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 .
Response to Arguments
Applicant's arguments filed 5/29/2026 have been fully considered and are persuasive, however after further search and consideration, a new reference is cited in the rejection of claim 1.
Applicant argues that Tian does not describe removing the UV curable liquid because curing the UV liquid only transforms the liquid into a solid rather than removing the actual substance. Examiner notes that the previous office action dated 2/2/2026 does not characterize the UV curing step as the removing step. Nothing was previously cited from Tian as teaching the removal step because that step was previously described as optional. Examiner also notes that if the liquid is being removed after being cured, there is no liquid to remove. Therefore, Examiner is interpreting this limitation as referring to removing the liquid prior to curing, see [0060] of the instant application as published. To meet this limitation, Wang is cited.
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.
Claims 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tian (US 2004/0241416) modified by Wang (US 5,458,953, previously made of record on the action dated 2/2/2026.)
Regarding claim 1, Tian meets the claimed, A method for manufacturing a product having a three dimensional surface layer for a panel, the method at least comprising:
applying a water based resin on an underlaying surface of the product, (Tian [0100] describes applying an aqueous primer on a substrate) wherein the water based resin is at least in part thermocurable (Tian [0100] describe using heat to cure the primer) providing a UV-curable liquid onto at least one portion of the water based resin, when the water based resin is liquid or partially cured; (Tian [0101] describe applying a UV top coat on top of a partially cured primer) UV curing of the UV-curable liquid; (Tian [0101] describes UV curing the top coat) curing the water based resin at least by heating; (Tian [0100] and [0107] describes heat curing) and optional pressing of the surface layer and the underlaying surface by a pressing device (Tian [0116] describe a mechanical embossing step.)
Tian describes curing the top coat but does not describe removing of the UV-curable liquid. Analogous in the field of polymer coatings, Wang also describes resilient coatings for a floor covering and meets the claimed, removing of the UV-curable liquid (Wang col. 5 beginning at line 20 describes Example 5 which includes a step of coating a UV curable layer of Photocure 249 on top of another layer and removing the excess with a #5 wire-wound rod.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the method of Tian including adding a UV curable layer with the step of removing the excess material as described in Wang in order to achieve a uniformly distributed wet film, see Wang col. 5 line 42-45.
Regarding claim 2, Tian meets the claimed, The method according to claim 1, wherein the water based resin comprises melamine-formaldehyde, ureaformaldehyde, (meth)acrylate, polyurethane, unsaturated polyester and/or epoxy resin (Tian [0048] describes urea-formaldehyde.)
Regarding claim 3, Tian meets the claimed, The method according to claim 1, wherein the curing of the water based resin is done exclusively by heating (Tian [0100]-[0101] only describes heating the primer, only the top coat is UV curable.) Regarding claim 4, Tian meets the claimed, The method according to claim 1, and a second curing step whether or not by means of heating wherein a total cure is obtained (Tian [0100] describe a first partial curing step and then full curing is described in [0101].)
Tian does not explicitly meet the claimed, wherein the curing of the water based resin at least by heating comprises: a first curing step by means of heating, wherein the resin is cured to a degree of cure of at least 0.5; however, Tian [0100] describes that the heat is applied to the primer to evaporate the solvent prior to the application of the top coat. Tian [0100] discloses that the removal of the solvent affects the clarity of the sharpness of the gloss layers. Tian discloses that the evaporation of solvent, i.e., curing, is a result-effective variable affecting the clarity and sharpness of the glossy layers. It would have been obvious to a person of ordinary skill in the art before the filing date to modify the degree of cure of the first partial curing step in order to optimize the clarity of the gloss, see Tian [0100] and MPEP §2144.05(II)(B).
Regarding claim 5, Tian does not explicitly meet the claimed, The method according to claim 4, wherein a degree of cure of at least 0.7 is obtained by the first curing step by means of heating, however, Tian [0100] discloses that the evaporation of solvent, i.e., curing, is a result-effective variable affecting the clarity and sharpness of the glossy layers. It would have been obvious to a person of ordinary skill in the art before the filing date to modify the degree of cure of the first partial curing step in order to optimize the clarity of the gloss, see Tian [0100] and MPEP §2144.05(II)(B).
Regarding claim 6, Tian meets the claimed, The method according to claim 1, further comprising a heat pressing step after curing the resin and/or the liquid (Tian [0116] discloses a mechanical embossing step at temperatures to soften the layers, [0032] discloses embossing occurs after curing.)
Regarding claim 8, Tian meets the claimed, The method according to claim 6, wherein the heat pressing step comprises an embossing of the surface layer (Tian [0116] discloses a mechanical embossing step at temperatures to soften the layers.)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tian modified by Price (EP1595718.)
Regarding claim 7, Tian discloses an embossing roll but does not specifically disclose any of the claimed, The method according to claim 6, wherein the heat-pressing step is performed with a flat pressplate, a press belt, a multi daylight press, or by using a release paper or film.
Analogous in the field of gloss laminates, Price also discloses a method of manufacturing an embossed laminate using multiple coatings and meets the claimed, The method according to claim 6, wherein the heat-pressing step is performed with a flat pressplate, a press belt, a multi daylight press, or by using a release paper or film (Price [0077] describes using a press belt to add a structure to the surface of the final laminate product.)
The courts have held that substituting one known element for another according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the roller of Tian with the press belt of Price because it is a known method of embossing a similar article, see Price [0077].
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.
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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744
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