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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-13 in the reply filed on July 6, 2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 9-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites “at an end on the first surface in the through-hole.” The claim is not clear as the first surface is a surface of the board, while the resin film and the resin layer are adhered to each other at an end of the through-hole, and it is not clear how the first surface is present in the through-hole.
Claims 9-13 are directed to “the decorative member”, however, claim 8 from which claims 9-13 depend is directed to a laminate, thus, claims 9-13 are indefinite.
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, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE 20 2021 101 625 U1 ('625) as understood from the translation of the abstract, and the drawings, and from the text of the reference, in view of Hamada et al. (US 2020/0198173 A1) (“Hamada”).
With respect to claim 1, '625 discloses a decorative member comprising a board comprising a cut-out pattern portion, a first surface and a second surface – element 11 (0053), a protective and/or optical layer – element 25 – disposed on the first surface of the board (0058, 0068, Fig. 1A), a resin layer disposed on the second surface of the board – element 20 (abstr, 0031, 0032, 0068, Fig. 1A), wherein the cut-out pattern portion comprises a through-hole which penetrates the board in a thickness direction thereof (abstr., 1A).
'625 is silent with respect to element 25 being a resin film. Hamada discloses a decorative member comprising a board comprising a cut-out pattern – element 1 (abstr., 0025-0027), and a coating layer – element 3 – having optical properties disposed on the first surface of the board, the coating layer being a resin film (0025, 0045-0049). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form element 25 of the member of '625, as it is known in the art of decorative members to provide them with a resin optical film.
Regarding claim 2, ‘625 and Hamada teach the member of claim 1. '625 discloses the through-hole being filled with the resin layer – element 20, and the resin film – element 25 and the resin layer being adhered to each other at an end of the through-hole (Fig. 1A).
As to claim 3, '625 and Hamada teach the member of claim 1. Hamada discloses a width of the through-hole of from 0.1 mm to 0.4 mm (0017, 0034). The range of the width overlaps the range recited in claim 3; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
With respect to claim 6, '625 and Hamada teach the member of claim 1. Hamada teaches a thickness of the board between 0.1 mm and 1.0 mm (0030). The range of thickness overlaps the range recited in claim 6; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE 20 2021 101 625 U1 ('625) as understood from the translation of the abstract, and the drawings, and from the text of the reference, in view of Hamada, and further in view of Delaney et al. (US 5722209) (“Delaney”).
With respect to claim 4, '625 and Hamada teach the member of claim 1, but are silent with respect to the cut-out pattern portion comprising a separated piece which is disposed in the through-hole separated from an inner periphery of the through-hole. Delaney discloses a decorative member comprising a cut-out pattern portion comprising a separated piece which is disposed in the through-hole separated from an inner periphery of the through-hole in order to obtain an aesthetic design (abstr., col. 4, lines 36-67, col. 5, lines 1-17, col. 6, lines 6-9, 54-67, col. 8, lines 36-45, Figs. 1A-2B). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form a separated piece disposed in the through-hole and separated from an inner periphery of the through-hole in the member of '625 and Hamada for aesthetic purposes.
Regarding claim 5, '625, Hamada and Delaney teach the member of claim 4. Since the diameter of the through-hole according to Hamada is from 0.1 to 0.4 mm (0034), it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the surface area of the separated piece would overlap the range recited in claim 5; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE 20 2021 101 625 U1 ('625) as understood from the translation of the abstract, and the drawings, and from the text of the reference, in view of Hamada, and further in view of Yuzawa et al. (US 2002/0031620 A1) (“Yuzawa”).
With respect to claim 7, '625 and Hamada teach the member of claim 1, but are silent regarding a decorative resin which impregnates the first surface of the board, wherein the resin film and the decorative resin are adhered to each other.
Yuzawa discloses a decorative article comprising a board (abstr.), wherein a decorative resin impregnates a surface of the board – veneer (0113). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to impregnate the first surface of the board in the member of '625 and Hamada with a decorative resin for decorative purpose as such impregnation is known in the art of decorative members. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the decorative resin and the resin film in the article of '625 and Hamada would adhere to each other as the member of '625 is molded.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamada et al.
With respect to claim 8, Hamada discloses a laminate for a decorative member, the laminate comprising a board comprising a cut-out pattern portion and a first surface – element 1 (abstr., 0025-0027), and a resin film – element 3 – adhered to the first surface of the board (0025, Figs. 1 and 3), wherein the cut-out pattern portion comprises a through-hole which penetrated the board in a thickness direction thereof (0031-0039, Figs. 1 and 3).
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) 9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamada.
As to claim 9, Hamada teaches the member of claim 8. Hamada discloses a width of the through-hole of from 0.1 mm to 0.4 mm (0017, 0034). The range of the width overlaps the range recited in claim 9; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
With respect to claim 12, Hamada teaches the member of claim 8. Hamada teaches a thickness of the board between 0.1 mm and 1.0 mm (0030). The range of thickness overlaps the range recited in claim 12; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamada, in view of Delaney et al. (US 5722209) (“Delaney”).
With respect to claim 10, Hamada teaches the laminate of claim 8, but is silent with respect to the cut-out pattern portion comprising a separated piece which is disposed in the through-hole separated from an inner periphery of the through-hole. Delaney discloses a decorative member comprising a cut-out pattern portion comprising a separated piece which is disposed in the through-hole separated from an inner periphery of the though-hole in order to obtain an aesthetic design (abstr., col. 4, lines 36-67, col. 5, lines 1-17, col. 6, lines 6-9, 54-67, col. 8, lines 36-45, Figs. 1A-2B). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form a separated piece disposed in the through-hole and separated from an inner periphery of the through-hole in the laminate of Hamada for aesthetic purposes, as the laminate of Hamada is suitable for decorative members (abdtr.).
Regarding claim 11, Hamada and Delaney teach the laminate of claim 10. Since the diameter of the through-hole according to Hamada is from 0.1 to 0.4 mm (0034), it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the surface area of the separated piece would overlap the range recited in claim 11; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamada, in view of Yuzawa et al. (US 2002/0031620 A1) (“Yuzawa”).
With respect to claim 13, Hamada teaches the laminate of claim 8, but is silent regarding a decorative resin which impregnates the first surface of the board, wherein the resin film and the decorative resin are adhered to each other.
Yuzawa discloses a decorative article comprising a board (abstr.), wherein a decorative resin impregnates a surface of the board – veneer (0113). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to impregnate the first surface of the board in the laminate of Hamada with a decorative resin for a decorative purpose as such impregnation is known in the art of decorative members, laminate of Hamada suitable for decorative members (abstr.). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the decorative resin and the resin film in the laminate of Hamada would adhere to each other as a result of lamination (Hamada, 0007, 0008, 0025).
Information Disclosure Statement
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783
Prosecution Insights