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 I, claims 1-13, in the reply filed on 6/3/2026 is acknowledged.
Claims 14-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 6/3/2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/488585, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Please see 112(a) rejection below.
Specification
The disclosure is objected to because of the following informalities:
In the third sentence of [0060], the phrase “the amount of polymer powder” is objected to grammatically as it lacks antecedent basis in the specification. The powder in question is called a “polyester powder” in each of paragraphs [0046]-[0052], and therefore it is grammatically confusing to refer to “the amount of polymer powder”. This objection can be overcome by changing the phrase to “the amount of polyester powder”.
In the first sentence of [0069], the phrase “the polymer powder layer” is objected to grammatically as it lacks antecedent basis in the specification. The powder layer in question is called a “polyester powder layer” in each of paragraphs [0061]-[0066] and [0068], and therefore it is grammatically confusing to now call it “the polymer powder layer”. This objection can be overcome by changing the phrase to “the polyester powder layer”.
Appropriate correction is required.
Claim Objections
Claims 1, 3, 7 and 9 are objected to because of the following informalities:
In claim 1, the phrase “the printed design” is objected to grammatically as the claim has not clearly established this term. This objection can be overcome by changing line 3 of the claim to insert “to form a printed design” after the word “ink”
In claim 3, the phrase “wherein melting the” is objected to grammatically. The objection can be overcome by changing the phrase to “wherein the melting of the” which is how the claim will be interpreted.
In claim 9, the phrases “applying a” and “to form a powdered printed design” are objected to grammatically as these phrases already are in claim 1. The objection can be overcome by changing the phrases to “applying the” and “to form the powdered printed design” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, the Examiner does not support for the limitations of “applying a polymer powder” in the specification as originally filed. Applicants have broadened the claims by changing from “polyester powder” to a “polymer powder”, which broadening does not find support in the specification. The limitations at [0069] have to be read in context with the rest of the specification that comes before it. At [0061]-[0066], it is clear that a polyester powder is applied to the design and the limitations at [0069] are referring to this polyester powder layer; further, in [0007], the specification clearly teaches away from using polymers other than polyester powder. This means applicants were not in possession of the broader concept of “applying a polymer powder” as claimed.
In each of claims 3, 6 and 8, the Examiner does not support for the limitations of “up to 95 seconds” in the specification as originally filed. The closest support for these ranges is at [0066], [0069] and [0071], but the range of “up to 95 seconds” would not be supported.
Claims 1-13 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 phrase “method for direct to film printing” renders the claim indefinite as it is unclear if this method also includes the transferring step. Applicants’ specification suggests that this is meaning, but the preamble does not make sense since direct to film printing does not require the transferring of the printed design. For purposes of Examination, this claim will be treated as being a method for transferring a design to a substrate.
In claim 1, the limitations of “melting the polymer powder” followed by “transferring the powdered printed design” render the claim indefinite because once the powder has been melted, it would no longer be a powder and the polymer particles would fuse together and form a film, so a powdered printed design would no longer exist. The rejection can be overcome by claiming “melting the [polyester] powder to form a melted [polyester] powder” and “transferring the printed design” which is how the claim will be interpreted.
In claim 3, the phrase “the polyester powder” lacks antecedent basis in the claim. Please note this issue should be addressed in concert with the 112(a) rejection above.
In claim 4, the phrase “the heat source” lacks antecedent basis in the claim. This rejection can be overcome by changing claim 4 to be dependent from claim 3, which is how the claim will be interpreted.
In claim 6, the phrase “the heat press” lacks antecedent basis in the claim. This rejection can be overcome by changing claim 6 to be dependent from claim 5, which is how the claim will be interpreted.
In claim 8, the phrase “the printed substrate” lacks antecedent basis in the claim. This rejection can be overcome by changing claim 8 to be dependent from claim 7, which is how the claim will be interpreted.
Claim Rejections - 35 USC § 103
Claims 1 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Teranaka (JP H04-308284) in view of Jon et al. (JP 2003-013374), machine translations included.
With regard to claims 1, 3-6 and 10, Teranaka discloses a sublimation printing method that reads on applicants’ method for direct to film printing [0001]. The method includes the steps of printing a sublimation printing ink on a transfer paper and then spreading a hot-melt powder on the ink layer, which reads on applicants’ applying a polymer powder to the printed design [0008]. The hot-melt powder is melted and transferred by thermocompression bonding to a substrate such as cotton [0009]-[0012] and Figure 1. The heating with a hot press machine at 200 C (~392 F) for about 15-30 seconds will both melt the powder and transfer the image printed with the sublimation printing ink, which reads on applicants’ melting and transferring steps using a heat source of conductive heating and the transferring with a heat press [0013]; however, Teranaka does not specifically teach that the printed image was formed by inkjet or that the transfer paper is a polymer coated film.
Jon et al. teach a digital textile printing method using sublimation transfer [0001]. Their method includes inkjet printing a transfer paper with the disperse dye ink that is then used for sublimation transfer onto a textile [0012]. The transfer paper can have a resin such as polyvinyl alcohol applied to the surface of a paper, which reads on applicants’ polymer coated film [0015].
Since Teranaka and Jon et al. are both drawn to sublimation printing of textiles, it would have been obvious to one having ordinary skill to have inkjet printed the image of Teranaka using inkjet printing and to have used the transfer paper substrate of Jon et al. as the transfer paper of Teranaka. The results of such a substitution would have been predictable to one having ordinary skill. The rationale to use inkjet printing is that one can form a desired image with a lower cost as complex printing machinery would not be needed.
With regard to claim 7, the transfer paper 1 is peeled to finish the transfer process, which reads on the removal step [0013].
With regard to claim 8, this represents a mere duplication of the transferring step. It would have been obvious to have duplicated the thermocompression step to be two passes of thermocompression at 200 C for 15-30 to make sure the image properly transferred to the substrate.
With regard to claim 9, Teranaka in view of Jon et al. teach applying a polymer powder to the image; however, they do not specifically teach the amount of powder to apply.
It would have been obvious to one having ordinary skill to have applied any amount of powder, including from 0.01 to 1 g/in2 of powder, such that there was enough hot melt powder to properly adhere the image to the desired substrate while not being so much as to waste materials.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Teranaka (JP H04-308284) in view of Jon et al. (JP 2003-013374) and further in view of “Print Heads” (https://largeformatscanners.com/what-is-a-print-head-and-how-does-it-work/#:~:text=The%20two%20types%20are%20Piezo,the%20print%20head%20are%20different.).
Teranaka in view of Jon et al. render obvious all of the limitations above; however, they do not specifically teach the type of inkjet print heads used.
“Print Heads” teaches that inkjet print heads come in two types, piezo and thermal (pg. 1).
Since Teranaka in view of Jon et al. and “Print Heads” are drawn to inkjet printing processes, it would have been obvious to one having ordinary skill in the art to have used either of piezo or thermal inkjet printheads in the inkjet printing process of Teranaka in view of Jon et al. as these are the known types. The rationale to use them is that drop-on-demand allow for precise printing of desired images.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Teranaka (JP H04-308284) in view of Jon et al. (JP 2003-013374) and further in view of Donenfeld (EP 0036639).
Teranaka in view of Jon et al. render obvious all of the limitations above; however, they do not specifically teach the type of polyester or the type of polymer coated film.
Donenfeld teaches polyesters, such as poly(ethylene adipate), for bonding a sublimation dye in a transfer process to fabrics (pg. 5). The dye transfer paper can be a sheet material coated with a release layer having silicones or waxes (pg. 13).
Since Teranaka in view of Jon et al. and Donenfeld are drawn to dye sublimation printing of textiles, it would have been obvious to one having ordinary skill to have substituted the polyesters and release agent treated substrates of Donenfeld for the transfer papers and polyester of Teranaka in view of Jon et al. The results of such a substitution would have been predictable to one having ordinary skill.
Since Teranaka in view of Jon et al. and “Print Heads” are drawn to inkjet printing processes, it would have been obvious to one having ordinary skill in the art to have used either of piezo or thermal inkjet printheads in the inkjet printing process of Teranaka in view of Jon et al. as these are the known types. The rationale to use them is that drop-on-demand allow for precise printing of desired images. The silicone release agent would read on the cold peel film and the wax release layer would read on a hot peel film.
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.
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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.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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