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 § 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.
Claim 7 is 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.
As understood by person of ordinary skill in the art, “sine wave” has a distinct shape, with a sine function (or varying periodicity and/or amplitude) being able to describe features of this shape. However, any shape that has a pronounced Rpk value cannot possibly be defined using just a sine function, because peaks defined by a sine function all have the same height, which means that a core roughness profile captures the entire height of such a shape. (Refer to definition of Rpk from NPL from Tokyo Seimitsu, relevant image reproduced infra).
PNG
media_image1.png
334
510
media_image1.png
Greyscale
As a result, because Rpk seeks to capture height above roughness profile, and because there is nothing to capture in a situation where all peaks have the same height, Rpk would be zero in a situation where a cross-section of ridges can be described as a sine wave shape. As such, the requirements of claim 7 conflicts with what is required in claim 1.
This is particularly the case here, as Applicant deem the idealized ridge parts in the schematic of Fig. 2 as having a sine wave shape. However, setting aside the fact that Fig. 2 shows an idealized sine wave shape, Fig. 2 also fails to show any additional peak areas above location of some of the local maxima, such additional peak areas responsible for the Rpk value.
As claim 7 requires a configuration that is not possible, it is by definition indefinite. For prior art rejection, any feature that can be idealized into a schematic showing a sine wave reads on the limitation.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2020/0082803 A1 (“Pack”).
Considering claims 1 and 2, Pack discloses a composite comprising a structural film 24 located upon a substrate 16 (viz. primary film layer), the structural film 24 having a surface texture, wherein Rpk value of the structural film 24 is 5 to 12 microns. (Pack ¶¶ 0031-0038). Pack especially notes the surface texture can be in the form of undulating ribbons (viz. ridges). (Id. ¶¶ 0036-0038). As an alternative, Pack discloses surface texture in the form of elongated wedges. (Id. ¶¶ 0039-0041). These also reads on ridges.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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.
Claims 1, 2, 8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over JP 2020/163829 A (of record, referenced below using its machine translation, “JP ‘829”).
Considering claims 1, 2, 8, and 10 JP ‘829 discloses a decorative material 10 having a substrate 1, various pattern layer 2, build-up print 4 forming a surface texture (including ridge-shaped texture), a protective layer 5 conformally covering the build-up print 4, wherein the decorative material can be attached onto an adherend via an adhesive layer located adjacent a surface of the substrate 1 opposing a surface on which the pattern layer 2 is located. (JP ‘829 ¶¶ 0008 and 0069-0076 and Figs. 1, 2, and 4). JP ‘829 is analogous art, for it is directed to the same field of endeavor as that of the instant application (decorative laminate having surface features).
JP ‘829 discloses that the decorative material 10 has reduced peak height Spk of 4.1 µm or more, with specific examples ~17 µm. (Id. ¶¶ 0020, 0100, and 0101; and Table 1). With JP ‘829 expressly disclosing that Spk value affects tactile sensation of its decorative material, and with the protective layer 5 forming the outermost surface of the decorative material 10, it is clear that this is value pertains to the surface protective layer. Although Spk is not technically the same as Rpk in that the former is a measurement on a 2D region whereas the latter is a measurement along a linear segment, both attempts to account for additional peak height above core roughness and are as such substantially similar. Furthermore, JP ‘829 discloses that the range should be above 4.1 µm for improved tactile sensation and below 25 µm for stain resistance and abrasion resistance. (Id. ¶ 0020). The claimed Rpk is thus deemed substantially similar to the disclosed Spk that the values from the reference anticipate the range. Alternatively, even were the values were to be deemed different (not conceded), JP ‘829 is considered to have disclosed guideline for obtaining optimal value of additional peak height above core roughness as to make the claimed range a workable range. Silence of a reference on a quantitative limitation when the reference discloses the general characteristic is not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. (See MPEP 2144.05 II.A).
JP ‘829 anticipates or renders obvious claims 1, 2, and 10.
Considering claim 8, JP ‘829 discloses usage of radiation curable acrylate to form its protective layer 5. (JP ‘829 ¶¶ 0076 and 0100).
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020/163829 A (referenced below using its machine translation, “JP ‘829”), as applied to claim 1 above.
Considering claim 5, JP ‘829 discloses its protective layer has a thickness of 3-15 µm. (JP ‘829 ¶ 0078). This overlaps the claimed range. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Considering claim 6, though specific ranges not disclosed, JP ‘829 generally discloses lowering gloss of its decorative material. (See, e.g. JP ‘829 ¶ 0038). Silence of a reference on a quantitative limitation when the reference discloses the general characteristic is not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical.
Claims 3, 4, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020/163829 A (referenced below using its machine translation, “JP ‘829”), as applied to claim 1 above, and further in view of U.S. 2023/0322013 A1 (“Pisch”).
Considering claims 3 and 4, JP ‘829 differs from the claimed invention, as it is silent re: RSm values. Pisch teaches a decorative laminate comprising a patterned upper coating layer 21, a lower coating layer 22 serving as an adhesive, a paper impregnated with melamine 3, and a wood substrate 4. (Pisch ¶¶ 0037-0041). Pisch teaches that the pattern on the upper coating layer 21 is formed from an imprint surface having a pattern that is negative of the pattern on the upper coating layer 21, wherein the imprint surface has elongated channels and RSm of 0.5 to 500 µm. (Id. ¶¶ 0014-0016, 0020, and 0035). Such a patterned upper surface is therefore substantially similar to that of JP ‘829.
Furthermore, the spacing of features RSm is also imprinted onto the patterned upper coating layer 21. As such, the range taught overlaps the claimed range. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have selected RSm in the overlapping range as taught in Pisch, as such a range results in desirable low gloss and resistance toward finger print. (Pisch ¶¶ 0019 and 0035). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have adjusted the RSm of the protective layer 5 of JP ‘829 for improved resistance toward fingerprints.
Considering claim 7, sine wave like surface (a superposition of sine waves is itself a sine wave) is shown in Pisch.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2020/163829 A (referenced below using its machine translation, “JP ‘829”), as applied to claim 1 above, and further in view of WO 2021/066496 A1 (referenced below using its English-language counterpart publication EP 4043528 A1, “Kim”).
Considering claim 8, JP ‘829 differs from the claimed invention, as it does not disclose (meth)acrylates having alkylene oxide repeats. However, usage of such acrylate materials for forming a low-gloss surface layer of a decorative laminate is well-known, as taught in Kim. (Kim ¶¶ 0014, 0015, 0114, and 0118). Kim may be combined with JP ‘829 due to general similarities (surface layer formed from an acrylate composition and keeping a wrinkled shape). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used the (meth)acrylate composition of Kim to make the surface layer of JP ‘829, as doing so improves durability and elongation rate of the resulting layer. (Kim ¶ 0115 and 0119).
Double Patenting Rejection
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 19/258,511 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 of the ‘511 Application recites all limitations in claims 1-10 of the Instant Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 19/274,472 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 of the ‘511 Application recites all limitations in claims 1-10 of the Instant Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights