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 Amendment
This is a response to the amendment filed 7/14/2026. Claims 1, 5-7, 9, 10, 12, and 19 have been amended.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues Funicelli et al. (US 2008/0187770) fails to anticipate the claim follow the amendment. Examiner agrees the amendment overcomes the previous 102 rejection.
Applicant argues Hazen (US 2010/0314036) is entirely silent on applying their implied heat-curable adhesive to metal. However, Hazen strongly infers this as explained in the rejection. Further, Funicelli et al. teaches adhesive may be coated on either the metallized film of substrate and this is presumably independent of curing method (See page 6, paragraphs [0038] and [0047]). Any method of disposing adhesive between the substrate and metallized film, whether by coating the substrate, coating the film, or coating both, is presumably to carry out a partial or full bond. The record reflects this and there are no apparent reasons why coating on the substrate alone would have been viewed as the only suitable coating method for coating thermally curable adhesive and every reason to think it coats similar to any other adhesive.
Applicant further argues using a heat-curable adhesive, such as in Hazen, would impermissibly modify Funicelli. Examiner submits Applicant is misapplying this standard of modifying the principle of operation, which implies the proposed change fundamentally destroys the purpose of the primary reference. This is not the case for using heat in Funicelli et al. Although Funicelli et al. teaches EB curing and EB curable adhesives as a preference with a certain advantage associated with them, there is no indication such adhesives are required or that EB radiation is the only suitable curing method to carry out adhesive during the disclosed process. Thus, the instant situation is distinguished from In re Ratti where the oil seal required rigidity for operation.
Applicant’s own quoted language from Funicelli points out that EB adhesives allow non-porous substrates when solvent-based adhesives are used to avoid outgassing. However, heat-curable non-solvent based adhesives are well known (e.g. standard epoxy adhesive), and further, no such restrictions are required when using porous substrates, which presumably allow heat-curable adhesive to suitable outgas. Likewise, although Funicelli et al. indicates EB curing allows the use of substrates more sensitive at lower temperatures, it implies substrates capable of tolerating higher temperature are suitable for thermal curing. Examiner also note Funicelli’s own language acknowledges thermal curing is standard in the art, and although indicating it is subject to certain limitations, i.e. requiring porous substrates for solvent based adhesives and eliminating thermally sensitive substrates, it does not indicate it never suitable or useful for partial metalized film breakaway. Examiner notes EB curable requires expensive and completed electron bean emitting equipment and for more simplistic manufacturing, using oven curing and a more restricted set of substrates can certainly be advantageous. The Examiner notes Hazen uses a paper substrate, which is described as conventional (See page 1, paragraph [0001]). Paper is naturally is porous and not heat sensitive, and thus by Funicelli’s own standard, not a substrate targeted with the with the EB curing preference.
Further, as noted in the prior rejection, Hazen may also be the primary reference and teaches oven curing explicitly. There is no reason partial coating as taught in Funcelli et al. and opposed to full coating, as in Hazen, is reasonably tied to the curing method. Nothing in Funcelli et al. indicates EB curing is uniquely associated with the ability for partially adhesive coating and thus performing partial coating in Hazen would have been obvious as a known similar process to vary decorative effect of the metalized film.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This instant specification teach the adhesive can be coated on the metallized layer or the substrate, but nowhere teaches applying a coating to both in the same process. Thus, there is not support for claim 6 and it constitutes new matter.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-11 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Funicelli et al. (US 2008/0187770) in view of Hazen (US 2010/0314036), or in the alternative, taking Hazen in view of Funicelli et al.
Regarding Claims 1-7, 12, 19 and 20, Funicelli et al. teaches a method of pattern metallization comprising:
metallizing a first side of a film [10] to form a metallized film [16],[10] (See page 6, paragraph [0037]);
applying adhesive only to discrete areas of the metallized film [16]/[10] via a gravure or flexographic printer (uses raised areas to apply pattern) (See page 6, paragraph [0038], and note gravure and flexo cylinders are well-known to apply coating in any desired design on the substrate [18]; and page 6, paragraph [0047], teaching coating the metal as an alternative to coating the substrate [18]; although coating both substrate and metal together are not taught as in claim 6, this is an obvious alternative since coating either implies coating both is suitable and would have predictably been an alternative functionally equivalent method of disposing the adhesive between the layers);
and bonding said metallized film to the substrate [18] (See page 6, paragraph [0041]), curing the adhesive (See page 6, paragraph [0042]), and removing said film [10] from said substrate [18] and leaving metal from said film deposited on said substrate [18] corresponding to the discrete areas of the metallized film where adhesive was applied (See page 6, paragraph [0042], wherein adhesive is removed selectively as desired based on the pattern of adhesive applied, and note it would have been apparent any desired selective patterns may be considered “custom” and will be repeating or non-repeating, and regardless are at least an obvious design choice; see In re Dailey, 357 F.2d 669 (CCPA 1966), indicating changes in shape are a matter of choice and are considered obvious to a person having ordinary skill in the art absent persuasive evidence that the shape is significant).
Funicelli et al. teaches a breakaway layer [14] on the transfer layer [10], the breakaway layer holding the metallized layer [16] (See pages 5-6, paragraphs [0036]-[0037]). Funicelli et al. further teaches the metal may transfer the full metal layer or a portion based on the adhesive pattern (See page 6, paragraph [0042]). Funicelli et al. indicates typical adhesives are utilized in similar processes including thermally curable adhesive such as epoxies or solvent adhesive cured by thermally assisted drying (See page 4, paragraph [0028]), but teaches EB curable adhesive that cures via EB radiation is preferred.
However, Hazen et al. teaches a nearly identical metallization layer transfer process wherein a transfer film [70] with a breakaway layer thereon and a metallization layer on the breakaway layer (See page 2, paragraphs [0030]-[0031]), and applying an adhesive to bond the metal layer to a substrate [80] (See page 2, paragraphs [0032]-[0034] and Fig. 2, and note adhesive is illustrated in Fig. 2 as coated on metallized layer on transfer film [70] via applicator [90], it being clear the adhesive between the substrate and metallized layer facilitates transfer), curing the adhesive in a first oven [170], and transferring the metal layer and breakaway layer to the substrate [18] (See Fig. 2 and page 3, paragraph [0040]).
Examiner submits it would have been obvious to implement the selective coating process of Funicelli et al. using the transfer system, substrate, and heat-curable adhesive of Hazen et al., simply by using a gravure or flexo roller to selectively coat adhesive in desired metal transfers locations. It would have been obvious in both Funicelli et al. and Hazen et al. any heat-curable adhesive merely need be applied in a desired pattern on either the metallized layer or the substrate to implement pattern transfer in the adhesive area.
Thus, it would have been obvious when ambient curing is not required, such as when using substrates that are porous and not heat sensitive, such as paper, which is taught in Hazen (See page1, paragraph [0004]), to utilize well-known heat curing adhesives, as are already disclosed as conventional in Funicelli et al. Hazen suggests such heat curable adhesive are well-known and suitable for making metallized transfer from film to substrate with a breakaway layer as evidenced utilizing ga thermal curing oven. It would have been apparent when suitable, such as when using paper substrates, heat-curing adhesives and ovens predictably avoid some complexities of EB curing adhesive, such as the use of high cost electron beam generating equipment. As discussed above, Funicelli et al. teaches selective or complete metal transfer occurs based on the adhesive pattern between the metal and substrate layer (See page 6, paragraph [0042]) and such a principle predictably applies to the system of Hazen when using heat curing adhesives. Hazen already teaches the heat curing adhesives are suitable to transfer a metallized layer and breakaway layer from a transfer film to a substrate using such oven for curing.
Note Hazen could also be used as a primary reference wherein Funicelli et al. provides motivation to either selectively or fully coating adhesive with applicator [90], such as by using a gravure or flexo roller as applicator, to produce selective or complete metallization transfer as desired. Examiner note Hazen teaches all elements of the instant invention, including transfer of both a breakaway layer and metallized layer from film to substrate, but does not teach selective adhesive coating and selective metal transfer. However, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize gravure or flex adhesive application to apply desired adhesive patterns, thus facilitating selective metal transfer as taught in Funicelli et al. Doing so would have predictably expanded design variety.
Regarding Claims 10 and 11, Hazen teaches applying a breakaway coating to the film at a gravure coating station [140] prior to curing, curing in oven [170], and then removal of the film with the coating from the substrate (See page 2, paragraph [0035] and page 3, paragraph [0040]), which may occur as claimed (See rejection of Claims 5, 8, and 9 above).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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