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
Applicants’ arguments filed 06/25/2025 have been fully considered but they are not persuasive.
In response to Applicants’ argument that the Ida reference does not consider the printer result or the impact of the primer chosen on the amount of primer which is needed to be applied to the paper web, the result on which Applicant relies are not stated in the claims. It is the claims that define the claimed invention, and it is the claims, not the result that are unpatentable. In addition, 37 CFR 1.11(b) states “A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguish them from the references does not comply with the requirements of this section.” Applicant has failed to specifically point out how the language of the claims patentably distinguishes them from the references. The Examiner does recognize that references cannot be arbitrarily combined and that there must be some reason why one skilled in the art would be motivated to make the proposed combination of primary and secondary references. In re Nomiya, 184 USPQ607 (CCPA 1975). However, there is no requirement that a motivation to make the modification be expressly articulated. The test for combining references is what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. In re McLaughlin, 170 USPQ 209 (CCPA 1971), references are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures. In re Bozek, 163 USPQ 545 (CCPA 1969). In this case, Ida teaches applying a primer having an active substance to a sheet and then applying ink [Para. 0004]. Where Ida is silent as to the grammage of the paper, Pankoke teaches the grammage of an unfilled paper being 15-40 g/m2 [Para. 0077] This grammage is lighter than what applicant claims however, it would be obvious to choose a paper with heavier grammage since discovering optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Pankoke further teaches the ink amount applied to the paper. Lastly, Li teaches the primer amount applied. Therefore, the references in combination suggest to one skilled in the art that a method for producing a decorative paper can be achieved by applying a primer in a certain quantity to a paper web having a particular grammage and then printing a decoration onto the paper with a certain amount of ink for the purpose of easy, efficient, and accurate application of a highly decorative patterned coating layer to a substrate surface having irregularities, while also providing excellent durability.
Examiner acknowledges claim 5 is cancelled.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1 -3, 7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ida (JP 2015086373) in view of Pankoke (EP 3725519) and in view of Li (CN 112501943).
With regard to claim 1, Ida discloses a method for producing a decorative paper [Para. 0004], comprising:
applying a primer to a paper web [Para.0004] and then printing a decoration on the paper web [Para.0004], wherein the primer is an active primer that contains substances [active hydrogen; Para. 0004] that react with substances in the ink used during printing.
Ida does not disclose the paper web has a grammage of at least 45 g/m² and at most 65 g/m², wherein the primer is applied to the paper web in an application quantity of at least 4 g/m² and at most 6 g/m², and a decoration on the paper web is printed using a digital printing facility, wherein the printing is performed with at most 7.5 g/m² of printing ink.
Pankoke teaches a paper web having a grammage of at least 45 g/m² [unfilled paper unimpregnated, 15-40 g/m.sup.2; Para. 0073; Note: unfilled paper is a carrier web; See also claim 24] and printing a decoration on the paper web using a digital printing facility, wherein printing is performed with an ink quantity of preferably 2.5 - 6 g/m² [Para. 0078]
Li teaches a primer applied to a paper web in an application quantity of 3-8 g/m² [Para. 0025] and wherein the primer is an active primer that contains substances that react with substance in the ink used during printing [primer contains components which react with a part of the ink; Para. 17, 25 and 40].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a paper web with a grammage of at least 45 g/m² and at most 65 g/m² since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. In re Leshin, 125 USPQ 416. It would have also been obvious to utilize a paper web with a grammage of at least 45g/m2 and at most 65 g/m2, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It would have been obvious to utilize a primer amount applied in the range of 4-6 g/m² and a printing with an ink amount at most 7.5 g/m² using a digital printing facility for the purpose of improving ink adhesion and printing effect.
With regard to claim 2, Ida does not disclose wherein the digital printing facility has a print width of at least 2050mm and/or a web speed of at least 135m/min and/or at least two print head rows with a resolution of at least 1200dpi X 1200dpi at a web speed of 135m/min and/or a resolution of at least 1200dpi X 600dpi at a web speed of 270m/min for each color used.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a digital printing facility has a print width of at least 2050mm and/or a web speed of at least 135m/min and/or at least two print head rows with a resolution of at least 1200dpi X 1200dpi at a web speed of 135m/min and/or a resolution of at least 1200dpi X 600dpi at a web speed of 270m/min for each color used since it is known and or routine measure in the art, which measures are known from the routine digital printing systems used to produce a decorative paper as stated in the present description. [Specification page 1, Para. 3]
With regard to claim 3, Ida does not disclose wherein the digital printing facility has an automatic roller bearer and/or automatic paper threading and/or an error monitoring system and/or a color monitoring system.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a digital printing facility having an automatic roller bearer and/or automatic paper threading and/or an error monitoring system and/or a color monitoring system since it is known and or routine in the art which measures are known from the routine digital printing systems used to produce a decorative paper as stated in the present description [Specification Page 3, Paras. 1 and 2]
With regard to claim 7, Ida does not disclose wherein the primer is applied by the digital printing facility or in the digital printing facility.
Li discloses wherein the primer is applied by the digital printing facility or in the digital printing facility [examples 1-4].
With regard to claim 9, Ida does not disclose wherein the digital printing facility is operated in a room with a room temperature of at least 22°C and at most 24°C, preferably 23°C, and/or with a relative humidity of at least 53% and at most 57%, preferably 55%.
Pankoke discloses wherein the digital printing facility is operated in a room with a room temperature of at least 22°C and at most 24°C, preferably 23°C [Para. 30], and/or with a relative humidity of at least 53% and at most 57%, preferably 55% [Para. 30].
With regard to claim 10, Ida does not disclose the decorative paper is printed in a single pass procedure.
Pankoke teaches a decorative image is printed directly onto the plate in a single pass using a so-called single-pass printer [Para. 0082].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to print the decorative paper in a single pass procedure as taught by Pankoke for the purpose of achieving high-volume printing tasks, high-quality images and printing on various substrates.
Claim(s) 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable Ida (JP 2015086373) in view of Pankoke (EP 3725519) and in view of Li (CN112501943) as applied to claim 1 above, and further in view of Schulz (US 2003/0039810).
With regard to claim 4, Ida does not disclose wherein the paper web has a titanium dioxide content of less than 40% and more than 20%.
Schulz teaches a base paper with a titanium dioxide content from 20-40% [Para. 0017].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a base paper wherein the titanium dioxide content is from 20-40% for the purpose of achieving a high opacity.
With regard to claim 14, Ida does not disclose wherein the titanium dioxide content is from 28-32%.
Schulz teaches a base paper with a titanium dioxide content from 28-32% [Para. 0017].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a base paper wherein the titanium dioxide content is from 28-32% for the purpose of achieving a high opacity.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ida (JP 2015086373) in view of Pankoke (EP 3725519), in view of Li (CN 112501943) as applied to claim 1 above, and further in view of Clement (US 2020/0108651).
With regard to claim 6, Ida does not disclose wherein the primer is applied by a pressure chamber doctor blade and a ceramic roller with an indirect application rubber roller.
Clement teaches resin is provided using one or more squeeing rollers and or doctor blades [Para. 0075].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a pressure chamber doctor blade and a ceramic roller with an indirect application rubber roller for applying primer as taught by Clement for the purpose of setting the amount of primer added to the paper layer.
Claim(s) 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable Ida (JP 2015086373) in view of Pankoke (EP 3725519) and in view of Li (CN 112501943) as applied to claim 1 above, and further in view of Dicke (EP 3865309).
With regard to claim 8, Ida does not disclose wherein the printing ink comprises a solvent content of at least 27% and at most 37%, and/or a water content of at least 55% and at most 65%, and/or a pigment content of 1%.
Dicke teaches a printing ink comprising a solvent content of less than 43% [Par. 0036] and a water content of 55% [Para. 0035].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a printing ink comprising a solvent content and water content as taught by Dicke for the purpose of the producing decorative prints on different substrate material with the same quality.
With regard to claim 11, Ida does not disclose wherein the digital printing facility comprises a plurality of print heads, and wherein at least some of the print heads, have an ink circulation system.
Dicke teaches digital printing utilizes inkjet printing [Para. 0004].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the clamed invention to utilize a plurality of print heads where at least some or preferably all have a circulation system since it is known in the art that inkjet printers comprise a plurality of print heads and at least some of the printheads have an ink circulation system.
Claim(s) 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable Ida (JP 2015086373) in view of Pankoke (EP 3725519) and in view of Li (CN 112501943) as applied to claim 1 above, and further in view of Bouwens (US 2020/0236249).
With regard to claim 12, Ida does not disclose wherein the digital printing facility comprises a plurality of print heads, and wherein a print intensity of individual print heads of the plurality of print heads and/or a print intensity of groups of print heads of the plurality of print heads is adjustable.
Bouwens teaches digital printing utilizes inkjet printing [Para.0004] and the spreading of intensities over the plurality of printhead units is adjustable [intensity is a percentage between 1 and 99; See Abstract & Para.0031]
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a plurality of print heads since it is known in the art that inkjet printers comprise a plurality of print heads and that print intensities of printheads are adjustable since it is
known in the art that a print intensity of an individual printhead or groups of printheads depend on the dot size/application quantity which allows adjustment the amount of ink.
With regard to claim 13, Ida does not specifically disclose wherein a group of print heads of the groups of print heads contain 5 to 10 print heads
Bouwens discloses multiple printhead units [Abstract]
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a group of printheads containing 5-10 heads for the purpose of improving print quality and producing larger volumes of prints.
Conclusion
Applicants’ 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 TRACEY M MCMILLION whose telephone number is (571)270-5193. The examiner can normally be reached Monday-Friday 6AM-2:30PM EST.
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/TRACEY M MCMILLION/Examiner, Art Unit 2853
/RICARDO I MAGALLANES/Supervisor Patent Examiner, Art Unit 2853
