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 .
FINAL REJECTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification as originally filed does not support the limitation requiring a method wherein “the second engraved surface is formed using a non-laser engraving process”. The forgoing is a negative limitation – MPEP 2173.05(i) details the standard for supporting negative limitations – “Any negative limitation or exclusionary proviso must have basis in the original disclosure.” The applicant alleges support is provided in paragraphs 16, 18, 22-24 and 28-30. No portion of said paragraphs discloses the second engraved surface is formed using a non-laser engraving process. In fact, the specification is entirely silent as to the manner in which said second engraved surface is formed. Such silence does not amount to support - the “mere absence of a positive recitation is not basis for an exclusion.” MPEP 2173.05(i).
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.
Claims 2-3 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.
In claim 3, the limitation “to have fine unevenness of about 0.01 mm to 0.3 mm in width and about 0.01 mm to 0.3 mm in depth, and the second engraved surface is formed using a non-laser engraving process to have a groove deeper than that of the first engraved surface” is indefinite for at least two reasons. First it is not clear what the claimed dimensions of “0.01 mm to 0.3 mm in width and about 0.01 mm to 0.3 mm” physically represents. While the claim recites “fine unevenness”, it does not identify the structural feature that causes said unevenness. Second, the limitation “a non-laser engraving process to have a groove deeper than that of the first engraved surface” is unclear because it references a groove in the first engraved surface not previously claimed. The entire limitation should be amended as follows:
“to have fine unevenness, said fine unevenness comprising depressions of about 0.01 mm to 0.3 mm in width and about 0.01 mm to 0.3 mm in depth, and the second engraved surface is formed using a non-laser engraving process to have a groove deeper than the depressions of the first engraved surface”. Note that the forgoing proposed amendment will NOT overcome the new matter rejection detailed above.
To overcome both above rejections, the claim should be amended as follows:
“to have fine unevenness, said fine unevenness comprising depressions of about 0.01 mm to 0.3 mm in width and about 0.01 mm to 0.3 mm in depth, and the second engraved surface is formed the depressions of the first engraved surface”.
Claim 3 recites the limitation “has a height greater than the first area”. This limitation is unclear as the first area does not have “height”.
Response to Arguments
Applicant's arguments filed 1/15/26 have been fully considered but are moot in view of the new ground(s) of rejection.
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 CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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/CHRISTOPHER T SCHATZ/ Primary Examiner, Art Unit 1746