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
Claims 8-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method for making a patterned article and patterned article comprising a multilayer film, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 6th, 2026.
Applicant’s election without traverse of Group I (claims 1-7) in the reply filed on April 6th, 2026, is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 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.
Claim 1 recites the phrase “the upper portion” and “the lower portion”, but there is no antecedent basis for these limitations. Claim 1 specifies pluralities of upper and lower edges which define “respective upper and lower portions,” meaning, multiple upper portions and multiple lower portions are present. In such case, it is unclear which upper portion and which lower portion, specifically, are referenced by the phrases “the upper portion” and “the lower portion”. In the interest of compact prosecution, the claims will be interpreted as reciting “an upper portion” and “a lower portion”. Similarly, claim 1 recites the phrase “the plurality of lower edges”, which lacks antecedent basis. The claimed article comprises “pluralities of upper and lower edges”, meaning, multiple pluralities of lower edges are present. In the interest of compact prosecution, claim 1 will be interpreted as reciting “a plurality of lower edges”.
Claims 2-7 are rejected due to dependence on indefinite claim 1.
Claim 2 recites the phrases “the upper, not the lower, portion” and “the plurality of upper edges”, which lack antecedent basis. In the interest of compact prosecution, the claim will be interpreted as reciting “an upper, but not a lower, portion” and “a plurality of upper edges”.
Claims 3-4 are rejected due to dependence on indefinite claim 2.
Claim 6 recites “the upper and lower portions”, but it is unclear which upper and lower portions are being referenced (i.e., the claim lacks antecedent basis). In the interest of compact prosecution, the claim will be interpreted as reciting “a set of upper portions a set of lower portions”. Claim 6 also recites “disposed in respective first and planes”, which is grammatically incorrect so as to render the claim indefinite. It is not clear if the phrase should instead read “disposed in respective first and second planes”, or if “first” is missing a specific structure (i.e., such as “first edges and planes”). In the interest of compact prosecution, the claim will be interpreted as specifying first and second planes.
Claim 7 recites “the upper and lower portions”, but it is unclear which upper and lower portions are being referenced (i.e., the claim lacks antecedent basis). In the interest of compact prosecution, the claim will be interpreted as reciting “a set of upper portions a set of lower portions”.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chisaka et al (US2010/0166997A1).
With regards to claim 1, Chisaka discloses a pattern-printed decorative sheet (i.e., a patterned article) comprising a colored base film 27 depicted as including a top surface and a bottom surface, with a plurality of recesses located in the top surface (i.e., a carrier layer comprising a microstructured first major surface and an opposing second major surface) (Chisaka: para. [0015]; Fig. 2). Specifically, the plurality of recesses in the top surface are depicted as the first major surface comprising pluralities of upper and lower edges spaced apart along a thickness of the carrier layer and defining respective upper and lower portions of the first major surface the lower portion disposed between the upper portion and the second major surface (as is innate to a recessed structure) (Chisaka: Fig. 2). The pattern-printed decorative sheet includes a pattern printed layer 28 comprising inorganic particles depicted as located only within the plurality of recesses (i.e., a first functional layer disposed on a lower, but not an upper, portion of the first major surface) (Chisaka: para. [0015] and [0020]; Fig. 2). The pattern printed layer 28 is depicted as comprising at least one first micro-cut inorganic layer comprising a plurality of cut edges substantially coextensive with the plurality of lower edges (as is innate to printed material located within rectangular recesses, which have sidewalls, or edges, that are coextensive with a plurality of lower edges). The phrases “micro-cut” and “cut” technically constitute product-by-process language. Such language does not limit the present claims to the material performance of the recited steps, but rather, only the structure implied, per MPEP 2113. In the present case, the present claims require an inorganic layer with a plurality of edges which are substantially coextensive with the plurality of lower edges, and Chisaka discloses such a product. In addition, the term “micro” in “micro-cuts” is met by Chisaka, as its recesses are micron-scale (Chisaka: para. [0016] and [0025]). In further support of the foregoing, an annotated version of Figure 2 of Chisaka is provided below for clarity.
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[AltContent: arrow][AltContent: arrow][AltContent: textbox (Functional Layer)][AltContent: textbox (Carrier Layer)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Upper Edges)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Lower Edges)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Cut Edges)]
With regards to claim 2, Chisaka further depicts a combination of a transparent resin film 24, a transparent resin layer 25, and additional patterned printed layer 26 (i.e., the combination constituting a functional layer), as disposed on an upper, but not lower, portion of the first major surface (Chisaka: para. [0015]; Fig. 2). The pattern printed layer 26 comprises inorganic particles (i.e., constitutes at least one first inorganic layer) and is depicted as within rectangular recesses of transparent resin layer 25 (i.e., more specifically, constitutes at least one first micro-cut inorganic layer comprising a plurality of cut edges substantially coextensive with the lower edges (Chisaka: para. [0015] and [0020]; Fig. 2). The phrases “micro-cut” and “cut” technically constitute product-by-process language. Such language does not limit the present claims to the material performance of the recited steps, but rather, only the structure implied, per MPEP 2113. In the present case, the present claims require an inorganic layer with a plurality of edges which are substantially coextensive with the plurality of lower edges, and Chisaka discloses such a product. In addition, the term “micro” in “micro-cuts” is met by Chisaka, as its recesses are micron-scale (Chisaka: para. [0016] and [0025]).
With regards to claim 3, it is noted that the phrases “transfer article” and “transferrable from” are rather broad according to the present specification. Paragraph [0057] of the present specification (PGPub) describes functional layers as those capable of being cut by a tool in order to consider them “transferrable”. The definitions for the terms “transfer” and “transferrable” are actually broader than those normally used within the art. It is noted that, technically, any layer can be removed via cutting with an appropriate tool. Therefore, the pattern-printed decorative sheet of Chisaka is considered to be a transfer article, and the second functional layer is considered transferrable from the first carrier layer to a first adhesive layer, leaving the first functional layer disposed on the carrier layer such that the first functional layer is transferrable from the carrier layer to a second adhesive layer (Chisaka: Fig. 2). Note that the claim does not positively recite a final article which has been transferred (i.e., the claim does not positively recite a second functional layer transferred to a first adhesive layer and a first functional layer transferred to a second adhesive layer).
With regards to claim 4, the second micro-cut inorganic layer is depicted as comprising a plurality of spaced apart flat sections (i.e., a plurality of spaced apart plates) (Chisaka: Fig. 2).
With regards to claim 5, the pattern printed layer forms a vessel pattern (i.e., wood vessel pattern) which may be, more specifically, a cross-grain pattern (i.e., a mesh pattern) (Chisaka: para. [0002]-[0003] and [0033]-[0035]).
With regards to claim 6, since the upper and lower portions of the first major surface are at different heights, they are technically disposed in respective first and second planes which are separated from one another in a direction, the direction being a thickness direction of the carrier layer (Chisaka: Fig. 2). It is noted that the claim is rather broad in that it is directed to a function (i.e., “when the patterned article is disposed on a planar surface”).
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Chisaka et al as applied to claim 1 above.
With regards to claim 7, Chisaka discloses a patterned article as applied to claim 1 above (see above discussion). It is noted that the average separation of the upper and lower portions as claimed corresponds to the thickness of the pattern printed layer 28 (i.e., the thickness of the patterned printed layer is essentially defined by an average separation of upper and lower portions along a thickness direction of the carrier layer (Chisaka: Fig. 2). The thickness of the patterned printed layer 28 ranges from about 0.1 to 30 micrometers, which overlaps the claimed range of 0.3 to 10 micrometers (Chisaka: para. [0025]). Instances of overlapping ranges have been held sufficient to establish a prima facie case of obviousness. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN WEYDEMEYER whose telephone number is (571)270-1907. The examiner can normally be reached Monday - Friday 8:30 - 5:00.
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
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