DETAILED ACTION
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 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bauer (US 2010/0221504).
In respect to claim 1, Bauer discloses a three-dimensional display card comprising: a base 14, a surface 12 which may have a “pretreatment…suitable for printing according to an inkjet printing method” (“priming layer”) (0035); at least one layer of ink and at least one second layer of ink, both 16 (Fig. 1), the ink may be UV-curable (0034); and a color layer 76 applied to the at least one second layer of ink (0049; 0052; Fig. 3).
In respect to the amended subject matter, Bauer discloses the claimed invention. Although Bauer does not explicitly disclose printing in a unidirectional manner and product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, there is no difference in the claimed resultant article whether the inkjet print unidirectionally or bidirectionally. Any claimed difference in resolution “high print quality” is 1) not reflected in the claim and 2) is not tied directly to whether the ink was printed unidirectionally or bidirectionally i.e. ink can be printed at a high resolution bidirectionally and at a lower resolution unidirectionally, with he bidirectionally in this case being “high print quality”. Lastly, it is well known in the art that unidirectional printing is a default standard in ink jet printing, with bidirectional printing being a selective option in some inkjets for faster printing (with comparatively less quality).
In respect to claims 3 and 4, Bauer discloses that each of the two UV ink layers provide a thickness to the base. Providing a “texture” is inherent in any exposed top surfaces of the ink layers, as broadly claimed.
In respect to claim 5, Bauer discloses that the UV inks may be transparent (0034).
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.
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Bauer (US 2010/0221504) in view of Till (US 2016/0221359).
In respect to claims 1, Bauer discloses the claimed invention for the reasons stated above, as a broad “priming layer” can be construed from the disclosure of a “pretreatment”, however, Till further teaches a similar three-dimensional card comprising similar stacked ink layers for three-dimensional effect (Abstract), further, a priming layer 3 may be provided on the base layer underneath the ink layers (Fig. 2). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to provide the base taught in Bauer with a priming layer in view of Till to insure sufficient adhesion to the base substrate (0034).
In respect to claim 2-5, Bauer discloses that the base “unfinished component” 14 can be any conceivable material, and it would have been obvious to select a well known material such as aluminum since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
In respect to claims 6 and 7, Bauer does not disclose providing a layer of white ink applied on top of the second UV ink within a border of the image or text to be printed, however, Till teaches it is known to provide white ink 14 underneath the other color layers (mislabeled, 12 in the Figure) (Fig. 1). It would have been obvious to provide the color layer taught in Bauer with an underlying white ink layer in view of Till to produce better opacity (0003). It is noted that provision below the color layer in Bauer would be on top of the 2nd UV ink layer.
In respect to claims 8, Bauer discloses a multiple color layer but does not specifically disclose CMYK color, however, Till teaches providing colors via a CMYK template (0048). The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, using an extremely well-known (likely the most well-known) color parameters for color printing.
In respect to claims 9 and 10, the priming layer taught in Bauer and Till is capable of being provided by the methods claimed. Furthermore, it is noted that although product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
In respect to claims 11-17, Bauer in view of Till teach the claimed invention for the reasons stated above.
Claims 1-17 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Bauer (US 2010/0221504) in view of Till (US 2016/0221359) and Brown (US 6,273,550).
Bauer in view of Till fully teach the claimed invention for the reasons stated above, however, Brown additionally teaches that bidirectional print mode is a mode selectable in most printers (further supporting unidirectional printing being the default in inkjets) and teaches that either unidirectional or bidirectional can be selected. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to provide the inkjet printing taught in Bauer and Till as unidirectional printing in view of Brown to provide greater image quality as compared to speed of printing (Col. 2, 6-32).
Claims 1 and 4-17 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Bauer (US 2010/0221504) in view of Till (US 2016/0221359), Brown (US 6,273,550) (optional), and McKillip (US 2003/0067157).
Although Bauer in view of Till (and Brown) inherently discloses a “texture” formed by the second UV ink, McKillip teaches a similar three-dimensional card having a texture 32 (0023; Fig. 4), and it would have been obvious to provide the second UV ink taught in Bauer and Till with a texture in view of McKillip to provide etched or other aesthetic effects (0023).
Response to Arguments
Applicant's arguments filed 03/24/26 have been fully considered but they are not persuasive.
In respect to claim 1 of the 35 USC 102(a)(1) rejection, the applicant contends that Bauer fails to disclose unidirectional printing. However, this is not found persuasive for the reasons detailed above.
In respect to claims 3 and 4 of the 35 USC 102(a)(1) rejection, the applicant contends that Bauer fails to disclose the “unique texture” of the present application, however, the claim does not reflect any of the alleged differences.
In respect to claim 5 of the 35 USC 102(a)(1) rejection, Bauer clearly discloses the limitation as detailed in the Office Action. The applicant has provided no argument or rationale otherwise.
In respect to claim 1 of the 35 USC 103 rejection, the applicant contends that the teaching of till would not be obvious since “Till focused on the method of how to print onto a curved 3D structure” which is not persuasive. Till clearly teaches providing a primer layer to promote adhesion to the base substrate, which is completely applicable to Bauer. The fact that Till focuses on adhesion to 3D objects does not taught away from flat objects, which also use disparate materials which would benefit from added adhesion.
In respect to claim 5 of the 35 USC 103 rejection, the applicant contends that aluminum is not an obvious material selection, since [large list of other various materials] would be suitable, which is not persausive. The case law states that any known material (with aluminum being an extremely well- known material) is an obvious design choice. The applicant has not provided any unexpected result from the use of aluminum to make it “special” over the other list of known materials.
In respect to claim 8 of the 35 USC 103 rejection, the applicant concedes that CMYK is a known (likely most known) color template, but lists an alleged inventive sequence of colors, however no specific sequence of colors is claimed.
In respect to claims 9 and 10 of the 35 USC 103 rejection the applicant contends that the resultant product differs, namely “visual effects such as a gloss effect, metallic sheen effect, matte effect…” however the applicant makes no structural distinction in the claims differentiating the ink structures having these alleged effects and thus no persuasive argument that the claimed resultant product of the prior art could not have been made with this process. The fact, if true, that the special methods could make these effects is irrelevant to the claimed resultant structure, absent structural differentiation.
In respect to the 35 USC 103 rejection in further view of McKillip, the applicant relies on the previous alleged deficiencies of the other prior art, and thus is not persuasive for the same reasons detailed above.
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 KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637