DETAILED ACTION
This action is in response to the amendment filed on 6/26/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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
Newly submitted claims 21-26 are directed a non-elected species (Species IV-A) and do not read on/encompass the elected Species II-A (i.e. new claims 21-26 are directed to wherein the plurality of cavities are created after arranging the printing pattern or while arranging the printing pattern as in non-elected Species IV-A directed to the arrangement for manufacturing a board element and its use in Figure 2a whereas elected Species II-A directed to the arrangement for manufacturing a board element and its use in Figure 1b was elected in the response filed on 1/21/2026 and is directed to and consistent with amended claim 1 wherein the plurality of cavities are created before arranging the printing pattern in that “arranging the printing pattern on a front side of the substrate opposite of the plurality of cavities in the rear side” via print application unit 12 in Figure 1b) accordingly, claims 21-26 are withdrawn from consideration as being directed to a non-elected invention.
Claim Rejections - 35 USC § 103
Claims 1, 3-9, 11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sienkiewicz et al. (U.S. Patent 7,195,727).
Regarding claim 1, Sienkiewicz discloses a process for manufacturing a board element comprising a substrate (having a front side and a rear side) and a plurality of cavities (Figure 28), the process comprising: providing the substrate (layer 73), the substrate comprising a polymer-based material (extruded thermoplastic material) and a plurality of cavities (between bumps of an orange peel like texture or any other suitable texture including surface roughness and having cavities as depicted in Figure 28) in a rear side (formed by embossing rollers 220, 222 are patterned rollers to emboss the texture 224 of bumps into for example both of the two major surfaces 223, 223’ of sheet 73 or only the rear side 223’ see Column 8, lines 48-54 and including “at least one patterned roll may be provided in order to emboss or otherwise form a texture (e.g. orange peel texture) in an extruded colored layer prior to lamination of a clear coat thereover” and Column 23, lines 16-55 and including “The embossing roller(s) 220, 222 may emboss a pattern into one or both of the two major surfaces 223, 223’ of sheet 73.”). Sienkiewicz further discloses a process for manufacturing a board element comprising a substrate (having a front side and a rear side) and a printing pattern (Figure 27), the process comprising: providing the substrate (layer 73), the substrate comprising a polymer-based material (extruded thermoplastic material); and arranging the printing pattern (design 212) on a front side of the substrate; and coordinating a position of the printing pattern with the substrate by feeding to a nip of rollers (85, 87) so that the printing pattern overlays the substrate to visibly display a design such as a logo, warning label, or any desirable suitable letter(s) and/or number(s) (Column 5, lines 7-32 and Column 10, line 66 to Column 11, line 2 and Column 22, line 45 to Column 23, line 15).
As to the limitations in claim 1 of “arranging the printing pattern on a front side of the substrate opposite of the plurality of cavities in the rear side; and coordinating a position of the printing pattern with a location of the plurality of cavities”, Sienkiewicz does not expressly disclose the process for manufacturing the board element comprising the substrate and the plurality of cavities (Figure 28) includes a visible design (Figure 27). Sienkiewicz does not teach away from the process for manufacturing the board element comprising the substrate and the plurality of cavities includes a visible design. Sienkiewicz teaches each process for manufacturing the board element comprises arranging a clear coat layer (79) on the substrate by coordinating a position of the clear coat layer with the substrate by feeding to the nip of rollers (85, 87) (Figures 27 and 28). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process for manufacturing the board element comprising the substrate and the plurality of cavities (Figure 28) taught by Sienkiewicz includes arranging a printing pattern of a visible design (212, Figure 27) on a front side of the substrate (73) as suggested by Sienkiewicz opposite the plurality of cavities (bumps 224 on surface 223’ as formed by embossing rollers 220, 222 forming the cavities between bumps 224 in both the front and the rear side or only the rear side) in the rear side; and including by coordinating a position of the clear coat layer (79) comprising the printing pattern with a location of the substrate comprising the plurality of cavities by feeding to the nip of rollers (85, 87) thereby coordinating a position of the printing pattern is arranged on the front side of the substrate with a location of the plurality of cavities provided in the rear side of the substrate so that the textured board element visibly displays a design such as a logo, warning label, or any desirable suitable letter(s) and/or number(s) as suggested by Sienkiewicz in column 27, lines 45-67.
Regarding claim 3, arranging the printing pattern as taught by Sienkiewicz comprises applying a print layer (comprising design 212 and clear coat layer 79) on the front side (see Figure 27).
Regarding claim 4, Sienkiewicz teaches the print layer is a printed polymer-based sheet (Column 18, lines 4-41 and Column 22, lines 45-67).
Regarding claim 5, Sienkiewicz teaches the print layer comprises print layer sections (each design 212 is a section), and wherein at least one print layer section comprising the printing pattern is applied on the front side of the substrate (see Figure 27).
Regarding claim 6, Sienkiewicz teaches the printing pattern is repeated in the print layer sections (see Figure 27 and Column 22, lines 45-53).
Regarding claim 7, Sienkiewicz teaches the printing pattern is repeated as regions (regions of design 212 on clear coat layer 79), separated by edge sections (the sections of clear coat layer 79 between regions 212), wherein the plurality of cavities form a cavity pattern that is repeated as regions (a region is a cavity pattern having a length the same length as that of design 212) separated by separation portions (a separation portion is a cavity pattern having a length the same length as that of a section of clear coat layer 79 between regions 212), and wherein the coordinating includes arranging the edge sections and the separation portions at essentially same horizontal positions.
Regarding claim 8, Sienkiewicz teaches creating the plurality of cavities in the rear side by impressing a substrate portion by an impression device comprising impression elements (embossing roller 222), and arranging the printing pattern on the front side by a print application unit (comprising silk-screening station 210 and rollers 85, 87 and considered the corresponding structure, material, or acts described in the specification and equivalents thereof), the print application unit being synchronized (to print and rotate) with the impression device (to rotate) for obtaining the coordination of the position of the printing pattern with the location of the plurality of cavities fed to the nip of rollers (85, 87).
Regarding claim 9, Sienkiewicz teaches determining a print schedule based on location data of the printing pattern arranged opposite the plurality of cavities is every so many feet, and controlling the arranging of the printing pattern on the front side based on the determined print schedule by printing the printing pattern every so many feet (Column 22, lines 50-53).
Regarding claim 11, Sienkiewicz teaches applying a wear layer (clear coat 79 and/or a protective layer) on the printing pattern (Column 23, lines 1-15).
Regarding claim 13, Sienkiewicz teaches dividing (by cutting) the board element at a separation portion separating a first (on one side of the cut) and a second (on the other side of the cut) group of cavities, thereby obtaining at least one board member or at least one panel (Column 13, lines 49-51).
Regarding claim 14, Sienkiewicz does not expressly teach the board dividing position. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention a board dividing position in Sienkiewicz is based on the position of the printing pattern so that the cut is between the repeating printing patterns (and corresponds with the edge sections and separation portions at essentially same horizontal positions) so that the visibly displayed design such as a logo, warning label, or any desirable suitable letter(s) and/or number(s) is not destroyed/interrupted.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sienkiewicz as applied to claims 1, 3-9, 11, 13, and 14 above, and further in view of DAI et al. (U.S. Patent Application Publication 2020/0377711).
Sienkiewicz is described above in full detail.
Regarding claim 2, Sienkiewicz teaches arranging the printing pattern comprises printing the front side of the substrate as alternative to applying the print layer on the front side (Column 23, lines 11-15). Sienkiewicz teaches the printing is silk-screening or otherwise deposited/formed. It is well understood by one of ordinary skill in the art conventional and predictable printing on extruded (and embossed) thermoplastic is digital printing as evidenced by DAI (Paragraph 0006). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention arranging the printing pattern as taught by Sienkiewicz comprises digitally printing the front side of the substrate opposite of the plurality of cavities in the rear side (and thereby coordinating a position of the printing pattern is arranged on the front side of the substrate with a location of the plurality of cavities provided in the rear side of the substrate) as a simple substitution of one known printing technique for another to yield predictable results as evidenced by DAI.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sienkiewicz as applied to claims 1, 3-9, 11, 13, and 14 above, and further in view of Kackmann-Schneider et al. (U.S. Patent Application Publication 2017/0297257).
Sienkiewicz is described above in full detail.
Regarding claim 12, Sienkiewicz does not expressly teach embossing at least a portion of the front side of the substrate comprising the printing pattern such that an embossed structure in register with the printing pattern is obtained wherein embossed-in-register technology to emboss at least a portion of a front side of a substrate (and including a wear layer) comprising a printing pattern such that an embossed structure in register with the printing pattern is obtained is well understood by one of ordinary skill in the art to confer a 3D aspect to the design as evidenced by Kackmann-Schneider (Figure 1 and Abstract and Paragraphs 0023-0032). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process taught by Sienkiewicz further comprising embossing at least a portion of the front side of the substrate comprising the printing pattern such that an embossed structure in register with the printing pattern is obtained as is well understood by one of ordinary skill in the art to confer a 3D aspect to the design as is well understood by one of ordinary skill in the art as evidenced by Kackmann-Schneider.
Claims 1-3, 5-9, 11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Gelli et al. (U.S. Patent Application Publication 2006/0243383) in view of Wilson et al. (U.S. Patent Application Publication 2007/0239126) and optionally further Furman et al. (U.S. Patent Application Publication 2008/0128101).
Regarding claim 1, Gelli discloses a process for manufacturing a board element comprising a substrate and a printing pattern, the process comprising: providing the substrate (first ply V1), the substrate comprising a plurality of cavities in a rear side (protuberances P1 formed by embossing roller 5); arranging the printing pattern on a front side of the substrate opposite of the plurality of cavities in the rear side (protuberances P1 are colored on their front surface S downstream of the embossing by printing unit 9); and coordinating a position of the printing pattern with a location of the plurality of cavities (so that protuberances P1 are colored on their front surface S, Paragraph 0052) (Figures 1 and 5 and Paragraphs 0002, 0019, 0020, 0043-0045, 0052, and 0059).
As to the limitation in claim 1 of the substrate “comprising a polymer-based material”, Gelli teaches the substrate is of tissue paper such as for toilet paper, kitchen towels, etc. without expressly teaching the material of the paper. It is well understood by one of ordinary skill in the art the tissue paper comprise a hydrophilic polymer-material as the fibers of the paper and/or as added superabsorbent (superabsorbent is a polymer-based material as optionally evidenced by Furman, Paragraph 0002) as has an affinity for absorbing a liquid or a fluid and/or to increase the absorbent capacity of the paper as evidenced by Wilson (Paragraphs 0001 and 0017). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the substrate taught by Gelli comprises a polymer-based material as is the conventional and predictable material for the substrate including as is hydrophilic and/or has an affinity for absorbing a liquid or a fluid and/or to increase the absorbent capacity of the substrate as evidenced by Wilson and optionally further Furman.
Regarding claims 2 and 9, Gelli does not require any particular printing unit (9). It is well understood by one of ordinary skill in the art the printing unit for tissue paper is a digital printing unit as is cost effective, efficient, and preselected images can be created at a desired position or location, in a desired size, in a predetermined color(s), and at a correct registration using a controller as evidenced by Wilson (Paragraphs 0004, 0019, and 0040). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the arranging the printing pattern taught by Gelli as modified by Wilson and optionally further Furman comprises digitally printing the front side as is well understood by one of ordinary skill in the art for printing that is cost effective, efficient, and preselected images can be created at a desired position or location, in a desired size, in a predetermined color(s), and at a correct registration using a controller as evidenced by Wilson so that the preselection and control includes determining a print schedule based on location data of the plurality of cavities and controlling the arranging of the printing pattern on the front side based on the determined print schedule so that protuberances P1 (corresponding to the location of the plurality of cavities) are colored on their front surface S as directed to by Gelli.
Regarding claim 3, arranging the printing pattern as taught by Gelli as modified by Wilson and optionally further Furman comprises applying a print layer of ink on the front side.
Regarding claim 5, Gelli teaches the print layer comprises print layer sections (on each cavity), and wherein at least one print layer section comprising the printing pattern is applied on the front side of the substrate (see Figure 5).
Regarding claim 6, Gelli teaches the printing pattern is repeated in the print layer sections (on each cavity see Figure 5).
Regarding claim 7, the printing pattern taught by Gelli as modified by Wilson and optionally further Furman is repeated as regions (on the protuberances P1, a region comprising two or more protuberances P1), separated by edge sections (a section is between the two or more protuberances P1), wherein the plurality of cavities form a cavity pattern (the two or more protuberances P1) that is repeated as regions separated by separation portions (between the two or more protuberances P1), and wherein the coordinating includes arranging the edge sections and the separation portions at essentially same horizontal positions (Figure 5).
Regarding claim 8, the process taught by Gelli as modified by Wilson and optionally further Furman further comprises creating the plurality of cavities in the rear side by impressing a substrate portion by an impression device (embossing roller 5) comprising impression elements, and arranging the printing pattern on the front side by a print application unit (comprising a digital printer and considered the corresponding structure, material, or acts described in the specification and equivalents thereof), the print application unit being synchronized with the impression device for obtaining the coordination of the position of the printing pattern with the location of the plurality of cavities (so that protuberances P1 are colored on their front surface S).
Regarding claim 11, Gelli teaches applying a wear layer (second ply V2) on the printing pattern (Figure 5).
Regarding claims 13 and 14, Gelli does not expressly teach dividing the board element. It is well understood by one of ordinary skill in the art to divide the continuously produced board element to obtain individual board members wherein the board dividing position is based on the position of the printing pattern so that each board element has a distinct image as evidenced by Wilson (Paragraph 0036). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process taught by Gelli as modified by Wilson and optionally further Furman further comprise dividing the board element at a separation portion separating a first and a second group of cavities, wherein a board dividing position is based on the position of the printing pattern, thereby obtaining at least one individual board member or at least one individual panel (such as having a distinct image) from the continuously produced board element as is well understood by one of ordinary skill in the art as evidenced by Wilson.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record fails to teach or suggest a process for manufacturing a board element comprising a substrate and a printing pattern as claimed and including wherein the coordinating includes: sensing a first position of a device configured to form the printing pattern; sensing a second position of the plurality of cavities and/or of a device configured to form the plurality of cavities; and adjusting a formation of the printing pattern based on the first and second positions.
Response to Arguments
Applicant's arguments filed 6/26/2026 have been fully considered.
In view of the amendments to the claims filed 6/26/2026 the rejections over Smith et al. (U.S. Patent 4,612,074) as set forth in the Office action mailed on 3/9/2026 are withdrawn. The claims as amended are fully addressed above.
Applicants argue, “The Office asserts that it would have been obvious to combine the printing embodiment of Figure 27 with the texturing embodiment of Figure 28. However, the Office does not identify any teaching or suggestion in Sienkiewicz that would motivate such a combination, nor any disclosure that would lead one of ordinary skill to positionally coordinate these features.”.
This argument is not persuasive wherein Sienkiewicz does not teach away from the process for manufacturing the board element comprising the substrate and the plurality of cavities includes a visible design rather it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the process for manufacturing the board element comprising the substrate and the plurality of cavities (Figure 28) taught by Sienkiewicz includes arranging a printing pattern of a visible design (212, Figure 27) on a front side of the substrate (73) as suggested by Sienkiewicz opposite the plurality of cavities (bumps 224 on surface 223’ as formed by embossing rollers 220, 222 forming the cavities between bumps 224 in both the front and the rear side or only the rear side) in the rear side; and including by coordinating a position of the clear coat layer (79) comprising the printing pattern with a location of the substrate comprising the plurality of cavities by feeding to the nip of rollers (85, 87) thereby coordinating a position of the printing pattern is arranged on the front side of the substrate with a location of the plurality of cavities provided in the rear side of the substrate so that the textured board element visibly displays a design such as a logo, warning label, or any desirable suitable letter(s) and/or number(s) as suggested by Sienkiewicz in column 27, lines 45-67.
Applicants further argue, “The Office attributes to Sienkiewicz a synchronized relationship between a print application unit and an impression device “for obtaining the coordination of the printing pattern and the cavities.” This feature is not disclosed in Sienkiewicz. While Sienkiewicz may disclose printing equipment and embossing rollers, it does not disclose synchronizing these elements to achieve positional coordination between printing patterns and cavity locations.”.
This argument is not persuasive wherein Sienkiewicz includes coordinating a position of the clear coat layer (see 79 in each of Figures 27 and 28) comprising the printing pattern with a location of the substrate (see 73 in each of Figures 27 and 28) comprising the plurality of cavities by feeding to the nip of rollers (see 85, 87 in each of Figures 27 and 28) thereby coordinating a position of the printing pattern is arranged on the front side of the substrate with a location of the plurality of cavities provided in the rear side of the substrate and further including Sienkiewicz teaches creating the plurality of cavities in the rear side by impressing a substrate portion by an impression device comprising impression elements (embossing roller 222), and arranging the printing pattern on the front side by a print application unit (comprising silk-screening station 210 and the rollers 85, 87 and considered the corresponding structure, material, or acts described in the specification and equivalents thereof), the print application unit being synchronized (to print and rotate) with the impression device (to rotate) for obtaining the coordination of the position of the printing pattern with the location of the plurality of cavities fed to the nip of rollers (85, 87).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN L GOFF II whose telephone number is (571)272-1216. The examiner can normally be reached 7:30 AM - 4:00 PM EST Monday - Friday.
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746
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