DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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 Applicant’s amendment filed on June 02, 2026 was received. Claim 1 was amended. Support of amendment can be found in paragraph [0023].
The text of those sections of Title pre-AIA 35, U.S.C. code not included in this action can be found in the prior Office Action issued on April 07, 2026.
Claim Rejections - 35 USC § 102
The claim rejections under 35 U.S.C. 102(a)(2) as being described by Macor et al (WO 2021/214659) on Claims 1-3, 5-13, and 20 are maintained.
Regarding claim 1, Macor et al teach a method of applying a resin A (substance) on the surface of a substrate, then applying a liquid B (liquid coating) on the resin, wherein the resin A is liquid or partially solidified (e.g. see abstract), the method further carry out UV irradiation at points 4 and 5 of figure 2 (also see page 16, lines 21-25), page 16, lines 15-18 also teach resin A includes a non-photo-cross-linkable material such as polyurethane, printing ink applied by digital printing; resin A is applied on the surface of a substrate (by digital printing) before liquid B is applied (e.g. see page 5, lines 4-11, page 11, lines 7-11, as admitted by Applicant in paragraph [0023] a non-photo-crosslink material such as polyurethane and epoxy ), Macor et al teach the greater the difference in surface tension between liquid B and resin A, the greater the corresponding embossing effect (see page 9, lines 29-31), the liquid B more or less penetrate into the resin A and thus modify the three-dimensional structure obtained after the removal of the polymerized mixture AB (page 9, lines 23-28), which reads on the claimed “the liquid coating and the substance react with each other”.
Regarding to claim 2, Macor et al teach applying a resin A (substance) on the surface of a substrate, then applying a liquid B (liquid coating) on the resin, resin A is applied on the surface of a substrate (by digital printing) before liquid B is applied (e.g. see page 5, lines 4-11, page 16, lines 21-25), Macor et al teach the greater the difference in surface tension between liquid B and resin A, the greater the corresponding embossing effect (see page 9, lines 29-31), the liquid B more or less penetrate into the resin A and thus modify the three-dimensional structure obtained after the removal of the polymerized mixture AB (page 9, lines 23-28), which reads on the claimed “the liquid coating and the substance react with each other”.
Regarding to claim 3, Macor et al teach applying a resin A (substance) on the surface of a substrate, then applying a liquid B (liquid coating) on the resin, wherein the resin A is liquid or partially solidified (e.g. see abstract) the liquid B more or less penetrate into the resin A and thus modify the three-dimensional structure obtained after the removal of the polymerized mixture AB (page 9, lines 23-28), which reads on the claimed “the liquid coating and the substance react with each other”, the method further carry out UV irradiation at points 4 and 5 of figure 2 (also see page 16, lines 21-25).
Regarding to claim 5, Macor et al teach further carry out UV irradiation at points 4 and 5 of figure 2 (also see page 16, lines 21-25), the liquid B more or less penetrate into the resin A and thus modify the three-dimensional structure obtained after the removal of the polymerized mixture AB (page 9, lines 23-28).
Regarding to claim 6, Macor et al teach the resin A (substance) comprises one or more photo initiators (page 11, lines 18-22).
Regarding to claim 7, Macor et al teach resin A is a photo-cross-linkable printing ink applied by digital printing; resin A is applied on the surface of a substrate (by digital printing) before liquid B is applied (e.g. see page 5, lines 4-11), the process the polymerized and/or solidified mixture consisting of liquid B and resin A is obtained while the resin A remains liquid (claim 11).
Regarding to claim 8, Macor et al teach wherein the second substance comprises a UV absorber to inhibit propagation of radicals (claim 7, page 10, lines 10-21, page 12, 14-35).
Regarding to claim 9, Macor et al teach the resin A or a paint or an ink containing it, to be embossed, can be applied on the substrate with digital technology, for example, as illustrated in Figure 2 at point 3, using inkjet printing, In an embodiment of the invention, the resin A is a photo-cross-linkable printing varnish and/or a photo-cross- linkable printing ink applied by digital printing (page 16, 5-18).
Regarding to claim 10, Macor et al teach the three-dimensional structure obtained after the removal of the polymerized mixture AB (page 9, lines 23-28),
Regarding to claim 11, Macor et al teach resin A is a photo-cross-linkable printing ink applied by digital printing; resin A is applied on the surface of a substrate (by digital printing) before liquid B is applied (e.g. see page 5, lines 4-11, page 16, lines 15-18).
Regarding to claim 12, Macor et al teach the substrate that can be used can be wood (see page 15, lines 14-20).
Regarding to claim 13, Macor et al teach the method further carry out UV irradiation at points 4 and 5 of figure 2 (also see page 16, lines 21-25).
Regarding to claim 20, Macor et al teach the opacification/gloss layer is also carried out using digital printing (see page 7, lines 28-30).
Claim Rejections - 35 USC § 103
The claim rejection under 35 U.S.C. 103 as being unpatentable over Macor et al, as applied to claims 1-3, 5-13, and 20 above on Claim 4 is maintained.
Regarding claim 4, Macor teaches a method as disclosed above. Macor also recognizes the surface tension of liquid B and of the resin A is adjusted or modulated by changing or selecting the chemical nature of their basic raw materials and by adding specific additives (see page 9, lines 23-page 10, line 4). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the surface tension to modify the three-dimensional structure obtained after the removal of the polymerized mixture AB (page 9, lines 23-28) . Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
The claim rejections under 35 U.S.C. 103 as being unpatentable over Macor et al, as applied to claims 1-3, 5-13, and 20 above, and further in view of Segaert (US 2011/0117325) on Claims 14-19 are maintained.
Regarding to claim 14, Macor et al do not teach applying a décor on the upper side before applying the layer. Segaert teach substrate and a provided synthetic material layer with printed décor (e.g. abstract) and the transparent or translucent synthetic material layer forms a protective layer above the printed décor (e.g. paragraph 5). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Segaert into the teaching of Macor et al to form a protective layer on top of the décor layer to protect the décor to improve the quality of the product.
Regarding to Claim 15 is rejected for the same reasons as discussed in claim 14 above, and Segaert further disclose, see figure 4, paragraph 55, décor layer 24 is on the upper side of the substrate.
Regarding to Claim 16 is rejected for the same reasons as discussed in claim 14 above, and Segaert further disclose, see paragraph 5, intermediary primer layer can be apply and at least partly cured before the décor layer.
Regarding to Claim 17 is rejected for the same reasons as discussed in claim 14 above, and Segaert further disclose, see paragraph 5, intermediary primer layer can be apply before the décor layer.
Regarding to Claim 18 is rejected for the same reasons as discussed in claim 14 above, and Segaert further disclose, see paragraph 5, intermediary primer layer can be apply and at least partly cured before the décor layer.
Regarding to claim 19, Macor et al do not teach applying a décor on the upper side before applying the layer. Segaert teach substrate and a provided synthetic material layer with printed décor (e.g. abstract) and the transparent or translucent synthetic material layer forms a protective layer above the printed décor (e.g. paragraph 5). It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Segaert into the teaching of Macor et al to form a protective layer on top of the décor layer to protect the décor to improve the quality of the product.
Double Patenting
The claim rejections on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of US Patent US12,290,836 B2 (‘836) on Claims 1-20 are withdrawn because Terminal Disclaimer was filed.
The claim rejections on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 of US Patent US11,865,578 B2 (‘578) on Claims 1-20 are withdrawn because Terminal Disclaimer was filed.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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