DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 8, 2025 has been entered.
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.
Claims 16, 18-22, 25, 26, 28, 29, and 31-39 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong (CN 2465521 Y) in view of Sloane (US Pat. No. 3,513,063), optionally Joo (KR 920000842 B1), which is cited herein according to an English language translation, and optionally DeCosmo (US PG Pub. No. 2016/0207349) or Huang (US PG Pub. No. 2006/0158872). Alternatively or additionally, claims 16, 18-22, 25, 26, 28, 29, and 31-39 are rejected under 35 U.S.C. 103 as being unpatentable over Sloane in view of Zhong, optionally Joo, and optionally, DeCosmo or Huang.
Regarding claims 16, 18-20, 22, 23, 26, 28, 29, 31-33, 35-37, and 39, Zhong teaches an artificial tree comprising branch parts (i.e. “decorative items”) comprising a midrib (unlabeled center structure the needles, 10, extend outwardly from) and many needles (10), each having a length extending from a first end connected to the mid-rib to a second end that corresponds to (i.e. "comprises") the tip of the needle (Abstract; Fig. 3). Each needle has a rounded-end edge, includes an embossment (i.e. the unlabeled bulge opposite and below item 14) protruding from a surface of the sheet along a folding line that extends parallel to the long axis of the needle, and includes curved surfaces (i.e. each is "a curved shape") on both sides of the folding line (14) (Figs. 4 and 5; par. 21).
The teachings of Zhong may be considered to differ from the current invention in that the needles are not explicitly taught to be included on a single sheet (i.e. also a “decorative item”) of polymeric material that includes a pattern of cutting lines separating the needles from each other. However, Sloane teaches forming branch parts for an artificial tree by cutting a strip of plastic into many needle-shaped strips (54) that extend away from a central mid-rib (53) followed by twisting the cut strip between wires to form a central stem (Fig. 6; col. 5, ln. 28-54). As shown in Figure 6, many, equally-spaced cuts (i.e. "cutting lines") separate the needles (54) from each other in the polymeric sheet used to form the branch parts (Fig. 6). Sloane teaches that this branch construction gives a most desirable effect closely approaching the effect of a Christmas tree spruce that is long-lasting and has a most desirable effect upon the eye (col. 6, ln. 3-5). Therefore, it would have been obvious to one of ordinary skill in the art to configure Zhong's branches such that they include a sheet of polymeric material that is cut to form many, equally-spaced cutting lines that separate many needles of Zhong's design projecting (i.e. extending) from a central mid-rib, thereby forming a pattern of the cutting lines and embossments/folding lines on the sheet of polymeric material, so that the cut sheet can be twisted between metal wires in order to create branches with a most desirable, long-lasting effect closely approaching the effect of a Christmas tree spruce and because Sloane explicitly teaches that such a branch construction is appropriate and useful for making artificial Christmas trees. It further would have been obvious to one of ordinary skill in the art to fashion the needles of Sloane's above-discussed branch parts to have the needle structure taught by Zhong because Zhong teaches that his needles have an extremely lifelike visual effect when viewed at a distance or up close and are better in appearance and structure than conventional strip-shaped leaves (par. 26, 27).
As shown in Figure 5, Zhong's needles (10) vary in thickness on both sides, with some regions (e.g. 11) being thicker/higher than others (13, 14) (Fig. 5). As such, a polymer sheet cut as described above is patterned on both sides with cutting lines, embossments/folding lines, and a pattern of raised regions corresponding to parts of the needles (i.e. the pattern is a "raised image"). As also shown in Figure 5, the embossment/folding line (14) in Zhong's product is equally spaced between the two edges (11) (Fig. 5) and, as discussed above, the cutting lines on the patterned polymeric sheet are equally spaced. Therefore, the folding lines and cutting lines in the prior art polymeric sheet, i.e. which includes equally spaced cutting lines between adjacent needles and folding lines equally spaced between the cutting lines, are equally spaced.
As noted above, Zhong's needles have curved surfaces (i.e. "curved shapes") on both sides of their embossment. However, if Zhong's needles were considered to differ from the current invention in that their overall cross-section is not generally arc-shaped (i.e. "curved shape"), then it is noted that it would have been obvious to one of ordinary skill in the art to configure the needles to have a generally arc-shaped cross-section, which extends across the entire needle including on both sides of the embossment, because Sloane teaches that making needles to be curved/arc-shaped in this manner allows the needles to retain their shape without drooping or becoming disarrayed, thereby giving long-lasting decorative appearance (col. 4, ln. 22-45).
The teachings of Zhong and Sloane differ from the current invention in that neither discloses configuring the needles to have a jagged-shaped cross-section across their length. However, as no criticality or corresponding mechanical function has been established for a "jagged shape" and as the claimed and prior art products are clearly ornamental in nature, the decision to fashion needles to have a jagged-shaped cross-section in any direction is a prima facie obvious selection of shape and aesthetic design choice that does not define the claimed product over the prior art. See MPEP 2144.04.
DeCosmo further teaches that artificial pine needles are often abraded, which would achieve a "jagged shape" along their surfaces, in order to give them a more natural look (par. 22). Huang also teaches coating tree parts with a decorative layer of material that creates jaggedly-shaped surfaces (shown in the Huang's figures) in order to create the visual effect of crystal ice (Figs. 4, 5; Abstract; par. 1). Accordingly, it would have been obvious to one of ordinary skill in the art to abrade the surfaces, thereby creating a "jagged shape" along the different cross-sections, of the prior art needles and/or coat the surfaces in a layer of jagged material in order to achieve a desired decorative effect, including giving the needles a more natural look and/or to achieve the visual effect of crystal ice.
Although there is no explicit disclosure of coloring the above-discussed combined prior art product as recited in instant claims 16, 18, 23, 26 and 29 or of printing on the combined product to achieve a color gradient extending from the first end connected to the midrib to the tip of the needle, which might be considered a difference from the current rejection, given that the prior art and claimed products are decorative in nature and that the decision to make different parts of the product to have different colors, including wherein the needles have a color gradient of at least two colors along their length extending from a first end connected to the midrib to the tip of the needle, is one of ornamentation only that has no mechanical function, the selection of the claimed color scheme is a prima facie obvious aesthetic design choice that does not define the claimed product over the prior art. See MPEP 2144.04.
Zhong also teaches that his pine needles may be patterned with different colors in different areas to achieve a real-life-mimicking effect (par. 22). For example, the upper surface/front of the needles may be emerald green (i.e. "first color") and the lower surface/back may be a lighter green color (i.e. "second color") and/or the ends of the needles may have a brown tone (i.e. another "second color") to achieve a natural, withered appearance (par. 22, 28). In the latter case, the needles include a pattern of two or more colors (i.e. green and brown) arranged between the midrib and the tip of the needle. Additionally, it is old and well known in the relevant art and in general that natural wood and pine bark, such as what is present on/in branches and stems, is or typically comprises a brown color.
Joo further teaches that multi-color printing can be used to achieve the same colors as real leaves (par. 3). Therefore, it would have been obvious to one of ordinary skill in the art to fashion all portions of the prior art tree, including all portions of the branch parts and including all parts of the patterned polymeric sheet material, to have colors that mimic real-life trees, including patterning the needles to include both green and brown along their lengths (i.e. "wherein the pattern on the sheet is comprised of two or more colors") from the midrib to the tip, wherein the tip is brown to achieve a withered look, and patterning the portions corresponding to twigs or branches or in locations corresponding to twigs and branches, such as the mid-ribs, to include a brown color (i.e. "wherein the pattern on the sheet is comprised of two or more colors"), because Zhong teaches configuring parts of his tree to mimic a real-life tree, including patterning the needles and twigs to be colored as just discussed, and because the mid-ribs are located in places on the branch parts in the prior art product corresponding to where branches and twigs would be located in a natural tree. It also would have been obvious to one of ordinary skill in the art to utilize multi-color printing (i.e. wherein two or more colors are printed) to achieve such an appearance because Joo teaches that multi-color printing can be used to achieve the same colors as real leaves. It further would have been obvious to one of ordinary skill in the art to configure the change from green to brown along the length of the needles to be in a gradient (i.e. “wherein the color gradient comprises two or more colors”) because Zhong teaches both colors to be appropriate for his needles, discloses that the brown needle tips achieve a withered appearance, and in order to create a withered appearance that is natural-looking because pine needles typically wither in a gradual fashion over a period of time, thereby forming at least some gradation between the colors withered (i.e. brown) and non-withered (i.e. green) colors, rather than incrementally (i.e. which might achieve defined blocks of the different colors).
Sloane further teaches to make decorative branches from a material that is deep green and to apply a blue pigmented coloring solution onto the material in order to give the green plastic a superficial speckled or mottled appearance (col. 2, ln. 19-32). The pigmented coloring solution can be applied by methods such as intaglio printing, rotogravure printing, or spraying a fine mist (col. 2, ln. 22-26). Sloane teaches that finely divided bronze or aluminum powder can also be added to further enhance the appearance (col. 2, ln. 43-46). Sloane's coloring scheme is advantageous because it produces a desirable decorative appearance with a live color effect that imitates a blue spruce (col. 2, ln. 1-4; col. 5, ln. 10-11). Accordingly and as an addition or alternative to the above-discussed color scheme, it would have been obvious to one of ordinary skill in the art to configure the polymeric sheet material used in the branch parts of the prior art product to be dark green and include a patterned surface having blue pigments, aluminum powder, and bronze powder (i.e. which is brown), which is applied by one of the disclosed printing methods or spraying, thereby creating a speckled/mottled appearance including all two, three, or four of the colors, which include green and brown, in order to achieve a desired decorative appearance and to produce a live color effect imitating blue spruce trees to the product as a whole and to the parts representing tree needles (i.e. "the pattern is printed onto the sheet to mimic a natural appearance of the needles"). As the sheet material of the prior art product has at least two colors, all of its parts, including the midrib and the needles, are patterned with at least a first color, which may be green, and a second color, which may be brown.
Additionally and as noted above, because the claimed article and prior art products are decorative in nature and the selections of shapes, colors, and texture are of ornamentation only (see, for example, paragraph 35 of Applicant’s published application, which teaches that the embossment is used to achieve a particular appearance) and having no mechanical functions, the claim requirements directed to the shape, texture, and coloration of the claimed article are prima facie obvious aesthetic design choices and/or selections of shape that do not distinguish the claimed invention over the prior art. See MPEP 2144.04 (I and IV).
The claim limitations directed to the formation and shaping of the recited decorative items, artificial tree, tree branch members, patterned polymeric sheets, needles, and any other tree or branch parts, and to the formation of a colored pattern on such objects are product-by-process limitations. Product-by-process claims are not limited to the recited processing steps, but rather to the structure implied by the recited procedure. See MPEP 2113. The prior art products meet the claim limitations because they the implied structure.
Regarding claims 21 and 25, Zhong teaches that the polymeric material used to form his needles may comprise polyethylene (par. 20). Sloane also teaches using polyethylene for the polymeric sheet used to form branches and needles (col. 2, ln. 12-17).
Regarding claims 34 and 38, the teachings of the cited prior differ from the current invention in that their combined product is not explicitly disclosed to include needles of different lengths. However, Sloane teaches that it is desirable to cut some of the needles of a branch part to create a rounded end portion and that doing so aids in approximating a normal spruce tree branch appearance (col. 4, ln. 73-15). Accordingly, it would have been obvious to one of ordinary skill in the art to configure the prior art product such that at least some needles are of a first length and some others are of other, varying lengths in order to create rounded end portions on the branch parts and to better approximate the appearance of a normal spruce tree branch. Additionally, as no criticality has been established, as the prior art product and claimed product are decorative in nature, and as the decision to make the needles to have different lengths is one of ornamentation only that has no mechanical function, the recited requirement of the needles having different lengths is a prima facie obvious selection of dimensions, obvious selection of shape, and obvious aesthetic design choice that does not distinguish the claimed invention over the prior art. See MPEP 2144.04 (I and IV).
Response to Arguments
Applicant's arguments filed September 8, 2025 have been fully considered but they are not persuasive.
Applicant has argued that the claimed invention is distinguished over the cited prior art because the claims require that an embossment impart a curved shape and a jagged edge on the recited artificial pine needles, which Applicant argues would necessarily achieve a different structure than abrasion or applying a coating to achieve a jagged texture, as disclosed by DeCosmo and Huang. However, as a preliminary matter, it is noted that because no criticality has been established and no mechanical functions have been disclosed, the recited shapes and textures are prima facie obvious aesthetic design choices and selections of shape that do not distinguish the claimed invention over the cited prior art. See MPEP 2144.04.
Additionally, the claims separately recite and describe “an embossment”, a “folding line”, an a “cross-section”. The “embossment” is recited to be “along a folding line” and to protrude “from a surface of the sheet along the folding line”. The “cross-section” is recited to include a “jagged shape and a curved shape”. Therefore, the claims do not recite that the “embossment” includes or imparts the jagged shape or a curved shape. The prior art cited above and in the previous Office Action meet the claim requirements because they teach or render obvious artificial pine needles that include jagged and curved shapes positioned as claimed.
In making the above argument, Applicant has also pointed to the claim requirement that the “embossment protrudes from a surface of the sheet along the folding line” as evidence that embossment achieves a different structure from what is disclosed by the cited prior art. However, as discussed above, Zhong’s pine needles meet this requirement because they include a bulge that protrudes from a surface of the sheet along the folding line.
As mentioned above, Applicant has also asserted that embossing achieves a different structure from the cited prior art. In making this argument, Applicant has pointed to the embossing wheels that are used to shape the instantly disclosed needles and has also noted that embossing significantly deforms the polymer sheet used to form the needles, including by modifying the overall perceived thickness of the sheet. However, as stated previously, the claims do not require a particular jagged shape or other perceptible thickness variation to be achieved by embossment. Additionally, the claims do not recite a particular embosser shape, such as the wheels that are depicted in Figure 3C, which, as Applicant has asserted, affect the overall structure of a polymer sheet. Therefore, aside from now reciting that an embossment protrudes from a surface along the folding line, the claims place no limitation on what structure is imparted by embossing.
In addition to the discussion above and very importantly, any limitations directed to structures being formed by embossing are product-by-process limitations. Product-by-process claims are not limited by the recited processing steps but rather by the structure that is implied by the recited procedure. See MPEP 2113. Although Applicant does appear to acknowledge this fact and has pointed out that the particular embosser used to form the current invention achieves a particular shape, Applicant has not established that the abraded shape disclosed by DeCosmo could not be achieved by a different embosser—or that DeCosmo’s abraded surface differs in structure from a surface that was embossed with a correctly shaped embosser to appear abraded. As discussed above, the prior art products meet the product-by-process limitations because they have the limited structure that is implied.
Furthermore, because the claimed article and prior art products are decorative in nature and the selections of shapes, colors, and texture are of ornamentation only (see, for example, paragraph 35 of Applicant’s published application, which teaches that the embossment is used to achieve a particular appearance) and having no mechanical functions, the claim requirements directed to the shape, texture, and coloration of the claimed article are prima facie obvious aesthetic design choices and/or selections of shape that do not distinguish the claimed invention over the prior art. See MPEP 2144.04 (I and IV). Applicant has not rebutted this prima facie case of obviousness because Applicant has not established that the recited shapes, textures, or color patterns affect anything other than the aesthetic design of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784