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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/29/25 has been considered by the examiner.
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 1, 3, and 5-8 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.
In claim 1, the claim specifies the oriented print layer comprises “a core layer, a first adhesion layer and a second adhesion layer” which implies the adhesion layers may be stacked. However, the specification and Drawings only show the first and second adhesion layers on opposite sides of the core layer. Clarification is required.
In claim 3, the claim specifies “a varnish layer on the ink layer”. However, in claim 1 the ink layer may be coupled to the first adhesion layer, the second adhesion layer or the pressure sensitive adhesive layer. Is the varnish only present when the ink is coupled to the first adhesion layer?
In claim 5, the claim specifies “the ink layer is a first indicia layer and further comprising a second indicia layer”. Is the ink layer two indicia layers or is the second indicia layer formed elsewhere? Claim 6-8 depend upon claim 5 but do not clear up the location of the second indicia layer.
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.
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.
Claims 1-3 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over CN 107406732 (KONDO ET AL) in view of US 6,475,585 (YAMANASHI ET AL).
Regarding claim 1: The ‘732 CN reference discloses a decorative sheet comprising a film layer (core layer) and a pressure sensitive adhesive thereon. See claim 1. The decorative sheet comprises an ink layer on the film. See [0025]. The film layer may have a primer layer or surface treatment (second adhesion layer) to promote adhesion of the pressure sensitive adhesive to the film. See [0023]. It is recognized that the reference does not include an adhesion promoting layer (first adhesion layer) between the ink and the film layer. However, the ‘585 reference shows that providing a layer to adhere the ink to a surface of a pressure sensitive decorative film is known. See primer and ink receiving layers 3 and 4 in Figure 2. Therefore, it would have been obvious to one of ordinary skill in the art to include a primer/ink reception layer between the ink and film layer of the ‘732 decorative sheet. One would expect the improved adhesion of the ink layer to the sheet.
Regarding claim 2: The second adhesion layer and pressure sensitive adhesive a next to each other. See CN [0023].
Regarding claims 3, 9 and 10: The decorative sheet comprises a protective resin layer (varnish) on the outer surface which may be a matte surface. See [0028].
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over CN 107406732 (KONDO) in view of US 6,475,585 (YAMANASHI) further in view of KR 2014-0039533.
Regarding claims 5 and 6: The combination of the ‘732 and ‘585 reference discloses the decorative sheet as described in the above 103 rejection. It is recognized the reference does not disclose multiple ink layers. However, the ‘533 reference shows that it is known to include multiple ink layers on a pressure sensitive decorative sheet. See layers 33 (white/primary colors) and 34 (fluorescent) in Figure 2. Therefore, it would have been obvious to one of ordinary skill in the art to provide multiple ink layers. One would be motivated by the reasoned expectation of obtaining the more intricate designs disclosed.
Regarding claim 7: The inks may be fluorescent. See ‘533 claim 1.
Regarding claim 8: The outer layer may have a matte finish. See ‘732 [0028].
Double Patenting
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,109,946. Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same sticker for use with a dental appliance. While the patent does not explicitly recite each element of the instant claims, when looking to the specification to further define the claims, each limitation is found.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,471,253 Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same sticker for use with a dental appliance. While the patent does not explicitly recite each element of the instant claims, when looking to the specification to further define the claims, each limitation is found.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,839,520. Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same sticker for use with a dental appliance. While the patent does not explicitly recite each element of the instant claims, when looking to the specification to further define the claims, each limitation is found.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,257,125. Although the claims at issue are not identical, they are not patentably distinct from each other because they cover the same sticker for use with a dental appliance. While the patent does not explicitly recite each element of the instant claims, when looking to the specification to further define the claims, each limitation is found.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH EVANS MULVANEY whose telephone number is (571)272-1527. The examiner can normally be reached 8am-4:30pm M-F.
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/ELIZABETH E MULVANEY/Primary Examiner, Art Unit 1785