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 § 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) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2010/0086753 A1)
As to claim 9, Johnson et al. teaches a process comprising a) providing a printing substrate (102, Figs 1-2); b) applying a UV-curable polymer coating (108 in Figs. 1 and 2; para 0024);c ) the UV-curable polymer coating underlayer comprising a visible pattern (as shown in Figs. 1 and 2); and d) applying an analog flood coating top layer over the UV-curable polymer coating underlayer, causing the pattern of the UV-curable polymer coating underlayer (paras 0025, 0035) to emerge in greater relief so as to give the pattern on the printed article an embossed visual appearance (curing the UV ink in a pattern as shown in Figs.1 and 2 will obviously give the same embossed appearance as the foiled areas as in para 0026). 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(s) 9 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 9, Johnson et al. teaches a process comprising a) providing a printing substrate (102, Figs 1-2); b) applying a UV-curable polymer coating (108 in Figs. 1 and 2; para 0024);c ) the UV-curable polymer coating underlayer comprising a visible pattern (as shown in Figs. 1 and 2); and d) applying an analog flood coating top layer over the UV-curable polymer coating underlayer, causing the pattern of the UV-curable polymer coating underlayer (paras 0025, 0035) to emerge in greater relief so as to give the pattern on the printed article an embossed visual appearance (curing the UV ink in a pattern as shown in Figs.1 and 2 will obviously give the same embossed appearance as the foiled areas as in para 0026). 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. 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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2010/0086753 A1) alone or in view of the admitted prior art of the specification and in further view of Tsai et al. (US 2021/0197609 A1)
As to claim 1, Johnson et al. teaches a) providing a printing substrate 102, Figs 1-2); d) applying a UV-curable polymer coating (108 in Figs. 1 and 2; para 0024); e) the UV-curable polymer coating underlayer comprising a visible pattern (as shown in Figs. 1 and 2); and f) applying an analog flood coating top layer over the UV-curable polymer coating underlayer, causing the pattern of the UV-curable polymer coating underlayer (paras 0025, 0035) to emerge in greater relief so as to give the pattern on the printed article an embossed visual appearance (curing the UV ink in a pattern as shown in Figs.1 and 2 will give the same embossed appearance as the foiled areas as in para 0026). 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).
Alternatively, or in addition, 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. 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)
Johnson et al. does not teach b) applying a printed underlayer to the printing substrate; c) applying a protective barrier coating over the printed underlayer; before printing the UV curable polymer coating in (d). Tsai et al. teaches that it is common in the art that before a UV polymer layer is printed that applies a visual effect on a printable substrate that a printed article may already contain 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 UV curable visual effect layer as taught by Tsai et al. to achieve the desired effect of having the visual effect printed over words or images and protecting those words and images during further foil printing.
As to claim 2, the underlayer as taught by Tsai et al. may be comprised of printed lettering in para 0004.
As to claim 3, it is obvious that the underlayer as taught by Tsai et al. may be colored as the words or pictures printed before the application of the protective layer have the purpose of being visible and decorative.
As to claim 4, a laminated protective layer is known in Tsai et al. para 0004.
As to claim 5, Johnson et al. teaches a) providing a printing substrate 102, Figs 1-2); d) applying a UV-curable polymer coating (108 in Figs. 1 and 2; para 0024) by inkjet printing (para 0033); e) the UV-curable polymer coating underlayer comprising a visible pattern (as shown in Figs. 1 and 2); and f) applying an analog flood coating top layer over the UV-curable polymer coating underlayer, causing the pattern of the UV-curable polymer coating underlayer (paras 0025, 0035) to emerge in greater relief so as to give the pattern on the printed article an embossed visual appearance (curing the UV ink in a pattern as shown in Figs.1 and 2 will give the same embossed appearance as the foiled areas as in para 0026). 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).
Alternatively, or in addition, 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. 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)
Johnson et al. does not teach b) applying a printed underlayer to the printing substrate; c) applying a protective barrier coating over the printed underlayer; before printing the UV curable polymer coating in (d). Tsai et al. teaches that it is common in the art that before a UV polymer layer is printed that applies a visual effect on a printable substrate that a printed article may already contain 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 UV curable visual effect layer as taught by Tsai et al. to achieve the desired effect of having the visual effect printed over words or images and protecting those words and images during further foil printing.
As to claim 6, the underlayer as taught by Tsai et al. may be comprised of printed lettering in para 0004.
As to claim 7, it is obvious that the underlayer as taught by Tsai et al. may be colored as the words or pictures printed before the application of the protective layer have the purpose of being visible and decorative.
As to claim 8, a laminated protective layer is known in Tsai et al. para 0004.
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.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/ Primary Examiner, Art Unit 1718