DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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 Applicant’s requirement on reconsideration filed on June 22, 2026 was received.
The text of those sections of Title pre-AIA 35, U.S.C. code not included in this action can be found in the prior Office Action issued on April 16, 2026.
Claim Rejections - 35 USC § 112
The claim rejections under 35 U.S.C. 112 (b), or 35 U.S.C. 112 (pre-AIA ), second paragraph, on claims 1-8 are maintained.
Regarding claims 1 and 4, the term “substantially” is a relative term which render the claims indefinite. The term "substantially" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
The claim rejections under pre-AIA 35 U.S.C. 103 (a) as being unpatentable over Kazuhiko et al. (JP 3087405 B2 with English translation attached) in view of Colyer GB2272848 A on claims 1-8 are maintained.
Regarding claim 1, Kazuhiko teaches a coating process comprising: applying a wet layer of a composition comprising a curable resin and pigment ([0011] -[0012], Fig.3); forming a pattern of the pigment in the wet layer ([0011] -[0012], Figs.1,3); and curing the wet layer thereby forming a cured layer, ([0012] -[0014], Fig.1-3). Kazuhiko does not explicitly teach that the pattern of the pigment is capable of remaining substantially unchanged after curing and results in a virtually embossed effect of the cured layer. However, Colyer discloses a plurality of platey or platelets (flake-form) material pigments used for forming a coated article. The pigments, disclosed in Kazuhiko and Colyer, are used for a surface covering product (page 2, Figs. 9-10, claims 17-19). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the flake-form pigments to the method of coating in Kazuhiko, because Colyer disclosed the use of the flake-form pigments, which is capable of remaining substantially unchanged after curing and results in a virtually embossed effect of the cured layer as shown in Figs. 9-10 (page 2, Fig. 9-10, claims 17-19).
Regarding claim 2, Kazuhiko teaches a coating process as disclosed above. Kazuhiko does not explicitly teach wherein the pigment comprises a plurality of flake- form pigment. However, Colyer discloses a plurality of platey or platelets materials pigments (flake-form) used for forming a coated article. The pigments, disclosed in Kazuhiko and Colyer, are used for a surface covering product (page 2, Fig. 9-10, claims 17-19). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the flake-form pigments to the method of coating in Kazuhiko, because Colyer disclosed the use of the flake-form pigments, which is capable of remaining substantially unchanged after curing and results in a virtually embossed effect of the cured layer (page 2, Fig. 9-10, claims 17-19).
Regarding claim 3, Kazuhiko teaches wherein forming the pattern of the pigment comprises passing the wet layer of the composition under at least one face-side rotating roller, the face-side roller having a textured outer surface, wherein the textured outer surface is positioned to contact the wet layer and impart the pattern of the pigment therein ([0011] -[0027], Fig.3).
Regarding claim 4, Kazuhiko teaches a coating process as disclosed above. Kazuhiko does not explicitly teach wherein the cured layer has a substantially even surface. However, Colyer discloses a plurality of platey or platelets materials pigments (flake-form) used for forming a coated article. The pigments, disclosed in Kazuhiko and Colyer, are used for a surface covering product (page 2, Fig. 9-10, claims 17-19). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the flake-form pigments to the method of coating in Kazuhiko, because Colyer disclosed the use of the flake-form pigments, which is capable of remaining substantially unchanged after curing and results in a virtually embossed effect and even surface of the cured layer (page 2, Fig. 9-10, claims 17-19).
Regarding claim 5, Kazuhiko teaches a coating process as disclosed above. However, Kazuhiko recognizes the viscosity of the composition is adjusted by changing the acid or surfactants of excipients ([0014]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the viscosity of the composition to improve the coating suitability and impregnation ([0014]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 6, Kazuhiko teaches wherein the curable resin comprises polyester for example ([0022]).
Regarding claim 7, Kazuhiko teaches a coating process as disclosed above. However, Kazuhiko recognizes the solids content of the coating is adjusted by changing the viscosity or mixture of excipients ([0014], [0021]-[0022]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the solids content of the composition to improve the coating suitability and impregnation ([0014], [0021]-[0022]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 8, Kazuhiko teaches a coating process as disclosed above. Kazuhiko does not explicitly teach wherein the pigment comprises flake- form structure pigment. However, Colyer discloses a plurality of platey or platelets materials pigments (flake-form) used for forming a coated article. The pigments, disclosed in Kazuhiko and Colyer, are used for a surface covering product (page 2, Fig. 9-10, claims 17-19). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the flake-form pigments to the method of coating in Kazuhiko, because Colyer disclosed the use of the flake-form pigments, which is capable of remaining substantially unchanged after curing and results in a virtually embossed effect of the cured layer (page 2, Fig. 9-10, claims 17-19).
Response to Arguments
Applicant's arguments filed on June 22, 2026 have been fully considered but they are not persuasive.
Applicant's arguments, with respect to the rejection(s) of claim(s) 1-3, under 35 U.S.C. §103(a) have been fully considered but they are not persuasive.
Applicant’s principal arguments are
The term “substantially” is not indefinite; and
Kasuhiko’s virtually embosses effect is achieved with requiring actual physical embossing or reproduction of embossed surface topography in the cured layer, however the current application claimed virtually embosses effect is achieved without requiring actual physical embossing or reproduction of embossed surface topography in the cured layer.
In response to Applicant’s arguments, please consider the following comments.
In response to Applicant’s arguments, the examiner respectfully disagrees. The term "substantially" is not defined by the claim or the specification; therefore, it does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
In response to Applicant’s arguments, the examiner respectfully disagrees. As an initial matter, the recited independent claims do not exclude the process of actual physical embossing or reproduction of embossed surface topography in the cured layer, because the coating process with the transitional phrase “comprising”, which in a patent claim is inclusive and open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) ("[L]ike the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended."). Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003) ("The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps."); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("Comprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("comprising" leaves "the claim open for the inclusion of unspecified ingredients even in major amounts"). In Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed. Cir. 2005) (MPEP 2111.03). Applicant is advised to ament the claim with the exclusive of coating process “actual physical embossing or reproduction of embossed surface topography in the cured layer” with transitional phrase “consisting of” for excluding these limitations. In addition regarding the argument on claim 4, the term "substantially" is not defined by the claim or the specification; therefore, it does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore examiner believes Applicant is arguing some elements that are not in the scope of the recited independent claims.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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