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 .
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson et al. (US 2010/0086753 A1)
As to claim 1, Johnson et al. teaches a process comprising a) providing a printing substrate (102, Figs 1-2); b) applying an underlayer of polymer coating over the printing substrate (104, Fig 2, toner/polymer including layer); c) applying an underlayer of digital foil over the polymer coating underlayer (106 of Fig 2, para 0023-0024); and d) applying an analog flood coating top layer over the digital foil underlayer (coating 110 in Fig. 2, applied as analog flood coating in para 0035). Johnson et al. does not explicitly teach that the top coating layer is a matte layer. However, the affect achieved by matte coating is purely aesthetic/purely related to ornamentation. The court has found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art; In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2010/0086753 A1) in view of the admitted prior art of the specification
As to claim 1, Johnson et al. teaches a process comprising a) providing a printing substrate (102, Figs 1-2); b) applying an underlayer of polymer coating over the printing substrate (104, Fig 2, toner/polymer including layer); c) applying an underlayer of digital foil over the polymer coating underlayer (106 of Fig 2, para 0023-0024); and d) applying an analog flood coating top layer over the digital foil underlayer (coating 110 in Fig. 2, applied as analog flood coating in para 0035). Johnson et al. does not explicitly teach that the top coating layer is a matte layer. The instant specification, in paragraph 0002, teaches that it is well known that an analog flood coating layer can be a matte analog flood coating layer to give the article a matte finish. Therefore, it would have been obvious to one of ordinary skill in the art to modify Johnson’s flood coating layer to be an analog flood coating layer as taught by the instant specification so as to give the article a matte finish.
Further, the claim would have been obvious because the design incentives or market forces provided a reason to make an adaptation, and the invention resulted from application of the prior knowledge in a predictable manner. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)
Claim(s) 2-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2010/0086753 A1) alone, or Johnson et al. in view of the admitted prior art of the specification, as discussed above, and in further view of Tsai et al. (US 2021/0197609 A1)
As to claim 2, layer 104 is applied digitally in para 0015 but Johnson et al. is not explicit as to ink jet printing. Tsai et al. teaches a similar process to adhere foil to a substrate where the underlayer is a polymer layer that is deposited by printing patterns or words than need to be foiled then placing the foil over the pattern in para 0004. This is also referred to as an undercoat layer in para 0010-0011 and achieves the same function as that of layer 104 in Johnson et al. Therefore, it would have been obvious to one of ordinary skill in the art to use Tsai’s undercoat layer applied by inkjet printing as the undercoat layer in Johnson et al. as Tsai et al. teaches the art recognized suitability and utility of such.
As to claim 3, layer 104 is applied in a pattern in Johnson para 0015 and in Tsai et al. para 0010-0011.
As to claim 4, the foil 106 is applied to the layer 104 in Johnson para 0023. Para 0032 describes pressing foil materials using a foil press where the foil is fused to the polymer pattern underneath. To get the pattern as shown in Fig. 2, foil that is not adhered would necessarily have to be removed or stripped away. This same reasoning would apply to Tsai et al. paras 0010-0011.
As to claim 5, Johnson et al. teaches a process comprising a) providing a printing substrate (102, Figs 1-2); d) applying an underlayer of polymer coating over the printing substrate (104, Fig 2, toner/polymer including layer); e) applying an underlayer of digital foil over the polymer coating underlayer (106 of Fig 2, para 0023-0024); and f) applying an analog flood coating top layer over the digital foil underlayer (coating 110 in Fig. 2, applied as analog flood coating in para 0035). Johnson et al. does not explicitly teach that the top coating layer is a matte layer. The instant specification, in paragraph 0002, teaches that it is well known that an analog flood coating layer can be a matte analog flood coating layer to give the article a matte finish. Therefore, it would have been obvious to one of ordinary skill in the art to modify Johnson’s flood coating layer to be an analog flood coating layer as taught by the instant specification so as to give the article a matte finish.
Johnson et al. teaches applying other printing upon the printing substrate (108 in Figs. 1,2) but not with a protective layer before printing the polymer coating in (d). Tsai et al. teaches that it is common in the art that before a polymer adhesive layer for foil is printed that a printed article already contains polymer print layers with a protective layer in para 0004. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Johnson et al. to include a printed layer and protective layer on its substrate before printing the foil adhesive layer as taught by Tsai et al. to achieve the desired effect of having the foil printed over words or images and protecting those words and images during further foil printing.
As to claim 6, layer 104 is applied digitally in para 0015 but Johnson et al. is not explicit as to ink jet printing. Tsai et al. teaches a similar process to adhere foil to a substrate where the underlayer is a polymer layer that is deposited by printing patterns or words than need to be foiled then placing the foil over the pattern in para 0004. This is also referred to as an undercoat layer in para 0010-0011 and achieves the same function as that of layer 104 in Johnson et al. Therefore, it would have been obvious to one of ordinary skill in the art to use Tsai’s undercoat layer applied by inkjet printing as the undercoat layer in Johnson et al. as Tsai et al. teaches the art recognized suitability and utility of such.
As to claim 7, layer 104 is applied in a pattern in Johnson para 0015 and in Tsai et al. para 0010-0011.
As to claim 8, the foil 106 is applied to the layer 104 in Johnson para 0023. Para 0032 describes pressing foil materials using a foil press where the foil is fused to the polymer pattern underneath. To get the pattern as shown in Fig. 2, foil that is not adhered would necessarily have to be removed or stripped away. This same reasoning would apply to Tsai et al. paras 0010-0011.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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, Gordon Baldwin can be reached at 571-272-5166. 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.
KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718