 of Petel et al. (US 6,130,021)) and a latex exists in a particle format (see [0040] of Cheng et al. (US 2004/0162373 A1)). Even though Harima does not expressly teach the claimed particle size of the emulsions and/or latexes, there is no express teaching in Harima that emulsions and latexes change their existence from a particle format to a non-particle format.
In response to Applicant’s argument regarding particle size of organic fillers, 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. In addition, the specification fails to show the particle size 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.
In response to Applicant’s argument of claim 19:
1- Regarding gap regions between projections, 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 there is nothing in Harima that teaches the gap region comprises any dots. Therefore, the above meets the claimed gaps between projections containing less than three bright flaky particles.
2- Regarding D/dave ratio, the Examiner showed it would be obvious to adjust the D/dave ratio so as to control dispersion of dots in the layer. In addition, the specification fails to show the D/dave ratio is critical to the claimed invention. None of the examples and comparative examples show what would be the results when the D/dave ratios are below and above the claimed range. In Comparative Example 1, the Ave. diameter of circumscribed circle, the Area percentage and the Average height are out of the inventive range, and the results are poor; however, it is not clear if the Ave. diameter of circumscribed circle, the Area percentage or the Average height controls results.
Regarding claim 21, Applicant has argued there is no motivation for a person skilled in the art to reduce the occupancy rate of the dots in Harima to 10-90% because doing so would decrease the brightness of the sheet made in Harima. This argument is not persuasive for the following reasons. Harima anticipates the claimed area percentage of claims 21 and 17. Harima teaches occupancy ratio of the dots is 50-80% [¶39] which overlaps with the claimed 10-90%; and the occupancy ratio of Harima meets the claimed area percentage. In addition, Applicant fails to argue that Harima does not anticipate the claimed area percentage.
For the above reasons claims 1-8 and 10-17 stand rejected and claims 19-22 are included in the prior art rejections.
Correspondence
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BS
April 17, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights