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 Group I, claims 1-18, in the reply filed on May 7, 2026 is acknowledged.
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 7, 2026.
Therefore, after the election, claim 19 is withdrawn and claims 1-18 are pending for examination as filed with the preliminary amendment of May 7, 2026.
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 4, 8 , 9, 14 and 15 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 4, line 3, “wear-resistant” in unclear and indefinite as to how much wear resistance is needed to be considered wear resistant. For the purpose of examination, any coating is understood to provide some degree of wear resistance, but applicant should clarify what is intended, without adding new matter.
Claim 8, one or more of diluent, auxiliary agent and second photoiniator can be selected, and features of the photoinitiator are described. It is confusing as to what is required if the selected added material is not photoinitiator, are the features only required if the photoinitiator selected? For the purpose of examination, it is understood that the photoinitiator features only required if the photoinitiator selected, but applicant should clarify what is intended, without adding new matter.
Claim 9 depends from claim 8 and refers to features of the second photoinitiator, but does not require this to be selected, so it is unclear what the claim requires if the photoinitiator not selected. For the purpose of examination, it is understood that the photoinitiator selected, but applicant should clarify what is intended, without adding new matter.
Claim 14 provides for features of the diluent and acrylic resin, but from parent claim 13 it is not required that diluent or acrylic resin or both be selected, so it is confusing as to what is required if auxiliary agent selected, or only acrylic resin selected, etc. For the purpose of examination, it is understood that it is intended that diluent or acrylic resin selected, and only the features of the one selected need to be provided, but applicant should clarify what is intended, without adding new matter.
Claim 15, line 2, “are consistent with” is unclear and indefinite as to what is actually required, as this does not require the placement to be the same, etc. For the purpose of examination, any controlled placing is understood to meet the claim requirements, but applicant should clarify what is intended, without adding 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.
Claims 1, 4-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Macor (US 2021/0187823) in view of WO 2024/217296 (hereinafter ‘296), WO 2024/095560 (hereinafter ‘560) and GB 2 127 324 (hereinafter ‘324).
*** Please Note: Yang et al (US 2026/0103018) is used as a translation to ‘296, so paragraph citations are to Yang et al (US 2026/0103018). Furthermore, EP 4 613 822 (hereinafter ‘822) is used as a translation for ‘560, so paragraph citations are to ‘822 ***
Claim 1: Macor teaches a method of preparing a decorative material with a three-dimensional (3D) texture structure (note 0002-0003, 0087). The method includes providing a substrate that can be various materials including wood, plastic, etc. and can be used to coat flooring, etc. and indicates that the process can be used over an underlying printed image (note 0085-0087, 0092-0094). Over the substrate, a photocurable coating (resin A) is applied onto a surface of the substrate, where the photocurable coating can be partially solidified before a next coating (liquid B) applied (note 0024-0026, 0044, 0050-0054, Figure 1(1)). Then, a next coating (liquid B) is ink jetted onto the resin A coating, where this next coating acts as a texture developer (note figure 1(2), 0045, 0105-0106, 0022). Thereafter, a secondary curing is provided to the coating (liquid A) to obtain a cured coating, which comprises at least a hardened part (note figure 1(3), 0046, 0053, 0096, note liquid B also cured). Thereafter, the liquid B coating is removed by polishing/wire drawing (note figure 1(4), 0047, 0099, understood to provide polishing/wire drawing as same type of apparatus indicated by applicant for such treatment). Thereafter, a top coating is applied thereon to obtain the decorative material with the 3D texture structure (note figure 1(5), 0103).
(A) Further, as to the pretreatment of the substrate and digital printing of the substrate with a two-dimensional (2D) pattern layer on the surface of the substrate before the photocurable coating applied,
‘296 describes how it can be desirable to provide pretreated and prepatterned substrates (note 0062-0089), over which photocurable coatings and texture developer/embossing solution applied, followed by curing, followed by polishing/wire-drawing removal of material provided, leaving a 3D pattern structure (note figure 1, 0014-0021). The substrate can be pretreated with application of initial layers and then a 2D digital printing (ink jet printing understood as a 2D digital printing) of a pattern on the substrate (note 0196-0198). The formed article can be used for flooring, etc. (0194).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Macor to provide that the substrate includes pretreatment layers and then a digital 2D pattern printed over these layers, before the photocurable coating applied as suggested by ‘296 with an expectation of predictably acceptable results since Macor is forming flooring, for example, with the process, and ‘296 indicates that in a similar 3D flooring formation the substrate is provided with pretreatment layers and a 2D ink jet (digital) printing before the photocurable coating applied.
(B) As to providing a primary curing before the ink jet printing of the texture developer/liquid B, and additionally providing that the curing of the coating specifically leaves a hardened and unhardened portion of the photocurable coating/resin A, and the unhardened part of the coating is removed by the polishing/wire drawing, as noted above, Macor indicates that the photocurable coating/resin A can be partially solidified when liquid B applied (note 0026), and the curing can be by UV curing (note 0053), where resin A coating is shown as uniform over the substrate (note figure 1(1)). Macor as discussed above indicates that liquid B after curing is removed leaving the 3D pattern, but does not specifically indicate that there is also unhardened resin A material that is removed.
‘560 further indicates the desire to form an embossed/3D pattern on floor materials, decorative boards and the like (note figure 1, 0084, 0054). The process includes providing a substrate (note 0064, 0091), thereafter applying a first photocurable coating to a surface of the substrate to cover the substrate (note figure 1, 0064-0066), thereafter applying by ink jet a texture developer/UV blocking ink pattern (note figure 1, 0062, 0075-0077), thereafter a secondary curing (UV irradiation curing) is applied to obtain a cured first coating where the texture developer not applied, and an uncured/not fully cured/semi-cured coating under where the texture developer applied (so leaving a hardened and unhardened/lower hardness/semi-cured part of the first coating) (note figure 1, 0062, 0078-0080), and removing the texture developer and unhardened/lower hardness part of the first coating by polishing/wire drawing (note figure 1, 0081-0082, brush removal understood to provide polishing/wire drawing), and then applying a top coating thereon to obtain the decorative material with the 3D structure (note 0083, figure 1). This allows for providing an easy formation of an indented pattern (note 0010).
‘324 further indicates how a first layer of UV curing coating can be applied in a uniform layer to a surface (note page 1, lines 60-65, 95-115), then partially cured to stabilize for handling and contact with a mask (note page 1, lines 60-75 and 105-110, note partially cured/hardened), then applying a mask (note page 1, lines 70-75 and 115-125), then exposing the coating to UV to complete the cure (where the unmasked areas get the complete cure/hardening), then removing the semi-cured masked areas to leave the desired pattern (note page 1, lines 65-70 and 115-130).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Macor in view of ‘296 to provide the photocurable coating, then provide a primary curing, and then ink jet the texture developer pattern, and then provide a secondary curing to obtain a cured photocurable coating, where the cured coating has hardened parts and unhardened/less hardened/semi-cured parts, and the texture developer and unhardened part of the cured coating is removed by the polishing/wire drawing as suggested by ‘560 and ‘324 with an expectation of providing a desirable three-dimensional pattern, since Macor wants to provide a three-dimensional pattern, with application of a photocurable coating, then printing of a texture developer pattern, then curing, and then removal of texture developer with a wire drawing, and ‘560 teaches that in a similar such three-dimensional pattern forming, it would be desirable to use UV blocking material for the texture developer pattern, such that the curing results in fully cured/hardened parts of the photocurable coating that is to remain and leaves semi-cured/unhardened/less hardened parts of the photocurable coating under the texture developer, such that in the removal process both the texture developer and the unhardened coating is removed leaving a specific three-dimensional pattern of the cured/hardened photocurable coating, allowing easy formation of an indented pattern, and ‘324 would further suggest providing a primary curing of the photocurable coating to semi-cure before the texture developer/mask is applied to give stabilized coating for handling, and then after application of the texture developer/mask giving a secondary coating giving fully cured coating and uncured /semi-cured areas below the texture developer/mask that can be removed.
Claim 2: As to the pretreatment including “covering”, the pretreatment layers of ‘296 can be described as providing “covering” at the least (note 0197).
Claim 4: As to applying a wear-resistant coating over the 2D pattern and curing before applying the photocurable coating, this would be suggested as a conventional process in the art by ‘296 (note 0198-200, figure 1).
Claim 5: As to the photocurable resin comprising an acrylic resin, this is noted by Macor (note 0050), where the resins can be epoxy-acrylate (epoxy-acrylic), polyester-acrylate (polyester acrylic), etc. (note 0053). This is also suggested by ‘560 (note 0066). As to the resin also containing a first photoinitiator, this is further suggested by ‘560 (note 0067), as conventional for such photocurable materials.
Claims 6, 7: ‘560 would further suggest that the photoinitiator can be 2,4,6-trimethyl benzoyl diphenyl phosphine oxide (from the listing at 0067, where 2,4,6-trimethylbenzyl diphenylphosphineoxide understood to suggest the same initiator claimed), where the amount can be 1-7 mass % of the photocurable coating (note 0068), overlapping the amount claimed, and it would be obvious to optimize from this range, giving a value in the claimed range. Since the same initiator claimed is used, it is understood that it would also have a maximum absorption peak in the claimed range.
Claims 8, 9: As to the providing of a second photoinitiator, such as benzophenone, this is also suggested by ‘560, which indicates that two or more photoinitiators can be used where one can be benzophenone (note 0067), where since the amount of photoinitiaor used can be 1-7 mass % of the photocurable coating, it would have been obvious to optimize the amount of each photoinitiator used giving a value in the claimed range. Since the same initiator claimed is used, it is understood that it would also have a maximum absorption peak in the claimed range.
Claim 10: As to the UV primary curing, this is suggested by Macor (note 0053, 0094), where ‘560 also notes photocuring with UV (note 0078), where since the material is UV curable, it would have been obvious that the initial primary curing is also UV as well, where this is also indicated by ‘324 (page 1, lines 60-65 and 105-110). Since UV curing used, it is understood that the range will at least overlap 350-420 nm, giving the conventional range of UV light (such as 100-400 nm), and it would have been obvious to optimize from this range for the particular material used, giving a value in the claimed range. As to the thickness the photocurable coating, Macor indicates 1-500 microns (note 0088-0089) and it would have been obvious to optimize the thickness provided, which when optimized would include a primary cured thickness in the claimed range. Similarly, ‘560 notes a thickness of 100 microns or more (note 0073).
Claim 11: As to the texture developer also having photoinitiator, as noted by Macor, it is also conventional to cure the texture developer/liquid B (note 0046), and since ‘560 notes conventional photoinitiators used in photocurable compositions, such as benzophenone (note 0067), it would have been obvious to use such photoinitators in the texture developer as well. Since the same initiator claimed is used, it is understood that it would also have a maximum absorption peak in the claimed range.
Claim 12: As to the amount of photoinitiator used, ’560 describes the conventional use of 1-7 mass % in a composition (note 0068), suggesting a conventional amount to use, which is in the claimed range.
Claims 13, 14: as to the texture developer also having a active diluent such as 1, 6-hexanediol diacrylate, ‘560 suggests that such a material can be used in the texture developer/UV blocking ink (note 0086-0087), and thus suggesting a conventional material for use in such compositions. The amount of the material can be 55-85 mass % of the ink (note 0034), overlapping the claimed range, and it would have been obvious to optimize from this range, giving a value in the claimed range. ‘560 also suggests using acrylic polymer/resin (note 0086, 0088), which can be in an amount of 10-20 mass % of the ink (note 0053), overlapping the claimed range, and it would have been obvious to optimize from this range, giving a value in the claimed range.
Claim 15: As to the ink jetting the texture developer to a pattern and position consisted with the 2D pattern and position, this would have been an obvious matter of design choice. Note MPEP 2144.04(I).
Claim 16: Macor notes the secondary curing (after the texture developer applied) can be UV curing with using a light source of an Hg (mercury) lamp (note 0094, figure 1(3)).
Claim 18: As to the top coating applied 1-3 times, it would be suggested that at least 1 time can be applied by the process of Macor as shown in figure 1(5) (note 0103). ‘296 also describes how specifically 2 top coats can be applied after wire brushing (note 0206-0208), further giving a suggested number of layers to use.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Macor in view of ‘296, 560 and ‘324 as applied to claims 1-2, 4-16 and 18 above, and further in view of Chen (US 2007/0283648).
Claim 3: As to the specific type of digital printing, ‘296 describes ink jet printing with an ink to be cured (note 0198).
Chen describes digital printing that can be used for flooring (note 0035),where the digital printing uses ink jet printing with curable inks (note 0035), where such inks can be UV curable (note 0056), and the ink can be water or solvent based (note 0085).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Macor in view of ‘296, ‘560 and ‘324 to use ink jet printing with UV curable ink, or where the ink is water based or solvent based as suggested by Chen with an expectation of predictably acceptable results, since Macor indicates ink jet printing with ink and curing, and Chen indicates that for flooring ink jet printing can be provided with UV curable ink, and water or solvent based ink.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Macor in view of ‘296, 560 and ‘324 as applied to claims 1-2, 4-16 and 18 above, and further in view of CN 113579956 (hereinafter ‘956).
Claim 17: As to the specific polishing/wire drawing method, Macor notes that the removal can be provided using the same machines for brushing the wood, with brushes made from one or more of more or less aggressive materials, including steel, nylon fibers, etc. (note 0099).
‘956 describes how wire drawing of a plate/article that can be wood can be provided using a sequence of rollers with corresponding bristles, such as including a sequence with steel wire bristles followed by nylon bristles (note pages 2-3, translation).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Macor in view of ‘296, ‘560 and ‘324 to use polishing/wire drawing with a sequence of rollers, including high hardness/steel and low hardness/nylon, with steel followed by nylon treatment since Macor indicates known wire drawing/brushing for wood with steel, nylon brushes, etc. and ‘956 indicates that such known systems conventionally can have a sequence of steel wire brushes followed by nylon wire brushes. As to the number of brushes used of steel wire and nylon, it would have been an obvious matter of optimization based on the size and specific article used, since as noted by In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
Margerum et al (US 4938568) notes bezophenone with a peak absorption in the range of 320-340 nm (note column 6, lines 55-65). CN 109293697 notes 2,4, 6-trimethyl benzoyl diphenyl base phosphine oxides with a peak absorption in the range of 350-400 nm (note page 2, translation).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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