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 .
Summary
The Applicant’s arguments and claim amendments received on April 3, 2026 are entered into the file. Currently, claims 1-20 are pending for examination.
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.
Claims 1-4, 6-9, 11, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Charignon (US 2019/0390411, previously cited) in view of Loccufier et al. (US 2017/0058456, previously cited).
Regarding claim 1, Charignon teaches a décor paper for decorative laminates printable by inkjet, the décor paper comprising a paper substrate (base paper) with at least one opacifier pigment and, on at least one side of the substrate, a surface treatment (ink receiver coating) comprising a binder and a filler [0037]. Charignon teaches that the surface treatment acts as a barrier to the diffusion of ink within the paper, wherein the décor paper contains at least one printed design (decorative pattern) on at least one of its sides which is provided, for example, by inkjet printing ([0039], [0044], [0062]-[0064]). Therefore, Charignon teaches that the printed design is printed on the surface treatment, where the surface treatment is formed as a unique layer that is in direct contact with the paper substrate.
Charignon teaches that the paper substrate includes an opacifier pigment such as titanium dioxide and may include additional colored pigments to provide a shade of a desired color ([0026], [0147]-[0148]). Therefore, Charignon teaches that the paper substrate is a colored paper. Charignon further teaches that the décor paper can have a Gurley porosity, or air permeability, of 5 to 60 seconds, ideally 15 to 40 seconds, with exemplary embodiments having a Gurley value of 11 to 24 seconds ([0100], [0150], Fig. 1), which falls squarely within the claimed range.
Charignon further teaches that the surface treatment is deposited in a quantity of up to 10 g/m2 per treated side, preferably less than or equal to 5 g/m2 in dry weight per treated side ([0045]), which overlaps 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. See MPEP 2144.05(I).
Although Charignon teaches that the design (decorative pattern) can be printed by inkjet printing, preferably with an aqueous ink, a UV-curable ink, an EB-curable ink, a solvent, or an eco-solvent ink ([0062]-[0063]), Charignon differs from the claimed invention in that the reference does not expressly teach a dry weight amount of the pigments used to form the printed design.
However, in the analogous art of inkjet printed decorative laminates, Loccufier et al. teaches a decorative layer comprising a thermosetting resin impregnated paper having an ink acceptance layer formed thereon, and a color pattern printed on the ink acceptance layer by inkjet printing [0048]. The color pattern (decorative pattern) is printed using one or more aqueous pigments inkjet inks and/or organic solvent based inkjet inks containing a color pigment [0142]. The colorant of the inkjet inks is preferably in the form of color pigments, which have higher light stability than dyes [0148]. Loccufier et al. teaches that the dry weight of the color pigments jetted by the one or more pigmented inkjet inks is at least 0.30 g/m2, preferably at least 0.60 g/m2, where such high pigment coverages allow for dark images to be formed [0040]. Loccufier et al. further teaches that adhesion problems are known to be associated with high ink coverages of more than 10 g/m2 [0007].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the décor paper of Charignon by setting a dry weight amount of the pigments in the inkjet ink used to form the printed design within the claimed range, as taught by Loccufier et al., in order to enable dark images to be formed by the pigmented inks. Further, it is noted that Loccufier et al. teaches a range for the dry weight amount of pigment which overlaps 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. See MPEP 2144.05(I).
Regarding claim 2, Charignon in view of Loccufier et al. teaches all of the limitations of claim 1 above, and Charignon further teaches that the surface treatment can be without silica and/or without carbonates and/or without opacifier pigment, wherein the opacifier pigment can instead be introduced into the mass of the substrate ([0055], [0060]). The surface treatment is therefore free from pigment.
Regarding claims 3 and 4, Charignon in view of Loccufier et al. teaches all of the limitations of claim 1 above, and Charignon further teaches that the surface treatment (ink receiver coating) comprises a binder, wherein the binder can contain or be composed of PVOH (polyvinyl alcohol), and that the surface treatment can contain a salt of an alkaline earth metal, in particular CaCl2 ([0037], [0054], [0058]). In looking to paragraph [0015] of the as-filed specification, cationic metal salts such as CaCl2 are said to be used as flocculants in the ink receiver layer, where the positive ion of the dissolved metal salt tends to neutralize the electrosteric stabilization function of the pigment contained in the ink. Therefore, the CaCl2 metal salt taught by Charignon corresponds to the claimed flocculant which is a metal salt.
Regarding claims 6 and 7, Charignon in view of Loccufier et al. teaches all of the limitations of claim 1 above. Although Charignon does not teach a color of the pigments used to form the decorative pattern, Loccufier et al. teaches that the color pigments used in the inkjet inks may be black, white, cyan, magenta, yellow, red, orange, violet, blue, green, brown, mixtures thereof, and the like ([0147], [0150]). Loccufier et al. further teaches that particular preferred cyan pigments include copper phthalocyanine; red pigments include C.I Pigment Red 254, C.I. and Pigment Red 176; and black pigments include carbon black ([0151]-[0154]). It would, therefore, have been obvious to one of ordinary skill in the art to use any of the pigments taught by Loccufier et al. for forming the decorative pattern, given their art-recognized suitability for use as such.
Regarding claim 8, Charignon in view of Loccufier et al. teaches all of the limitations of claim 1 above. Although Loccufier et al. recognizes that there is no restriction on the content of the color pattern ([0118]), the combination of references does not expressly teach that the decorative pattern covers the majority of the surface of the base paper. It would, however, have been obvious to one of ordinary skill in the art to have selected any pattern for the decorative pattern, such as one covering the majority of the surface of the base paper, in order to impart the desired aesthetic appearance for a particular application of the décor paper. See MPEP 2144.04(I).
Regarding claim 9, Charignon in view of Loccufier et al. teaches all of the limitations of claim 1 above. Although Charignon teaches that the paper substrate (base paper) includes an opacifier pigment such as titanium dioxide and may include additional colored pigments to provide a shade of a desired color ([0026], [0147]-[0148]), the reference does not expressly teach that the color of the base paper corresponds to the color of the pigment forming the decorative pattern. It would, however, have been obvious to one of ordinary skill in the art to select a color for the pigments forming the decorative pattern which corresponds to the color of the pigments added to the paper substrate in order to impart the desired aesthetic appearance for a particular application of the décor paper. See MPEP 2144.04(I).
Regarding claim 11, Charignon in view of Loccufier et al. teaches all of the limitations of claim 1 above, and Charignon further teaches that the décor paper can have a weight from 20 to 200 g/m2, preferably from 50 to 80 g/m2 ([0087]), which falls squarely within the claimed range.
Regarding claims 17 and 19, Charignon in view of Loccufier et al. teaches all of the limitations of claim 1 above, and Charignon further teaches a decorated laminated board (decorative panel) such as a high pressure laminate, in which the components of the base of the laminate are kraft sheets impregnated with thermosetting resin and the décor paper, or a low pressure laminate, in which the components of the base are a supporting board such as particle board and the décor paper ([0016], [0131], [0145]-[0146]). Therefore, the substrate of the laminated board is made of multiple thermosetting resin impregnated kraft paper foils or wood-based boards.
Regarding claim 20, Charignon in view of Loccufier et al. teaches all of the limitations of claim 17 above. Although Charignon teaches a decorated laminated board (decorative panel) such as a high pressure laminate, in which the components of the base of the laminate are kraft sheets impregnated with thermosetting resin and the décor paper, or a low pressure laminate, in which the components of the base are a supporting board such as particle board and the décor paper ([0016], [0131], [0145]-[0146]), the reference does not expressly teach that the decorative panel further comprises a balancing layer attached to the substrate as claimed.
Loccufier et al. similarly teaches a decorative panel (30) comprising a core layer (31) which is laminated on the top side by the decorative layer (34) and a protective layer (35) and on the back side by a balancing layer (36) ([0021], Fig. 3). The balancing layer serves to restrict or prevent possible bending of the decorative panel ([0054], [0139]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative panel of Charignon in view of Loccufier et al. by including a balancing layer on a bottom side of the substrate facing away from the décor paper, as taught by Loccufier et al., in order to prevent possible bending of the decorative panel.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Charignon (US 2019/0390411, previously cited) in view of Loccufier et al. (US 2017/0058456, previously cited) as applied to claim 3 above, and further in view of Niu et al. (US 2018/0087222, previously cited).
Regarding claim 5, Charignon in view of Loccufier et al. teaches all of the limitations of claim 3 above. Although Charignon teaches that the surface treatment (ink receiver coating) can contain a binder such as PVOH and a salt of an alkaline earth metal such as CaCl2 ([0054], [0058]), corresponding to the claimed flocculant, the reference does not expressly teach an amount of the flocculant present in the ink receiver coating based on dry weight.
However, in the analogous art of inkjet printable materials, Niu et al. teaches a primer composition which can include a binder and a cationic salt, wherein the primer composition can be applied to substrates such as paper to form an ink-receiving layer on the substrate before printing inkjet ink onto the primer layer (Abstract, [0007]). Similar to Charignon, Niu et al. teaches that the cationic salt can include calcium chloride and the binder can include polyvinyl alcohol ([0011], [0028]). The cationic salt can be present in an amount sufficient to immobilize pigment colorants in the ink to be printed over the primer and to yield good image quality, wherein the primer composition can include the cationic salt in an amount from 10 to 50 wt%, or 20 to 30 wt%, based on the weight of all dry components of the primer composition [0027].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the décor paper of Charignon in view of Loccufier et al. by selecting an amount of CaCl2 flocculant within the claimed range to include in the ink receiver coating, as taught by Niu et al., in order for the amount of metal salt to be sufficient to immobilize pigment colorants in the ink used to print on the ink receiver coating, thereby yielding good image quality. Furthermore, Niu et al. teaches an amount of the cationic salt (i.e., flocculant) which overlaps 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. See MPEP 2144.05(I).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Charignon (US 2019/0390411, previously cited) in view of Loccufier et al. (US 2017/0058456, previously cited) as applied to claim 1 above, and further in view of De Mondt et al. (US 2016/0207307, previously cited).
Regarding claim 10, Charignon in view of Loccufier et al. teaches all of the limitations of claim 1 above. Although Charignon teaches that the paper substrate includes an opacifier pigment such as titanium dioxide and may include additional colored pigments to provide a shade of a desired color ([0026], [0147]-[0148]), the reference does not expressly teach that the base paper shows a lightfastness of at least 6 on the blue wool scale as claimed.
However, in the analogous art of decorative panels, De Mondt et al. teaches a method of manufacturing a decorative surface including the steps of impregnating a paper substrate with a thermosetting resin, jetting a color pattern with one or more aqueous inks, drying the one or more aqueous inks, and heat pressing the thermosetting paper carrying the color pattern into a decorative surface (Abstract). Similar to Charignon, De Mondt et al. teaches that the paper substrate is preferably a colored paper substrate ([0036], [0144]). De Mondt et al. teaches that the blue wool scale was used as a measure of lightfastness of inkjet printed samples, and that the flooring industry expects a laminate floor to have a rating on the blue wool scale of 6 or more ([0251]-[0254]). De Mondt et al. teaches that the lightfastness on the blue wool scale can be adjusted by the selection of pigment used for coloring ([0275], Table 11).
Given that Charignon teaches its décor paper being used in decorative laminated panels for use as floor coverings ([0003], [0131]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the décor paper of Charignon in view of Loccufier et al. by selecting an appropriate pigment or colorant suitable for achieving a lightfastness on the blue wool scale of 6 or more, as taught by De Mondt et al., in order to achieve the lightfastness properties that are required for products used in flooring applications.
Claims 12-14, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Charignon (US 2019/0390411, previously cited) in view of Loccufier et al. (US 2017/0058456, previously cited) as applied to claims 1 and 17 above, and further in view of Chen et al. (US 2004/0086678, previously cited).
Regarding claims 12-14, Charignon in view of Loccufier et al. teaches all of the limitations of claim 1 above. Although Charignon teaches that a protective sheet or overlay (protective coating) having no design and which is transparent in the final laminate is placed over the décor paper to improve the abrasion resistance of the laminate ([0006]-[0009]), the reference does not expressly teach a thickness or a material of the protective coating.
However, in the analogous art of decorative panels, Chen et al. teaches a surface covering comprising a support surface, a base coating located on the support surface, a printed pattern located on the base coating, and a protective layer located on the printed pattern (Abstract). Chen et al. teaches that the protective layer or coating is present over the printed surface covering panel in order to protect the printed pattern or design, wherein the protective layer is a radiation cured or thermally cured topcoat made of epoxy acrylates, urethane acrylates, polyester acrylates, or other reactive wear resistant polymers [0030]. Chen et al. teaches that the thickness of the protective layer can be any suitable thickness to adequately protect the printed pattern, wherein suitable thicknesses include from about 1 to about 10 mils or more ([0032]), corresponding to about 25 to about 250 microns.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the décor paper of Charignon in view of Loccufier et al. by forming a protective coating having a thickness within the claimed range and comprising an acrylic resin or a polyurethane resin, as taught by Chen et al., in order to adequately protect the printed pattern layer. Furthermore, Chen et al. teaches a thickness of the protective coating which overlaps 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. See MPEP 2144.05(I).
Regarding claim 16, Charignon in view of Loccufier et al. and Chen et al. teaches all of the limitations of claim 12 above. As noted above, Charignon teaches that the protective sheet is placed over the décor paper to improve the abrasion resistance of the laminate, wherein the laminate is formed from a stack of resin-impregnated sheets including a décor paper which is impregnated with a thermosetting resin ([0005]-[0006], [0062], [0125]).
Regarding claim 18, Charignon in view of Loccufier et al. and Chen et al. teaches all of the limitations of claim 12 above. As noted above, Charignon teaches that the protective sheet is placed over the décor paper to improve the abrasion resistance of the laminate, wherein the laminate is formed from a stack of resin-impregnated sheets, including a décor paper, which are laminated and fixed onto a base support (substrate) ([0005]-[0009], [0131]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Charignon (US 2019/0390411, previously cited) in view of in view of Loccufier et al. (US 2017/0058456, previously cited) and Chen et al. (US 2004/0086678, previously cited) as applied to claim 12 above, and further in view of Hannig (US 2019/0366757, previously cited).
Regarding claim 15, Charignon in view of Loccufier et al. and Chen et al. teaches all of the limitations of claim 12 above but does not expressly teach that the protective coating comprises UV absorbers and/or UV stabilizers.
However, in the analogous art of decorative panels, Hannig teaches a decorated, surface-structured wall or floor panel comprising a substrate, a primer coat on a surface of the substrate, a decorative coat on the primer coat, and a coat of radiation-curable varnish on the decorative coat (Abstract). Similar to Chen et al., Hannig teaches that the varnish applied to the decorative layer to form a layer of radiation-curable varnish preferably comprises an acrylate [0050]. Hannig further teaches that such a varnish can comprise further components such as a UV stabilizer [0050].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the décor paper of Charignon in view of Loccufier et al. and Chen et al. by including a UV stabilizer in the protective coating, as taught by Hannig, in order to impart UV resistant properties to the décor paper, for example, to protect the decorative pattern from fading.
Response to Arguments
Response-Claim Rejections - 35 USC § 103
Applicant's arguments, see pages 5-6 of the remarks filed April 3, 2026, have been fully considered but they are not persuasive.
The Applicant argues that one skilled in the art would not have been motivated to combine Charignon and Loccufier in the manner suggested by the Examiner because the alleged modification involves implementing a single feature of Loccufier which is taken out of context. In particular, the Applicant argues that Loccufier is directed to a method for manufacturing a decorative paper wherein the base paper is impregnated before being provided with the ink receiver layer and the decorative pattern, that Loccufier’s ink receiver is provided in an amount above 2 g/sqm, and that Loccufier requires a high ratio P/C of the amount of pigment in the ink receiver layer to the dry weight of ink jetted pigment, where these specific conditions are not present in Charignon. Thus, the Applicant argues that there is no reason to believe that Loccufier’s limited amount of pigment could be implemented in Charignon to allow for dark images to be formed.
This argument is not persuasive. As explained in the prior art rejections above, Loccufier et al. teaches that the dry weight of the color pigments jetted by the pigmented inkjet inks is at least 0.30 g/m2, preferably at least 0.60 g/m2, to allow for dark images to be formed, and that adhesion problems are known to be associated with high ink coverages of more than 10 g/m2 ([0007], [0040]). In particular, Loccufier et al. teaches that the adhesion problems occur as a result of water vapor produced by the thermosetting impregnating resin during heat pressing which cannot penetrate through the ink layer formed at a high coverage amount [0007]. Based on these teachings in Loccufier et al., it would have been obvious to one of ordinary skill in the art to have determined the optimum value of the dry weight of pigments in the decorative pattern through routine experimentation in order to achieve the desired image quality or optical density of the decorative pattern while ensuring adequate adhesion between the ink and a resin used to impregnate the decorative paper. See MPEP 2144.05(II).
Although it is noted that the décor papers of Charignon and Loccufier et al. have some structural differences as noted by the Applicant, it would have been obvious to one of ordinary skill in the art to select a suitable dry weight amount of the pigments in the decorative pattern within the broadly claimed range of below 5 g/sqm based on the teachings in Loccufier et al. regarding higher pigment amounts being suitable for forming dark images while excessive pigment amounts can cause issues of adhesion during resin impregnation. Furthermore, given that Loccufier et al. also teaches that the paper can be a color paper including one or more color dyes and/or pigments, where the use of a colored paper reduces the amount of inkjet ink needed to print the color pattern ([0076]), one of ordinary skill in the art would also recognize that the amount of pigment necessary to form a decorative pattern having a desired optical density would depend upon the properties of the underlying layers (e.g., the colors and/or content of pigments included therein). One of ordinary skill in the art would therefore have a reasonable expectation of success in modifying the décor paper of Charignon with the disclosure of Loccufier et al. to arrive at a décor paper having a decorative pattern having a dry weight of pigment below 5 g/sqm, based on the high predictability of the effects of adjusting the amount of pigment in an ink on the resulting optical density of the pattern formed thereby.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Clement et al. (US 2024/0001701) teaches a method for manufacturing a décor paper comprising a paper layer provided with first and second printed motifs (Abstract). In particular, Clement et al. teaches that the printed motifs can comprise substantially the same quantity of pigment per surface unit over the entire surface of the paper so as to have a uniform color, wherein the quantity of dry pigment per surface unit can be below 20 g/sqm, preferably below 10 g/sqm [0014].
Clement et al. (US 2021/0146710) teaches a method for manufacturing a paper printable with an inkjet printer for use as a décor paper (Abstract). The paper layer has an inkjet receiver layer having a printed pattern formed of pigment-containing inks, wherein the dry weight of the pigment-containing inks is 9 g/sqm or lower, preferably 3 to 4 g/sqm, where the limitation of the dry weight of applied ink reduces the risk of pressing defects and interference between the ink layer and thermosetting resin during a pressing operation [0094].
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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/Rebecca L Grusby/Examiner, Art Unit 1785
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