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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant's arguments filed 07/14/2026 have been fully considered but they are not persuasive.
Regarding applicants’ arguments on claim 1, the applicant argues that the references are not combinable for several reasons. The first reason was that the reference Clement already included an adhesion promoter and; therefore, would not need to combine with reference Bauer’s adhesion promoter. The second reason was how the “polyurethane-based primer or polyester-based primer” taught by reference Bauer is technically incompatible with the polyvinyl alcohol-based binder taught by both the reference Clement and claim 1 of the present application. Finally, the third reason was how reference Bauer’s aim to reduce or seal the porosity of the paper teaches away from the claimed “Gurley value” feature and makes the reference Bauer incompatible with reference Clement. The applicants’ arguments have been fully considered. However, the examiner respectfully disagrees.
Firstly, although reference does acknowledge an adhesion promoter, this does not mean that a person of ordinary skill in the art would have no reason to consider other known alternative adhesion promoters. Bauer acknowledges a primer as an adhesion promoter that include polyurethane-based primer or polyester-based alternatives and; therefore, provides a known alternative adhesion promoter that can be considered by someone skilled in the art. Additionally, as stated in the MPEP 2145(X)(A), applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). A reference is to be considered not only for what it expressly states, but for what it would reasonably have suggested to one of ordinary skill in the art. In re Delisle, 160 USPQ 806 (CCPA 1969).
Secondly, the examiner emphasizes that the applicant’s argument of reference Bauer being incompatible with reference Clement is not consistent with the scope given in claim 1 of the present application. Claim 1 expressly acknowledges the adhesion promoter comprising a polyurethane-based or polyester-based or other alternatives while the binder is a polyvinyl alcohol. Thus, the claim does not exclude the adhesion promoting types that the applicant is now stating would be incompatible. Therefore, as there is no technical evidence provided against such combination and the claim expressly acknowledges the combination, the applicants’ argument that the polyurethane-based or polyester-based promoter is “technically incompatible” with the polyvinyl alcohol binder is insufficient. Additionally, the MPEP 2145 (III) states “it is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012). "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Lastly, regarding the applicants’ third argument, the “Gurly value” limitation is a new amendment to claim 1 and was not part of the consideration used in the previous rejection. However, the reference Clement does teach the “Gurly value” range limitation in paragraph [0030]. The applicants’ argument that reference Bauer teaches away from the “Gurley value” is not persuasive as the Bauer reference is relied on for teaching alternative adhesion promoters, not for the limitations that reference Clement teach. Additionally, as stated in the MPEP 2145(III), "[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review." In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983). Furthermore, as stated in the MPEP 2145(X)(A), the test for combining references is not what the individual references themselves suggest but rather what the combination of the disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin, 170 USPQ 209 (CCPA 1971).
Applicant’s arguments with respect to claim(s) 1, 4-6, 8, and 16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim(s) 1, 4-6, 8, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Clement et al. (DE 202018006588 U1) in view of Bauer (US 20120135259 A1).
Regarding claim 1, Clement teaches a method for manufacturing paper printable with an inkjet printer and/or analog printing for use as a decor paper in a laminate panel (Paragraph [0001] describes a method for manufacturing an ink jet printable paper or sheet to use as "decorative paper or sheet" for manufactured decorative panels.), the method comprising:
providing a paper layer (Paragraph [0013] describes the first step of the method is to provide a paper layer.);
coating at least one side of the paper layer with an ink receiver coating (Paragraph [0013] describes the second step of the method to be coating at least one side of the paper layer with an inkjet ink-receiving coating.);
wherein the ink receiver coating includes a binder (Paragraph [0013] describes how the inkjet ink-receiving coating in the second step comprises a binder.) and the binder is polyvinyl alcohol (Paragraph [0025] describes how polyvinyl alcohols are used at least or mainly for the binder in the inkjet ink-receiving coating.);
providing the paper layer with an ink adhesion promoter in the ink receiver coating (Paragraph [0023] describes an adhesion promoter, such as amino- organo-silanes, and /or other silanes are included and applied in the method.);
wherein the paper including the ink receiver coating has a Gurley value of between 10 and 60 seconds (Paragraph [0030] describes how the paper using the method of the invention taught by Clement has a preferable Gurley, mistranslated in the English translated document as “Cucumbery” which is not a technical term, value to be between 30 and 80 seconds which overlaps with the claimed range.)
Clement fails to teach wherein the ink adhesion promoter includes urea-based promoter, polyurethane-based promoter, casein-based promoter, styrene-based promoter, polyester-based promoter, alkyd- based promoter, ketone-based promoter, melamine-based promoter, silicone-based promoter, cellulose-based promoter, gum-based promoter, acrylic-based promoter or a mixture or a copolymer thereof.
However, Bauer teaches wherein the ink adhesion promoter includes urea-based promoter, polyurethane-based promoter, casein-based promoter, styrene-based promoter, polyester-based promoter, alkyd- based promoter, ketone-based promoter, melamine-based promoter, silicone-based promoter, cellulose-based promoter, gum-based promoter, acrylic-based promoter or a mixture or a copolymer thereof (Paragraph [0033] describes an adhesion promoter where “… primers on a polyurethane basis, polyester basis or also epoxy resin basis, known per se, can be used as…” an adhesion promoter.).
Clement and Bauer are considered analogous to the art because they are in the same field involving a method for an inkjet printer for printable medium. Therefore, it would be obvious for someone with ordinary skill in the art before the effective filing date of the claimed invention to modify the method taught by Clement to also apply wherein the ink adhesion promoter includes urea-based promoter, polyurethane-based promoter, casein-based promoter, styrene-based promoter, polyester-based promoter, alkyd- based promoter, ketone-based promoter, melamine-based promoter, silicone-based promoter, cellulose-based promoter, gum-based promoter, acrylic-based promoter or a mixture or a copolymer thereof taught by Bauer. This would have been done for the purpose of promoting the adhesion of the paper medium and the dyeing liquid when the dyeing liquid is applied (Bauer, paragraph [0035]).
Regarding claim 4, the combination of Clement and Bauer teaches the method according to claim 1, Clement further discloses wherein the ink adhesion promoter is provided in an amount above 0.2 g/sqm (Paragraph [0029] describes how the "particle surface modifying agents or adhesion promoters" ranged between 0.05 - 5 g/sqm).
Regarding claim 5, the combination of Clement and Bauer teaches the method according to claim 1, Clement further discloses wherein the ink receiver coating comprises a pigment (Paragraph [0013] describes how the inkjet ink-receiving coating in the second step comprises at least a pigment.).
Regarding claim 6, the combination of Clement and Bauer teaches the method according to claim 5, Clement further discloses wherein the pigment comprises silica (Paragraph [0023]-[0024] describe how silica particles are used at least or mainly for the pigment of the inkjet ink-receiving coating and gives several examples.).
Regarding claim 8, the combination of Clement and Bauer teaches a printable paper obtained according to the method of claim 1 (Clement, paragraph [0001] and [0062] describe how the manufacturing method makes ink jet printable paper or sheets obtained for manufacturing decorative panels.).
Regarding claim 16, the combination of Clement and Bauer teaches the method according to claim 1, Clement further discloses wherein the coating is at least partially performed on a roll-to-roll printing equipment (Paragraph [0065] describes how the printing application preferably, in the “case that the coating is produced wholly or partly in the printing device”, “roll-to-roll” or “roll-to-sheet”.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA DEPHENIA QUINN whose telephone number is (571)272-6375. The examiner can normally be reached Monday-Friday 6:30 - 4:00 CT.
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/N.D.Q./Examiner, Art Unit 2853
/RICARDO I MAGALLANES/Supervisor Patent Examiner, Art Unit 2853
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