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 .
Response to Amendment
The amendment filed 06/17/2026 has been fully considered and made of record. Claims 1-3 and 6-17 are pending with claims 6-17 withdrawn from consideration.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, wherein each of the at least one element having a base dimension wider than a dimension of a top such that the minimum distance separating the two opposite faces varies along a height dimension of the at least one element such that each of the two opposite faces includes a concave region that faces in a direction of an interior of the at least one element must be shown or the feature(s) canceled from the claim(s). No new matter should be entered (emphasis added).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim1-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, line 1 recites the limitation “a structure” and in line 3 recites the limitation “a hollow structure” and in line 5 recites the limitation “said structure.” It is unclear if said structure refers back to the structure or to hollow structure.
Claim 1, line 8 recites the limitation “two opposite faces of said element.” In addition, in lines 12-13 recites the limitation “such that each of the two opposite faces includes a concave region that faces in a direction of an interior of the at least one element” and in lines 17-18 recites the limitation “wherein the at least one element has a radius R of curvature equal to 0.06 mm at a junction between two contiguous faces of a same element in said transverse plane.” (emphasis added). It is very confusing and unclear if the newly added limitation of “concave region” refers to the same region as contiguous faces having radius R of curvature or is a different region. For examination purposes, the opposite faces of concave region and junction between two contiguous faces with radius R of curvature are same regions.
Applicant is encouraged to clearly point out to the original filed disclosure (originally filed claims, specification and drawings) to show each claim term for not only a better clarity and understanding of the claims but also to overcome any objections to the drawings and 112(b) rejections.
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmitt et al. (US 20180104766 A1, hereinafter “Schmitt”) in view of Bossel et al. (US 6,404,704, hereinafter “Bossel”).
As applied to claims 1-3, Schmitt teaches a method for machining a structure on an impression of an injection mold, the method comprising laser ablation a hollow structure on the impression of the injection mold, wherein said structure is made of one element or several separate elements with at least one element having two dimensions less than or equal to 1.5 mm (in at least one portion of the injection molded plastic component having dimensions in width, depth, height in a range of 10 microns to 1 mm reads on claimed “two dimensions” and overlaps claim ranges of less than or equal to 1.5 mm, less than or equal to 1 mm, less than or equal to 0.5 mm, paragraph [0026]), wherein said dimension is selected from a minimum height or depth of the hollow element and a minimum distance separating two opposite faces of said element in a plane transverse to said height or depth, and wherein a height dimension within an interior of the at least one element is same value (paragraphs [0018], [0026], [0027]).
Schmitt does not explicitly teach the limitation of wherein each of the at least one element has a base dimension wider than a dimension of a top such that the minimum distance separating the two opposite faces varies along a height dimension of the at least one element such that each of the two opposite faces includes a concave region that faces in a direction of an interior of the at least one element, the limitation of wherein the top of the at least one element is planar surface and a width of the top between the two opposite faces is 0.42 mm and the limitation of wherein at least one element has a radius R of curvature equal to 0.06 mm at a junction between two contiguous faces of a same element in said transverse plane (emphasis added).
However, Schmitt teaches in different embodiments (embodiments of Figs. 4A-B and Figs. 5A-B) wherein the structure made of at least one element (14) formed by laser ablation in the mold surface can have a shape of protrusions (15, Figs. 4A, 5A) or cavity (dimple 16, Figs. 4B, 5B) wherein the at least one element has a radius of curvature of zero at a junction between two contiguous faces of the element in said transverse plane (lines 17 having a width of 10-100 microns and a height of 1-100 microns with sharp corners, embodiment of Figs. 4A-B) and wherein the at least one element has two contiguous faces of the element in said transverse plane forming a circular shape with a diameter b/B of 10-100 microns which is equivalent to 0.1 to 1.0 mm (embodiments of Figs. 5A-B, paragraphs [0054] to [0056]).
Bossel teaches that it is well-known in the art of watch-making to have a dial of a watch having decorative features and elements including an element with planar surfaces that has a base (18) dimension wider than a dimension of a top between two opposite side faces (8, Figs. 1-3). Bossel further teaches an embodiment wherein the decorative element on the dial has planar surfaces including a base dimension narrower than a dimension of a top of the element (Figs. 4-5). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have provided the mold structure of Schmitt with at least one element with planar surfaces having a base dimension wider than a dimension of the top, as taught by Bossel, as an effective means of providing the injection mold structure having a protruding element with desired geometry resulting in the watch component to be molded having desired geometry based on specific design requirements.
Regarding the limitation of “wherein each of the at least one element has a base dimension wider than a dimension of a top such that the minimum distance separating the two opposite faces varies along a height dimension of the at least one element such that each of the two opposite faces includes a concave region that faces in a direction of an interior of the at least one element,” the examiner submits that such limitation appears to be based on the desired shape and aesthetic design of the element and sees no patentable significance and a criticality in the exact orientation and shape of the element including the height from top to base surfaces of the at least one element and the concave region. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was filed to have provided Schmitt’s structure to have the claimed structure with each of the at least one element having a base dimension wider than a dimension of a top such the minimum distance separating the two opposite faces varies along a height dimension of the at least one element such that each of the two opposite faces includes a concave region that faces in a direction of an interior of the at least one element, since the court has held that the particular shape of a product has no patentable significance and would be a matter design choice to one of ordinary skill in the art to arrive as such shape and aesthetic look (see MPEP 2144.04, paragraph I and paragraph III-B).
Regarding the limitation of “a width of the top between the two opposite faces is 0.42 mm,” it would have been an obvious matter of design choice since Applicant has not disclosed that only the claimed 0.42 mm width provides any advantage, is used for any particular purpose, or solves a stated problem. Therefore, it would have been obvious to one of ordinary skill in the art to incorporate into the method of Schmitt/Bossel a structure with at least one element having a width of 0.42 mm for the top surface depending on the specific shape and geometry required based on specific design criteria.
Furthermore, it would have been an obvious matter of design choice to form at least one element to have a radius R of curvature equal to 0.06 mm at the junction between two contiguous faces of a same element in said transverse plane since Applicant has not disclosed that only the claimed 0.06 mm radius of curvature provides any advantage, is used for any particular purpose, or solves a stated problem.
Therefore, it seems that one of ordinary skill in the art at the time the invention was filed would have expected Applciant’s invention to perform equally well with any other radius of curvature such as one taught by Schmitt or the claimed value because either one performs the same function of forming the element of the structure on the impression of the injection mold having desired shape and geometry based on specific design criteria.
As such, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the method of Schmitt by combining the different embodiments (embodiments of Figs. 4A-B and Figs. 5A-B) to form the at least one element to have a radius R of curvature equal to 0.06 mm at a junction between two contiguous faces of a same element in said transverse plane in order to form the element of the structure on the impression of the injection mold to have desired shape and geometry based on the specific design requirement.
Response to Arguments
The Applicant's arguments filed 06/17/2026 have been fully considered but they are not persuasive. Applicant summarizes what Schmitt and Bossel teach and then concludes that Schmitt and Bossel do not teach the recently amended claim 1 without further providing substantive reasoning of why the examiner’s mapping of the Schmitt’s and Bossel’s disclosures with the claim limitations is unreasonable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hwang et al. (US 20210120681A1) teaches a method wherein features having heights of 0.1 µm to 1 µm are laser formed on a molding surface of a die followed by injection molding a structure using the die (paragraph [0198]).
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 SARANG AFZALI whose telephone number is (571)272-8412. The examiner can normally be reached M-F 7 am - 4 pm EST.
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, Thomas Hong can be reached at 571-272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARANG AFZALI/Primary Examiner, Art Unit 3726 08/26/2026
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