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
Applicant's arguments filed 2/12/2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claims 1-11 & 14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter that was specifically challenged in the argument. The claims has been rendered obvious under 35 U.S.C. 103.
With regards to the arguments that “Nishimura fails to disclose a base layer that 1) has a covered portion covered by the decorative layer and a peripheral portion not covered by the decorative layer, and 2) a thickness of the base layer that gradually increases from a peripheral portion of the base layer to the covered portion and gradually decreases toward the peripheral portion of the base layer.” The examiner asserts, Mura discloses a base layer with a covered portion covered by the decorative layer and a thickness of the base layer that gradually increases from a peripheral portion of the base layer to the covered portion and gradually decreases toward the peripheral portion of the base layer and Ed discloses a peripheral portion not covered by the decorative layer, the claim has been rendered obvious under 35 U.S.C. 103.
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.
Claims 1-11 & 14 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards et al., U.S. Patent Application Publication No. 2007/0076069 A1; herein Ed in view of Nishimura et al., the Japanese Patent Application No. JP 2017-202592 A; herein Mura.
Re claim 1, Ed discloses a decorated article, comprising:
a substrate (10; the substrate, fig. 2);
a decorative layer (12; the reflective coating layer, fig. 2) containing a particle component (para 20 & 25-31, the reflective particles of a metallic material); and
a base layer (16; the undercoat, fig. 2) disposed between the substrate and the decorative layer (fig. 2), and the base layer has a covered portion covered by the decorative layer (fig. 2 and para 20, the portion applied over the reflective coating) and a peripheral portion disposed on a peripheral edge of the covered portion (fig. 2 and para 20, the section of the undercoat extending along the perimeter of the reflective and second inkjet layer), the peripheral portion not covered by the decorative layer).
Ed fails to disclose a thickness of the base layer gradually increasing from a peripheral portion of the base layer to the covered portion and gradually decreases toward the peripheral portion of the base layer. However, Mura discloses a decorated article, comprising: a substrate (1; the article body, fig. 1-7); a decorative layer (4; the metal reflective layer, fig. 6-7); and a base layer (5; the UV print layer, fig. 6-7) disposed between the substrate and the decorative layer (fig. 6-7), and the base layer has a covered portion (fig. 6-7, the upper-most surface of the main printing layer) covered by the decorative layer (fig. 6-7, the portions covered by the metal reflective layer) and a peripheral portion (6; the top coat layer, fig. 6-7) disposed on a peripheral edge of the covered portion (para 18 & fig. 6-7, the top coat layer being formed along the outer facing peripheral edge of the decorative element), the peripheral portion not covered by the decorative layer (para 18 & fig. 6-7, the top coat layer covers the metal reflective layer), and a thickness of the base layer gradually increasing from a peripheral portion of the base layer to the covered portion and gradually decreases toward the peripheral portion of the base layer (fig. 6-7, via the shape of the UV print layer).
The only distinction between the prior art and the claimed invention is that the prior art fails to disclose a thickness of the base layer gradually increasing from a peripheral portion of the base layer to the covered portion and gradually decreases toward the peripheral portion of the base layer however, Mura discloses such structure. Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the known technique of the shape and tope coat of the elements taught by Mura to improve the similar device disclosed by the prior art in the same way by allowing the decorative layer to be protected and smoothly incorporated into the surface of the substrate. See MPEP 2143 I. (C).
Re claim 2, Ed discloses the invention of claim 1, Ed further discloses wherein the decorative layer contains a volatile ink component (para 31, the example solvents are all volatile).
Re claim 3, the combination of Ed and Mura discloses the invention of claim 1, Ed further discloses wherein the particle component contains metal particles (para 25, wherein the reflective particles are metallic).
Re claim 4, the combination of Ed and Mura discloses the invention of claim 3, Ed further discloses wherein the metal particles contain a silver particle component (para 25, wherein the reflective particles contain silver).
Re claim 5, the combination of Ed and Mura discloses the invention of claim 1, Ed further discloses wherein a maximum thickness of the decorative layer is 15 nm or more (para 29-30 and claim 9, wherein the final thickness of the decorative layer is 20 nm thick or more).
The combination discloses the claimed invention except for the decorative layer’s maximum thickness being explicitly within the range of 20-80 nm however, it would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to have the reflective layer be applied with a maximum thickness between 20-80 nm, i.e. slightly above 20 nm, since it has been held that that discovering an optimum value of a result effective variable supports a case of obviousness when the general conditions of the claim are met by the prior art (see Ed; para 29-30, the ink jet ink of the reflective coating allows for curing at a thickness that is advantageous and necessary to function). See MPEP 2144.05 II. A.
Re claim 6, Ed discloses the invention of claim 1, Ed further discloses wherein a thickness of the base layer is greater than a thickness of the decorative layer (para 22 & 29, the reflective coating is on the scale of nm while the undercoat is on the scale of µm).
Re claim 7, the combination of Ed and Mura discloses the invention of claim 1, Ed further discloses wherein a maximum thickness of the base layer is 150 µm or less (para 22, wherein the layer thickness of the undercoat is between 1 and 50 µm).
The combination discloses the claimed invention except for wherein the base layer’s maximum thickness being within the range of 80 and 150 µm however, it would have been obvious to one having ordinary skill in the art before the effective filling date of the invention to utilize such a thickness, since it has been held that that discovering an optimum value of a result effective variable supports a case of obviousness when the general conditions of the claim are met by the prior art (see Ed; para 22, the undercoat layer need only provide a sufficient thickness to provide a smooth finish over the substrate and an embossed look). See MPEP 2144.05 II. A.
Re claim 8, the combination of Ed and Mura discloses the invention of claim 1, Ed further discloses wherein a maximum thickness of the covered portion is greater than a maximum thickness of the peripheral portion (fig. 2, the covered portion is thicker than the perimeter of the undercoat alone).
Re claim 9, the combination of Ed and Mura discloses the invention of claim 1, Ed further discloses wherein the base layer contains a UV-curable resin (para 36-46 & 48, wherein the undercoat is cured using actinic radiation via UV radiation).
Re claim 10, the combination of Ed and Mura discloses the invention of claim 9, Ed further discloses wherein the surface of the base layer is leveled so as to omit edges (para 47-48, wherein a leveling additive is utilized within the undercoat).
Re claim 11, the combination of Ed and Mura discloses the invention of claim 9, Ed further discloses wherein the surface of the peripheral portion is leveled so as to omit edges (para 47-48, wherein a leveling additive is utilized within the undercoat).
Re claim 14, the combination of Ed and Mura discloses the invention of claim 1, Mura as applied to Ed further discloses wherein a surface of the base layer is a curved surface (fig. 6-7).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Mura in view of Ed.
Re claim 12, Mura discloses a fishing rod, comprising:
a rod body (para 17, wherein the article body is a fishing rod) composed of a substrate (para 17, the surface of the article body/fishing rod; 1); and
a three-dimensional decorated portion (4; the metal reflective layer, fig. 6-7) disposed on the rod body (fig. 1-7 and para 6, 13-15, 36, & 41, the decorative three-dimensional layer is formed on the surface of the article/fishing rod) the three-dimensional decorated portion having a decorative layer (fig. 6-7 and para 41, the decorative metallic luster of the reflective layer) containing a particle component (para 6, 13-14, 26, 31, & 34-35, the particles within the metal reflective layer) and a base layer (5; the UV print layer, fig. 6-7) disposed between the rod body and the decorative layer (fig. 6-7),
wherein the base layer having a covered portion covered by the decorative layer (fig. 6-7, the section covered by the metal reflective layer) and a peripheral portion disposed on a peripheral edge of the covered portion (fig. 6-7, the thinner outermost edge), and a thickness of the base layer gradually increasing from a peripheral portion of the base layer to the covered portion and gradually decreases toward the peripheral portion of the base layer (fig. 6-7, via the shape of the UV print layer).
Mura fails to disclose the peripheral portion not covered by the decorative layer. However, Ed discloses a base layer (16; the undercoat, fig. 2) hiving a covered portion covered by the decorative layer (fig. 2 and para 20, the portion applied over the reflective coating) and a peripheral portion disposed on a peripheral edge of the covered portion (fig. 2 and para 20, the section of the undercoat extending along the perimeter of the reflective and second inkjet layer), the peripheral portion not covered by the decorative layer).
The only distinction between the prior art and the claimed invention is that the prior art fails to disclose a peripheral portion not covered by the decorative layer however, Ed discloses such structure. Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the known technique of the peripheral edge/lip taught by Ed to improve the similar device disclosed by the prior art in the same way by allowing the printing element to be outlined with depth to draw additional attention thereto. See MPEP 2143 I. (C).
Re claim 13, the combination of Mura and Ed discloses the invention of claim 1, Mura further discloses wherein a surface of the base layer is a curved surface (fig. 6-7).
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 NICOLE P MACCRATE whose telephone number is (571)272-5215. The examiner can normally be reached M-Th: 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joshua J Michener can be reached at 571-272-1467. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE PAIGE MACCRATE/Examiner, Art Unit 3642
/JOSHUA J MICHENER/Supervisory Patent Examiner, Art Unit 3642
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