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 .
Summary
The Applicant’s arguments and claim amendments received on April 20, 2026 are entered into the file. Currently, claims 1-15 are withdrawn; claims 16-20 are amended; resulting in claims 16-20 pending for examination.
Claim Objections
Claim 16 is objected to because of the following informalities: It is suggested to amend the limitation reciting “wherein the at least one marker is configured to be detectable with visual imaging means” to --wherein the at least one marker is detectable with visual imaging means--. The current language of the claim appears to intend to require that the marker is configured to be detected (i.e., capable of being detected) with visual imaging means, or that the marker is detectable with visual imaging means, and will be interpreted as such for the purpose of applying prior art.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16, 17, and 20 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Meeus et al. (US 2021/0213767, previously cited).
Regarding claim 16, Meeus et al. teaches an inkjet printing method for manufacturing decorative laminate panels comprising printing one or more decorative patterns having an identification code concealed therein on a substrate web (Abstract, [0052]). The decorative laminate panel can be a floor panel, furniture panel, ceiling panel, or wall panel ([0067], Figs. 4, 7). The decorative pattern may be a wood reproduction or a stone reproduction, wherein the inkjet inks used to form the decorative pattern may be a standard CMYK ink set or a CRYK ink set, where the use of a red ink enhances the color gamut for wood based color patterns ([0044], [0142], [0212]). The decorative pattern therefore comprises a plurality of color channels.
The identification code (marker) is printed together with the one or more decorative patterns and may be present within the decorative pattern itself [0040]. The identification code may be machine readable but not human readable due to the use of steganography, for example wherein the identification code can be concealed within the lowest bits of noisy images [0052]. Least significant bit steganography involves changing the value of a pixel’s color channel by 1, a change which is imperceptible to the human eye. The identification code is therefore formed by at least one altered color channel, wherein the color difference ΔE between an average color of the identification code and an average color of a region adjacent to the identification code would inherently be within the claimed range of less than 6. Meeus et al. further teaches that the identification code is scannable by a smart phone ([0052]), such that the identification code is detectable by visual imaging means comprising a digital filter configured to focus on the color of the altered color channel as claimed.
Regarding claim 17, Meeus et al. teaches all of the limitations of claim 16 above. As noted above, Meeus et al. teaches that the identification code may be present outside of or within the decorative pattern ([0040]), where the identification code (46) shown in Fig. 6 is substantially surrounded by a decorative pattern (41), where the first surface area over which the identification code is defined is smaller than the second area of the decorative pattern which is adjacent to and surrounds the identification code.
Regarding claim 20, Meeus et al. teaches all of the limitations of claim 16 above and further teaches that the top surface of the decorative laminate panel may be provided with a relief matching the decorative pattern, such as the wood grain, cracks, and knots in a woodprint [0080]. As noted above, Meeus et al. further teaches that the identification code may be present outside of or within the decorative pattern ([0040]), such that when the identification code is present within the decorative pattern it is located adjacent to or within a growth ring and/or a knot in the decorative wood grain pattern.
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 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Heeger (WO 2019/052953, machine translation previously provided).
Regarding claim 16, Heeger teaches a decorative element comprising a carrier part (12) and a printed decorative film (10) bonded together, wherein the decorative film forms the surface (upper surface) of the decorative element and comprises a decoration (decorative pattern) having a symbol (18; marker) embedded therein ([0008], [0023], [0027], Figs. 1-4). The decorative element can be designed as a furniture surface, or as a wall, floor, or ceiling panel [0023]. Heeger teaches that the embedded symbol is not visible to the human eye but can be captured by means of a scanner (e.g., camera, phone, tablet) ([0010], [0031]), such that the symbol is considered to be detectable with visual imaging means comprising a digital filter as claimed.
Heeger teaches that the symbol consists of individual pixels (20), which are areas in which a slight color shift has been made, where adjacent regions are areas in which no color shift has been made ([0037], Figs. 1-2). Given that the symbol is not visible by a human eye due to slight color differences between the symbol and the region adjacent to the symbol, but is visible by means of an electronic device such as a phone or camera, the color difference ΔE between an average color of the symbol and an average color of a region adjacent to the symbol would inherently be within the claimed range of less than 6. In particular, one of ordinary skill in the art would recognize that the threshold for human perception of color differences is below 6, such that the symbol that is not visible by a human eye due to a slight color shift must have a ΔE less than 6 as claimed.
Although Heeger teaches that the decoration may be a wood imitation, stone replica, or the like ([0015]), the reference does not expressly teach that the decoration comprises a plurality of color channels. It would, however, have been obvious to one of ordinary skill in the art to form the decoration from a plurality of color channels, e.g., CMYK color channels, in order to form a full-color image. For example, in the case where the decoration is a wood imitation, it would be obvious to use a combination of two or more of cyan, magenta, yellow, and/or black inks to form a realistic wood pattern having one or a plurality of natural brown colors. The symbol (18) formed of individual pixels (20) in which a slight color shift has been made relative to the adjacent areas of the decoration therefore corresponds to the claimed marker which is formed by at least one altered color channel.
Regarding claim 17, Heeger teaches all of the limitations of claim 16 above. As shown in Figs. 1-2, the symbol (18; marker) is composed of a plurality of pixels (20), shown in black, where the regions adjacent to the marker are represented by the wood grain pattern shown in Fig. 1 which substantially surrounds the symbol. The surface area of the region adjacent to and surrounding the symbol is at least equal in size to the surface area defined by the symbol. Given that the pixels (20) of the symbol (18) are said to be areas where a slight color shift has been made relative to the surrounding areas ([0037]), the average color of the symbol is defined over the surface area defined by the symbol (i.e., over the area where the pixels are present).
Regarding claim 18, Heeger teaches all of the limitations of claim 16 above. As noted above, Heeger teaches that the symbol (18; marker) is made up of individual pixels (20) ([0029], Figs. 1-2). Heeger further teaches that the symbol must be large enough to be captured accurately by a smartphone when the entire decorative film is photographed, and thus the size of the symbol may be at least 20 x 20 mm ([0017], [0041]). Heeger therefore teaches that the surface area defined by the symbol is at least 400 mm2.
Regarding claim 20, Heeger teaches all of the limitations of claim 16 above and further teaches that the decoration (decorative pattern) may be a wood imitation (wood pattern) ([0015], [0027], Fig. 1). As shown in Fig. 1, the symbol (18; marker) is located adjacent to and/or at least partially within at least one growth ring and/or at least one knot in the wood imitation.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Heeger (WO 2019/052953, machine translation previously provided) as applied to claim 16 above, and Gföller (WO 2024/125809, machine translation previously provided).
Regarding claim 19, Heeger teaches all of the limitations of claim 16 above. Although Heeger teaches that decorative element (decorative panel) may be used for furniture, floors, walls, or ceilings, and that the symbol (18; marker) may be applied multiple times along the decoration, such that numerous symbols are scattered throughout the decoration ([0023], [0040]), the reference does not expressly teach that the decorative panel comprises a chamfer, wherein the symbol is positioned upon the chamfer.
Gföller teaches a panel (1), such as a well, ceiling, furniture, or floor panel, which comprises a carrier plate (10) having a chamfer (12) on at least one edge of the plate, and a decorative printed layer (20) applied to the plate and to the chamfer ([0119], Fig. 1). The decorative printed layer (20) comprises a decorative pattern (21) and is applied to both the plate (10) and the chamfer (12) such that it is essentially continuous at the transition (13) between the plate and the chamfer so that there is no variation in the decorative printed layer when viewed from above, and so that there is no haptic difference between the surface of the plate and the chamfer ([0019], [0121]-[0122], Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the decorative element of Heeger by forming a chamfer in the carrier part, as suggested by Gföller, given that such chamfers are known to be desirable decorative features of floor, wall, ceiling, and furniture panels. One of ordinary skill in the art would have been motivated to apply the decorative film of Heeger having numerous symbols scattered throughout in a continuous manner across the entire surface of the carrier part and the chamfer, such that at least one symbol is positioned on the chamfer, as suggested by Gföller, so that there is no visual or haptic difference between the top surface of the carrier and the surface of the chamfer.
Response to Arguments
Response-Claim Objections
The previous objections to claims 17 and 18 are overcome by the Applicant’s amendments to the claims in the response filed April 20, 2026.
In light of the amendments to claim 16, a new claim objection is presented in the office action above.
Response-Claim Rejections - 35 USC § 112
The previous rejection of claim 17 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention is overcome by the Applicant’s amendments to claim 17 in the response filed April 20, 2026.
Response-Claim Rejections - 35 USC § 102
Applicant’s arguments with respect to amended claim 16 have been considered but are moot because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In light of the amendments to claim 16 requiring that the decorative pattern comprises a specific type of pattern and that the decorative pattern comprises a plurality of color channels, the previous rejections under 35 U.S.C. 102 based on Weiss and Heeger are withdrawn, and new grounds of rejection under 35 U.S.C. 102 based on Meeus et al. and under 35 U.S.C. 103 based on Heeger are presented above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kerver (US 2018/0114393) teaches a laminate flooring panel comprising a decorative printed pattern including a machine readable code pattern which is virtually invisible to the human eye [0065]. The code may be provided within the pattern by modulation, superposition, and multiplication, resulting in a color shift in at least one of the plurality of color channels ([0029], [0046]-[0047], [0061]).
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 REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Rebecca L Grusby/Examiner, Art Unit 1785
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