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 .
Specification
The disclosure is objected to because of the following informalities:
At [0012], [0033], [0110] and [0154], the limitations of producing the transfer sheet by “applying heat and pressure” does not make sense when read in context with the whole specification. The heat and pressure are later used on the transfer sheet to transfer an ink composition to transfer the image to an article/substrate and not the method of making the transfer sheet. At least at [0085]-[0091] and [0102], it is clear that only heat is used for drying in an oven to produce the transfer sheet and no pressure is applied.
Appropriate correction is required.
Claim Objections
Claims 2 and 3 are objected to because of the following informalities:
In claims 2 and 3, the phrase “wherein the image transfer layer is heated” is objected to grammatically. The objection can be overcome by changing the phrase “wherein the applying of heat to the image transfer layer is such that the image transfer layer is heated”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-22 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 1, the limitations of “a transfer sheet for transferring an image onto a substrate produced by a process comprising…applying heat and pressure to the image transfer layer…during production” render the claim indefinite for multiple reasons. First, it is unclear if “produced by a process” is referring to producing “an image onto a substrate” or the transfer sheet. Second, based on the context in the claim and the specification, the “applying heat and pressure to the image transfer layer” step is a method of using the transfer sheet to transfer an image onto a substrate and not a method of producing a transfer sheet or substrate. The context of the specification makes clear that pressure is not used in making the transfer sheet.
The rejection can be overcome by changing the phrase on line 1 “produced by a process” to “, wherein the transfer sheet is produced by a process” and changing the phrase on line 5 “applying heat and pressure to the image transfer layer” to “applying heat to the image transfer layer”.
In claims 4 and 5, the limitations that the “viscosity of the release layer is about 25 cps to about 90 cps” or “50 cps to about 60 cps” render the claims indefinite because the heating steps of claim 1 are to dry the transfer sheet, and therefore it is unclear how the release layer has the viscosities claimed as this would imply a wet layer; hence, it is unclear if this is a structural limitation of the final product, a product-by-process limitation or if applicants are claiming an intermediate product. For purpose of examination, the Examiner will be treated this as a product-by-process limitation of the viscosity of the release layer composition prior to heating and drying of the layers of the transfer sheet [0067].
In claim 6, the limitations that the transfer is produced by “applying an ink composition” render the claim indefinite as it is unclear if this is part of the intended use limitations of claim 1 of “for transferring an image” or if this is part of the product-by-process steps. Applicants’ specification at [0092] makes clear that the image forming occurs after the transfer sheet has been formed and this would imply that claim 6 contains intended use limitations.
In claims 6 and 22, the limitations that “the blocking agent is substantially disrupted” and “the blocking agent is substantially not disrupted” in the printed and non-printed areas, respectively, render the claims indefinite as this is a term of degree that renders the claim indefinite. It is unclear how much disruption or lack thereof reads on these limitations. 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.
In claims 7 and 21, the phrase “dark colored” is a term of degree that renders the claim indefinite. It is unclear how dark the color must be to read on the claim limitations. For purpose of examination, any non-white color will read on this limitation.
In claim 8, the limitations that the “image transfer layer comprises a partially fluid coating having a viscosity of about 25 cps to about 200 cps” render the claim indefinite because the heating steps of claim 1 are to dry the transfer sheet, and therefore it is unclear how the image transfer layer has the viscosities claimed as this would imply a wet layer; hence, it is unclear if this is a structural limitation of the final product or a product-by-process limitation. For purpose of examination, the Examiner will be treated this as a product-by-process limitation of the viscosity of the image transfer layer composition prior to heating and drying of the layers of the transfer sheet [0064].
In claim 9, the limitations “further comprising contacting the transfer sheet with the substrate and applying heat and pressure” render the claim indefinite as it is unclear if this is part of the intended use limitations of claim 1 of “for transferring an image” or if this is part of the product-by-process steps. Applicants’ specification at [0092]-[0094] makes clear that the contact of the transfer sheet with the substrate occurs after the transfer sheet has been formed and this would imply that claim 9 is intended use limitations. The rejection can be overcome by changing the phrase to “wherein the transfer can be contacted with the substrate and heat and pressure can be applied” which is how the claim will be interpreted.
In claims 9 and 12, the limitation “the coating composition” lacks antecedent basis in the claims. The Examiner notes that this appears to be referring to the “ink composition” that is applied after forming the transfer sheet. This rejection can be overcome by changing this limitation to “the ink composition” and changing the dependency of claim 9 to be from claim 6.
In claim 12, the limitations “further comprising aging the sheet to increase the degree of cure…within the substrate” renders the claim indefinite as aging a transfer sheet would not affect the transferred image in a substrate and it is unclear if this is part of the intended use limitations of claim 1 of “for transferring an image” or if this is part of the product-by-process steps. The Examiner will be interpreting this claim as an intended use limitation of how the transferred image may be treated based upon [0096] of the specification.
In claims 13 and 14, the limitations that the “viscosity of the release layer is about 25 cps to about 90 cps” and “50 cps to about 60 cps” render the claims indefinite because a transfer sheet with layers imply a dried final product, and therefore it is unclear how the release layer has the viscosities claimed as this would imply a wet layer. It is unclear if this is a structural limitation of the final product or a product-by-process limitation. For purpose of examination, the Examiner will be treated this as a product-by-process limitation of the viscosity of the release layer composition prior to heating and drying of the layers of the transfer sheet [0067].
In claim 15, the limitations that “the blocking agent is configured to substantially impede” and “substantially allow transfer” in the non-printed and printed areas, respectively, render the claim indefinite as these are terms of degree that renders the claim indefinite. It is unclear how much imposition or allowance reads on these limitations. The terms are 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.
In claims 16 and 17, the limitations that the “image transfer layer comprises a partially fluid coating having a viscosity of about 25 cps to about 200 cps” and “100 cps to about 130 cps” render the claims indefinite because a transfer sheet with layers imply a dried final product, and therefore it is unclear how the release layer has the viscosities claimed as this would imply a wet layer. It is unclear if this is a structural limitation of the final product or a product-by-process limitation. For purpose of examination, the Examiner will be treated this as a product-by-process limitation of the viscosity of the image transfer layer composition prior to heating and drying of the layers of the transfer sheet [0064].
With regard to claims 18 and 19, the limitations that the first and second layers “are mixed together” renders the claims indefinite as it is unclear what the scope of these claims may be. If there are separate layers claimed then they cannot be mixed together and vice versa. The limitations of claim 19 leads the metes and bounds of claim 18 to be unclear. For purposes of examination, anything that meets claim 18 will also meet claim 19.
With regard to claim 20, the limitations that the first and third layers “are mixed together” renders the claims indefinite as the claim also requires a “third layer between the first and second layers”. If there are separate layers claimed then they cannot be mixed together and vice versa. For purposes of examination, either embodiment will read on the claim.
In claim 22, the phrase “the ink composition” lacks antecedent basis in the claims. This rejection can be overcome by changing the dependency of claim 22 to be from claim 15, which is how the claim will be interpreted.
Claims 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In claim 19, the limitations that the first and second layers are “mixed together” fail to limit the claim from which they depend as the image transfer layer of claim 18 sets forth a “first layer” and a “second layer”, which means they are separate distinct strata. A dependent claim requiring them to be a single mixed layer would fail to limit this.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claims 1-19, 21 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cobb (US 2018/0093525).
The Examiner notes the presence of product-by-process limitations in claims 1-5, 8, 13, 14, 16 and 17. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With regard to claims 1-5, 8, 13, 14 and 16-19, Cobb teaches the transfer assembly 24 of Figure 4 [0035].
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The transfer assembly 24 includes a support layer 2, and an image transfer layer 3 that includes a stratum 26 that includes a binder, which reads on applicants’ second layer of the image transfer layer, and a stratum 25, including a blocking agent and an ink receptor, which reads on applicants’ first layer of the image transfer layer [0035] and [0083]. The image transfer layers were formed by coating and drying at 80 F [0079]. The base sheet may be provided with a release coating, which reads on applicants’ release layer [0013].
Since Cobb teaches a structure formed from the same materials as preferentially disclosed in applicants’ specification and using a coating process with heating and drying of the coating, the resultant structure of the transfer assembly of Cobb will inherently be the same as the structure of the transfer sheet resulting from the product-by-process limitations of the heating and drying conditions or the viscosities of the coating materials used when forming the transfer sheet of claims 1-5, 8, 13, 14, 16 and 17 absent objective evidence to the contrary.
With regard to claims 6, 15 and 22, these claims have intended use/functional limitations of the transfer sheet when they are printed with an ink composition. Cobb also teaches these limitations at [0055]. Given the fact that Cobb teaches transfer at printed portions and no transfer at the unprinted portions along with having the same materials as claimed, the transfer assembly of Cobb will inherently be capable of performing the intended use limitations of disrupting the blocking agent in printed areas with an ink composition, allowing transfer in the printed area and impeding transfer in the non-printed areas as claimed.
With regard to claims 7 and 21, these claims have intended use limitations of what the substrate may be that is used with the transfer sheet in the process of transferring an image. Cobb teaches that their transfer assembly can be used to transfer to textiles such as cotton [0073]. Given the fact that Cobb can transfer to the same materials as claimed, the transfer medium of Cobb can inherently be used to transfer an image to a dark colored or black cotton textile as claimed.
With regard to claims 9-12, these claims have intended use limitations of the process of transferring an image using an ink composition from the transfer sheet to the substrate. Given the fact that Cobb teaches a transfer assembly identical to that claimed, it can intrinsically be used in the intended use limitations of transfer printing with an ink composition that has the degree of cure claimed, using the heat and pressure for the time period claimed and aging the printed substrate as claimed. Applicants’ claims are drawn to a transfer sheet and not a transfer printing process.
Claim Rejections - 35 USC § 103
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Cobb (US 2018/0093525).
Cobb taught all of the limitations of claim 18 above. They also teach that the image transfer layer may include an opacifier material [0060]; however, they do not specifically teach the limitations claimed.
It would have been obvious to one having ordinary skill in the art to have combined in an opacifier into either layer of the image transfer layer of Figure 4, including placing it into the stratum 25. This is specifically suggested in the reference and would read on the embodiment of the mixed first and third layer claimed.
Claims 1-19, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP 07-145576), machine translation included.
The Examiner notes the presence of product-by-process limitations in claims 1-5, 8, 13, 14, 16 and 17. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
With regard to claims 1-5, 8, 13, 14, 16 and 17, Kuwabara et al. teach a transfer medium 707 of Figure 2 that can be used to print on a textile [0001] and [0034].
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The transfer medium includes a substrate 601, which reads on applicants’ support layer, an adhesion layer 602, which reads on applicants’ release layer, and a liquid-reactive resin layer 604, which reads on applicants’ image transfer layer [0036]-[0041]. The liquid-reactive resin layer 604 can be a combination of materials and may include polyvinyl pyrrolidone, carboxymethyl cellulose, starch or polyvinyl alcohol [0041]. The liquid-reactive resin layer 604 can be coated from a solution and can be dried with hot air at 50 C, which is 122 F [0043] and [0048]; however, Kuwabara et al. do not teach a specific example that has a combination of materials in the liquid-reactive resin layer 604.
Since Kuwabara et al. specifically suggest a combination of materials, it would have been obvious to one having ordinary skill in the art to have combined polyvinyl pyrrolidone with any of the carboxymethyl cellulose, starch or polyvinyl alcohol as the reference suggests it. The results of such a combination of materials would have been predictable. Also, combining equivalents known for the same purpose to form a third composition useful for the same purpose is prima facie obvious (MPEP 2144.06). Polyvinyl pyrrolidone reads on applicants’ ink receptor and any of carboxymethyl cellulose, starch or polyvinyl alcohol reads on applicants’ blocking agent.
Since Kuwabara et al. teach a structure formed from the same materials as preferentially disclosed in applicants’ specification and using a coating process with heating and drying of the coating, the resultant structure of the transfer medium of Kuwabara et al. will be the same as the structure of the transfer sheet resulting from the product-by-process limitations of the heating and drying conditions or the viscosities of the coating materials used when forming the transfer sheet of claims 1-5, 8, 13, 14, 16 and 17 absent objective evidence to the contrary.
With regard to claims 6, 15 and 22, these claims have intended use/functional limitations of the transfer sheet when they are printed with an ink composition. Kuwabara et al. also teach at [0045] that portions where ink is not printed are not transferred. Given the fact that Kuwabara et al. teach transfer at printed portions and no transfer at the unprinted portions along with having the same materials as claimed, the transfer medium of Kuwabara et al. can intrinsically perform the intended use limitations of disrupting the blocking agent in printed areas with an ink composition, allowing transfer in the printed area and impeding transfer in the non-printed areas as claimed.
With regard to claims 7 and 21, these claims have intended use limitations of what the substrate may be that is used with the transfer sheet in the process of transferring an image. Kuwabara et al. teach that their transfer medium can be used to transfer to textiles such as cotton [0044]. Given the fact that Kuwabara et al. can transfer to the same materials as claimed, the transfer medium of Kuwabara et al. can intrinsically be used to transfer an image to a dark colored or black cotton textile as claimed.
With regard to claims 9-12, these claims have intended use limitations of the process of transferring an image using an ink composition from the transfer sheet to the substrate. Given the fact that Kuwabara et al. teach a transfer medium identical to that claimed, it can intrinsically be used in the intended use limitations of transfer printing with an ink composition that has the degree of cure claimed, using the heat and pressure for the time period claimed and aging the printed substrate as claimed. Applicants’ claims are drawn to a transfer sheet and not a transfer printing process.
With regard to claims 18 and 19, the liquid-reactive resin layer 604 and the separation layer 603 together read on applicants’ image transfer layer including a first layer and second layer, respectively [0039]-[0041]. The separation layer 603 can comprise ethylene-vinyl acetate copolymer, which reads on applicants’ binder. As explained in the 112(b) rejection above, given the fact that Kuwabara et al. teach all of the limitations of claim 18, this reads on claim 19.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kuwabara et al. (JP 07-145576) in view of Cobb (US 2018/0093525).
Kuwabara et al. render obvious all of the limitations of claim 18 above; however, they do not specifically teach a material to increase opacity combined with the .
Cobb teaches including an opacifier in their image transfer layer 3 [0060]. This teaching would be broad enough to include it in any of the strata, such as stratum 25 that also includes a blocking agent and an ink receptor.
Since Kuwabara et al. and Cobb are both drawn to heat-transfer media, it would have been obvious to one having ordinary skill in the art to have combined in the opacifier of Cobb into the liquid-reactive resin layer 604 of Kuwabara et al. The results of such a combination would have been predictable; further, each of the elements would have performed the same in combination as they had separately. The rationale to add some pigment opacifier is to change the color of the layer depending upon the desired appearance.
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).
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/Gerard Higgins/Primary Examiner, Art Unit 1785