DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11 September 2024 has been entered.
Reissue Applications
The instant application is a non-broadening reissue of U.S. Patent No. 9,529,125, issue on 27 December 2016. In response to the previous office action, claims 1, 6, 15, and 19 have been amended and claims 3, 4, 7, 16, and 17 have been restored to their original form; and claim 18 has been cancelled. Claims 1-4, 6-17, and 19 have been examined.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,529,125 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
Claim Objections
Claims 1, 6, and 15 are objected to under 37 C.F.R. 173 because matter being deleted from the original claims should be enclosed in square brackets, rather than crossed out.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1-4, 6-9, and 12-14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent No. 4,588,258 to Hoopman (hereinafter Hoopman).
Regarding claim 1, Hoopman discloses a microprismatic retroreflective film, comprising: a substrate (base plane 16); and one or more arrays (elements organized in arrays, see column 4, lines 31-50) of microprisms (as shown in figure 1 and column 4, lines 15-30, the structure is three mutually perpendicular lateral faces, 11, 12, 13, meeting at an apex 14, constituting a microprism) located on said substrate, wherein all of said microprisms are forward-tilted, and at least a portion of said forward-tilted microprisms are aligned with a plane of optical axis tilting aligned at an angle ranging from about 10 to 80 degrees with an edge of said microplastic retroreflective film (Embodiments are recited that have forward-tilting at 35 or 40 degrees, see column 4, lines 41-64 and column 6, lines 9-22).
Although Hoopman’s invention is not metalized, Hoopman discloses that there exists implementations that have used a metalized material, such as aluminum, as this causes even highly inclined light to be reflected by the faces, rather than passing through (see column 1, lines 25-35).
Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to have implemented the invention of Hoopman by using metalized material, as noted in Hoopman’s Background Discussion to cause even highly inclined light to be reflected by the faces, rather than passing through.
It should be noted that Hoopman notes that the use of metalized materials may be disadvantageous in some situations, due to light absorption by the coating or corrosion (see column 1, lines 35-41); however, there are many situations where such disadvantages would have no adverse effect on the invention’s performance (e.g. locations that are bright and free of corrosive substances), thereby rendering the modification to be advantageous on the whole.
Regarding claim 2, Hoopman discloses that the product may be layered product with a layer containing the microprisms and a layer that is transparent (see column 7, lines 36-45).
Regarding claims 3 and 4, the embodiments of 35 to 55 degrees are within the claimed range.
Regarding claim 6, the film may comprise at least two different arrays arranged in a parquetted pattern (see figure 3 and column 4, line 65 to column 5, line 58).
Regarding claim 7, each array may be aligned at different angles (see column 5, lines 9-46, in which elements may be aligned along different axes).
Regarding claim 8, Hoopman discloses a second tilt (see column 6, lines 26-31), and discloses an embodiment having a tilt of 9-15 degrees (see column 6, lines 32 to column 7, line 32).
Regarding claim 9, the angles of 9-15 degrees is at least partially within 1 to 9.7 degrees.
Regarding claim 12, the microprisms may be of acrylic or polycarbonate material (see column 7, lines 41-46).
Regarding claims 13 and 14, the microprisms may be coated with a reflective coating (see column 8, lines 8-11). Under the Hoopman’s prior art modification with respect to claim 1, that coating would be aluminum.
Claims 10, 11, 15-17, and 19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hoopman as applied to claim 1 above, and further in view of U.S. Patent No. 5,138,488 to Szczech (hereinafter Szczech).
Regarding claims 10 and 11, Hoopman does not disclose the height of the forward-tilting microprisms, but discloses cube corner elements of a size of .06 to .1 inches [1524 to 2540 microns] (see column 7, lines 54-66).
Szczech discloses retroreflective articles that are analogous to the microprisms that are disclosed by Hoopman. Szczech explicitly recites a height of the microprisms to be preferably 50 to 100 microns (see column 2, lines 53-57). Szczech further states that this height is appropriate for decreasing the amount of canting required to achieve a given angularity (see abstract).
Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to have implemented the invention of Hoopman by having microprisms of 50-100 microns, as per Szczech, which is within the claimed range of claims 10 and 11, to decrease the amount of canting required to achieve a given angularity.
Regarding claim 15, Hoopman discloses a method of fabricating a metalized microprismatic retroreflective film, comprising: placing microprisms on a substrate (sheeting of an array of cube corner elements is adhered to substrate, see column 7, line67 to column 8, line 2), said microprisms having a reflective coating thereon (see column 8, lines 8-11), said microprisms are arranged in one or more arrays (elements organized in arrays, see column 4, lines 31-50), wherein all of said microprisms of at least one of said one or more of said one or more arrays are forward-tilted microprisms aligned with a plane of optical axis tilting aligned at an angle ranging from about 10 to about 80 degrees with an edge of said microprismatic retroreflective film (Embodiments are recited that have forward-tilting at 35 or 40 degrees, see column 4, lines 41-64 and column 6, lines 9-22).
Hoopman does not disclose bonding an adhesive layer to said reflective coating and attaching a release liner to said adhesive layer.
Szczech discloses that the retroreflective material may also be backed with an adhesive and release sheet to render it useful for application to any substrate without the added step of applying an adhesive or using other fastening means (see column 8, lines 24-28).
Therefore it would have been obvious at the time the invention was made to have modified the invention of Hoopman by backing the retroreflective material with an adhesive and release sheet, as per Szczech, to render it useful for application to any substrate without the added step of applying an adhesive or using other fastening means.
Regarding claims 16 and 17, the embodiments of 35 to 55 degrees are within the claimed range.
Regarding claim 19, the film may be organized in at least two different arrays arranged in a parquetted pattern (see figure 3 and column 4, line 65 to column 5, line 58). Each array may be aligned at different angles (see column 5, lines 9-46, in which elements may be aligned along different axes).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-17, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9,658,371 (hereinafter the ‘371 patent) in view of Hoopman. Although the claims at issue are not identical, they are not patentably distinct from each other because they only differ in that the film has one or more arrays of all forward-tilting microprisms.
Hoopman discloses the organizing of the microprisms in all forward-tilting arrays (Embodiments are recited that have forward-tilting at 35 or 40 degrees, see column 4, lines 41-64 and column 6, lines 9-22). Hoopman further discloses that this allows a uniform brightness (see column 2, lines 48-62).
Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the invention of the ‘371 patent by organizing of the microprisms in all forward-tilting arrays, as per Hoopman, to allow a uniform brightness.
Response to Arguments
Applicant’s arguments with respect to claims 1-4 and 6-19 have been considered but are moot because of new grounds of rejection have been applied in view of Applicant’s amendments to the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HENEGHAN whose telephone number is (571)272-3834. The examiner can normally be reached M-F 8-5.
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/MATTHEW E HENEGHAN/Primary Examiner, Art Unit 3992
Conferees:
/Ovidio Escalante/
Primary Examiner, Art Unit 3992
/M.F/Supervisory Patent Examiner, Art Unit 3992
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