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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 3-8, in the reply filed on 11/13/2025 is acknowledged.
Claims 1 and 2 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/13/2025; however, given that the non-elected claims were cancelled, the restriction requirement is moot.
Claim Objections
Claims 3 and 5-7 are objected to because of the following informalities:
In claim 3 on line 3, the phrase “the paper” is objected to grammatically as the paper of the preamble is not the same as the paper in line 3. This objection can be overcome by changing the phrase to “a paper” which is how the claim will be interpreted.
In claim 3 on lines 16 and 17 (two instances), the phrase “UV ultraviolet lamp” is objected to grammatically as the first mentioning of this printing device component is as “UV lamp” and UV and ultraviolet mean the same thing. This objection can be overcome by changing the phrase to “UV lamp” which is how the claim will be interpreted.
In claim 3 on line 16, the phrase “the UV ultraviolet lamp on the printing device” is objected to grammatically. The objection can be overcome by changing the phrase to “the UV lamp, which is part of the printing device” which is how the claim will be interpreted.
In claim 5 on lines 2-3, the phrase “wherein a corona device is provided at the printing device” is objected to grammatically as “at” the printing device is not correct syntax. This objection can be overcome by changing the phrase to “wherein the printing device further comprises a corona device” which is how the claim will be interpreted.
In claim 6 on lines 3-4, the phrase “sequentially provided on a moving path of the target paper in sequence” is objected to grammatically as the term sequentially appears twice in the phrase and referring to the unprinted object as “target paper” does not agree with claim 3. The objection can be overcome by changing the phrase to “sequentially provided on a moving path of the BOPP optical film adhered to the substrate” which is how the claim will be interpreted.
In claim 6 on line 6, the phrase “according to use requirements” is objected to grammatically as this concept is in claim 3. This objection can be overcome by changing the phrase to “according to the use requirements” which is how the claim will be interpreted.
In claim 6 on line 7, the phrase “the target paper” is objected to grammatically as referring to the unprinted object as “target paper” does not agree with claim 3. The objection can be overcome by changing the phrase to “the BOPP optical film adhered to the substrate” which is how the claim will be interpreted.
In claim 7 on line 4, the phrase “the UV ultraviolet lamp” is objected to grammatically. The objection can be overcome by changing the phrase to “the UV lamp sequentially provided after each printing unit” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 3-8 are 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.
In claim 3 on line 3, the phrase “dye and print the paper into a dyed paper” renders the claim indefinite as these are broad/narrow limitations in the same claim. It is unclear if two separate method steps are required, i.e. dying and printing, or if dying the paper reads on the method step and the term printing is merely a restatement of dying. The rejection can be overcome by changing the phrase to “dye the paper into a dyed paper” which is how the claim will be interpreted.
In claim 3 on lines 3-4, the phrase “a striking color” is a term of degree that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what color of the dyed paper would be prominent enough to be considered striking. For purposes of examination, any color for the dyed paper will read on this limitation.
In claim 3 on line 5, the phrase “adhere and provide the BOPP” renders the claim indefinite as these are broad/narrow limitations in the same claim. It is unclear if two separate method steps are required, i.e. adhering and providing. The rejection can be overcome by changing the phrase to “adhere the BOPP” which is how the claim will be interpreted.
In claim 3 on line 7, the phrase “place the substrate on a printing device” renders the claim indefinite as step S2 has formed a BOPP optical film adhered to the substrate, and therefore it is unclear if the substrate is being placed without the BOPP film. The rejection can be overcome by changing the phrase to “place the BOPP optical film adhered to the substrate on a printing device” which is how the claim will be interpreted.
In claim 3 on line 7, the phrase “wind and place the two ends” renders the claim indefinite as these are broad/narrow limitations in the same claim. It is unclear if two separate method steps are required, i.e. winding and placing, or is placing is a restatement of the winding step. The rejection can be overcome by changing the phrase to “winding two ends” which is how the claim will be interpreted.
In claim 3 on line 7, the phrase “the two ends” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “two ends” which is how the claim will be interpreted.
In claim 3 on line 9, the phrase “the substrate-dyed paper” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “the BOPP optical film adhered to the substrate” which is how the claim will be interpreted.
In claim 3 on line 9, the phrase “the printing assembly” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “a printing assembly” which is how the claim will be interpreted.
In claim 3 on line 11, the phrase “the target paper pattern” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “a target paper pattern” which is how the claim will be interpreted.
In claim 3 on line 12, the phrase “the substrate-dyed paper” lacks antecedent basis in the claim and it is unclear if the substrate is being moved without the BOPP film. The rejection can be overcome by changing the phrase to “the BOPP optical film adhered to the substrate” which is how the claim will be interpreted.
In claim 3 on line 14, the phrase “the BOPP optical film layer” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “the BOPP optical film” which is how the claim will be interpreted.
In claim 3 on lines 14-15, the phrase “the printing pattern” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “a printing pattern” which is how the claim will be interpreted.
In claim 3 on line 15, the phrase “the design and use requirements” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “design and use requirements” which is how the claim will be interpreted.
In claim 3 on lines 13-15, the two sub-steps of S4 of “print a UV-printing ink layer” and “set the printing pattern of the UV-printing ink layer” in the order claimed render the claim indefinite as it is unclear how one can set the printing pattern after one has already printed said pattern. The setting step appears after the printing step, but the context of the specification would lead on of ordinary skill to interpret the “set the printing pattern of the UV-printing ink layer” as selecting the printing pattern. It would be impossible to select a pattern after it has already been printed, and therefore this renders the claim indefinite. The rejection can be overcome by reversing the order that the two sub-steps appear within S4.
In claim 3 on lines 17-18, the phrase “the finished product of the printed target paper” lacks antecedent basis in the claim. The rejection can be overcome by inserting right before the semicolon on line 17 the phrase “to form a finished product of a printed target paper” which is how the claim will be interpreted.
In claim 3 on line 19, the phrase “the target paper roll” lacks antecedent basis in the claim. The rejection can be overcome by inserting right before the semicolon on line 18 the phrase “to form a roll of printed target paper” and then change the phrase on line 19 to “the roll of printed target paper” which is how the claim will be interpreted.
In claim 4 on lines 3, 4 and 7, the phrase “the substrate-dyed paper” (three instances) does not make sense in the context of the claims because this term is being used to refer to the combination of the BOPP film and substrate in claim 3 but in claim 4 it is being used to refer to the substrate alone. The rejection can be overcome by changing the phrase to “the substrate” in each instance, which is how the claim will be interpreted.
In claim 4 on line 5, the phrase “suitable glue or adhesive” renders the claim indefinite as this is a subjective term as it can depend on an individual user’s opinion if a glue or adhesive was “suitable”. This rejection can be overcome by deleting the word “suitable”.
In claim 4 on line 6, the phrase “the bonded material” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “the BOPP optical film adhered to the substrate” which is how the claim will be interpreted.
In claim 5 on line 3, the phrase “near the unwinding end” is a term of degree that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how close one the corona device must be to the unwinding end to read on this claim.
In claim 5 on line 4, the phrase “the substrate paper layer to be printed” lacks antecedent basis in the claim as does not make sense as the BOPP layer is printed in claim 3 and not the substrate. The rejection can be overcome by changing the phrase to “the BOPP optical film adhered to the substrate” which is how the claim will be interpreted.
In claim 6 on line 4, the phrase “the master control system is provided with” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “and a master control system that is provided with” which is how the claim will be interpreted.
In claim 6 on line 6, the phrase “the graphics of corresponding colors” lacks antecedent basis in the claim. The rejection can be overcome by changing the phrase to “the graphics of different colors” which is how the claim will be interpreted.
In claim 7 on line 2, the phrase “a UV ultraviolet lamp is provided at the rear of each printing unit” renders the claim indefinite as claim 3 does not have multiple printing units and the term “the rear” lacks antecedent basis in the claims and is a relative term as one would not know where the “rear” of a printing unit is located. The rejection can be overcome by changing the dependency of the claim to be from claim 6 and then changing the phrase to “a UV lamp is sequentially provided after each printing unit in the moving path” which is how the claim will be interpreted.
In claim 8 on line 3, the phrase “near the winding end” is a term of degree that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear how close one the visual detection device must be to the winding end to read on this claim.
In claim 8 on line 5, the phrase “the ink patterns of various colors” lacks antecedent basis in the claim and claim 3 has not established that there are different colors. The rejection can be overcome by changing dependency of the claim to be from claim 6 and then changing the phrase to “the target paper patterns of successively printed colors” which is how the claim will be interpreted.
Potential Allowable Subject Matter
Claims 3-8 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The Examiner notes the prior art of US 2021/0094317, US 5,580,063, US 2022/0410584 and US 9,170,077. The closest prior art to the claims is US 2021/0094317.
As to Knittle et al. (US 2021/0094317), this reference does not teach or suggest dyeing a paper substrate and then adhering this dyed paper to a biaxially oriented polypropylene film for subsequently printing with UV inks. The reference is printing on a coated ticking fabric and there is no rationale, save improper hindsight, to have replaced the ticking fabric with a dyed paper substrate adhered to a biaxially oriented polypropylene film. There would have been no expectation of success that a dyed paper substrate adhered to a biaxially oriented polypropylene film could have been subjected to the printing conditions of a method designed for a fabric.
As to Edwards (US 5,580,063), this reference does not teach or suggest dyeing the paper substrate, printing UV curable inks on these target materials and rolling up the printed target paper and then subsequently cutting said roll. There is no rationale, save improper hindsight to have made Edwards target with the materials and method steps claimed.
As to Sato et al. (US 2022/0410584), this reference does not teach or suggest dyeing a paper substrate that will be used as the recording medium and then cutting the recording medium after it has been wound up. The recording medium is transparent so that the non-white ink can be viewed through the recording medium [0028]. There is no rationale, save improper hindsight, to have dyed a paper substrate that is then adhered to a biaxially oriented polypropylene film in order to form a color-changing paper in combination with cutting the roll of material after it has been printed as the dyed paper would then prevent one from seeing the non-white ink through the recording medium.
As to Johnson et al. (US 9,170,077), the reference does not teach or suggest dyeing the paper substrate, adhering the discrete segments of material of a polymeric layer, winding and unwinding the adhered paper substrate and polymeric material, and cutting the roll of printed target paper. There is no rationale, save improper hindsight, to have performed all of these additional method steps on the target of Johnson et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm (variable one work-at-home day).
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.
/Gerard Higgins/Primary Examiner, Art Unit 1785