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 .
Status of the Claims
Claims 1, 3-5, 7, 9 and 20 have been amended. Claims 2, 6, 8, 10 are as previously presented. Claims 21-22 are new. Claims 11-19 remain withdrawn. Therefore, claims 1-10 and 20-22 are currently pending and have been considered below.
Response to Amendment
The amendment filed on 7/8/2026 has been entered. Applicant’s amendments and remarks overcome the previously set-forth claim objection and 112(b) rejections.
Claim Interpretation
Regarding claim 2, “further comprising preparing the substrate by pre-flattening by applying a load that deforms material of the substrate to obtain desired thickness and size and improve surface smoothness” is interpreted as the same pre-flattening step as in claim 1, wherein claim 2 specifies the result of the pre-flattening step (to obtain desired thickness and size and improve surface smoothness)
Regarding claim 6, “further comprising embossing of metal with the die.” Claim 1, from which claim 6 depends, recites, “embossing of the substrate using the laser machined die …,” wherein the preamble of claim 1 indicates that the substrate is a “soft-metal substrate[].” This step in claim 6 is interpreted as the same embossing step as in claim 1.
On page 7 of the remarks filed 7/8/2026, Applicant accepted these interpretations regarding claim 2 and claim 6.
Regarding claim 1, "ultrafast pulsed laser" is interpreted as a laser that utilizes femtosecond laser pulses, as indicated by Applicant's filed specification at paragraph [0046].
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.
Claims 1-10 and 20-22 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.
Claims 1 and 20 recite, “several micrometers.” It is unclear how many micrometers would be considered several. For example, would four micrometers be considered several, but three micrometers not be considered several? Therefore, the scope of “700 nm to several micrometers” is unclear. Claims 2-10 and 21-22 are also rejected by virtue of their dependence on claim 1.
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.
Claims 1 – 3, 6, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719), Fercke (DE 2227187), and Boegli et al. (US 2024/0017458).
Regarding claim 1, Gates discloses a method of replication of laser machined patterns onto metal substrates having a hardness value less than or equal to that of silver, copper, or aluminium on the Vickers hardness scale, via embossing (“The method comprises pressing a clay material having one or more metals onto a template (or master template), the template having a first design, wherein pressing the clay material onto the template forms a second design in the clay material, the second design being a negative image of the first design” [0041]; “the clay material comprises one or more metals selected from the group consisting of silver, platinum, gold, copper, titanium, bronze, magnesium and titanium” [0043]; “laser etching is used to form the design of the master template” [0046]) at room temperature (“In an embodiment, the clay material is pressed onto the template with the aid of a user's hand pressure” [0041]; [0041] also describes wherein steps other than embossing can be performed at elevated temperatures, but provides no indication that the embossing occurs at elevated temperatures) comprising:
laser machining of a die (“master template”) to engrave grooves (“laser etching is used to form the design of the master template” [0046]);
embossing of the substrate (“clay material”) using the laser machined die (“master template”) and a blank die (“a press”) with an embossing load (“pressing a clay material having one or more metals onto a template (or master template)”; “the clay material is pressed onto the template with the aid of a user's hand pressure”, alternatively, “the clay material is pressed onto the template with the aid of a mechanical device, such as a roller or a press” [0041]; the embossing load corresponds to the pressure applied by the press).
Gates does not expressly disclose micron/sub-micron scale patterns, and grooves having widths ranging from 700 nm to several micrometers.
Matthiesen is directed to “a method for impressing microstructures, especially holograms, into coins or similar” [Abstract]. Matthiesen discloses micron/sub-micron scale patterns (“microstructures” [Abstract]; additionally, “These structures have typical line widths between 800 lines and 1,500 lines per millimeter and relief depths between 0.2 μ and 0.8 μ (1 μ = 1/1000 mm)” [page 4 of attached translation]; this corresponds to grooves having widths ranging from 200 nm to 800 nm.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include micron/sub-micron scale patterns, and grooves having widths ranging from 700 nm to several micrometers. This advantageously allows for forming an image of a particular size with a desired resolution, for example, a small-sized image with high resolution. Regarding the claimed range, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP § 2144.05-I.
Gates does not expressly disclose pre-flattening of the substrate using two blank dies with a pre-flattening load to deform the substrate material, improve surface smoothness, and achieve uniform substrate properties for reproducible embossing.
Fercke is directed to “pressing coin blanks” [Title]. Fercke discloses pre-flattening of a substrate using two blank dies with a pre-flattening load (“the coin blanks are prepressed in the direction of the later deformation during the minting process” (para. [0013] of attached translation); it is understood that in order to press the coin blanks in the direction of the later deformation during the minting process (which involves the following: “During the minting process, the coin blanks are pressed simultaneously between the obverse and reverse dies to fully form the design” [0004]), this involves utilizing two dies (one for supporting the coin blanks and one for providing pressure (a pre-flattening load) to prepress the coin blanks; these dies are indicated to be blank dies because a smooth surface is produced on the coin blanks (“the pre-pressed coin blanks have a comparatively very low roughness depth, resulting in a smooth and even surface” [0008]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include pre-flattening of the substrate using two blank dies with a pre-flattening load to deform the substrate material, improve surface smoothness, and achieve uniform substrate properties for reproducible embossing. “[T]he pre-pressed coin blanks have a comparatively very low roughness depth, resulting in a smooth and even surface that also has a beneficial effect on the wear of the minting tools” [0008].
Gates does not expressly disclose wherein the laser machining of the die is performed using an ultrafast pulsed laser.
Boegli is directed to a “method for manufacturing an embossing device” [Abstract]. Boegli discloses wherein laser machining of a die is performed using an ultrafast pulsed laser (“laser processing of step S50 can be performed with an ultrafast-pulsed laser (picosecond or femtosecond type” [0030]; “ A result of this step is an embossing roller or drum 100” [0031]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the laser machining of the die is performed using an ultrafast pulsed laser. This is the use of a known laser pulse length for engraving an embossing tool, applied to a known method, to achieve predictable results.
Gates / Fercke does not expressly disclose wherein the embossing load is less than the pre-flattening load to enable transfer of the micron/sub-micron scale patterns without substrate adhesion to the die.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the embossing load is less than the pre-flattening load to enable transfer of the micron/sub-micron scale patterns without substrate adhesion to the die, because this would have been obvious to try. There are three possible options for the embossing load relative to the pre-flattening load: (1) the embossing load is greater than the pre-flattening load, (2) the embossing load is equal to the pre-flattening load, and (3) the embossing load is less than the pre-flattening load. One of ordinary skill in the art would have a reasonable expectation of success in using either of these three options, in order to provide adequate pre-flattening of the substrate as well as adequate embossing of the substrate.
Regarding claim 2, Gates does not expressly disclose preparing the substrate by pre-flattening by applying a load that deforms material of the substrate to obtain desired thickness and size and improve surface smoothness.
Fercke discloses preparing the substrate by pre-flattening by applying a load that deforms material of the substrate to obtain desired thickness and size and improve surface smoothness (“the coin blanks are prepressed in the direction of the later deformation during the minting process” (para. [0013] of attached translation); “the pre-pressed coin blanks have a comparatively very low roughness depth, resulting in a smooth and even surface” [0008]); pressing with necessarily result in a particular thickness and size).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include preparing the substrate by pre-flattening by applying a load that deforms material of the substrate to obtain desired thickness and size and improve surface smoothness. In addition to providing a desired thickness, size, and surface smoothness, this results in reducing the wear of the minting tool / embossing die that is used after the prepressing step, as recognized by Fercke [0008].
Regarding claim 3, Gates / Matthiesen / Fercke does not expressly disclose determining a proper embossing load at about 10 to 30 percent less than the pre-flattening load, depending on material of the substrate and the scale of the patterns, wherein the embossing load is selected to enable transfer of the patterns without substrate material adhering to grooves of the die.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include determining a proper embossing load at about 10 to 30 percent less than the pre-flattening load, depending on material of the substrate and the scale of the patterns, wherein the embossing load is selected to enable transfer of the patterns without substrate material adhering to grooves of the die, because the courts have held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. MPEP § 2144.05-II-A. Applicant’s disclosure does not indicates that the claimed range is critical to the invention. Additionally, one of ordinary skill in the art would be motivated to select a pre-flattening load that results in a desired thickness and smoothness, and would be motivated to select an embossing load that sufficiently results in the pattern being transferred to the substrate without substrate material adhering to grooves of the die, while maintaining a desired thickness of the substrate.
Regarding claim 6, Gates discloses embossing of metal with the die (“pressing a clay material having one or more metals onto a template (or master template)” [0041]; “the clay material comprises one or more metals selected from the group consisting of silver, platinum, gold, copper, titanium, bronze, magnesium and titanium” [0043]).
Regarding claim 21, Gates discloses wherein the metal substrate comprises gold (“the clay material comprises one or more metals selected from the group consisting of silver, platinum, gold, copper, titanium, bronze, magnesium and titanium” [0043]).
Claims 4 and 7 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719), Fercke (DE 2227187), and Boegli et al. (US 2024/0017458), further in view of Ren et al. (US 2004/0176863) and Marx et al. (US 2006/0109483).
Regarding claim 4, Gates discloses wherein laser machining of the die comprises: determining laser machining parameters associated with a laser for embossing a material and a composition of a die material (“laser etching is used to form the design of the master template” [0046]; Fig. 3 shows an embodiment of a template / die; to create this die with laser etching, laser machining parameters were necessarily determined).
Gates does not expressly disclose obtaining a surface profile of the die material using a chromatic confocal point sensor to map height variations across a surface of the die; generating a pattern design for application to the die material applying the obtained surface profile to calibrate laser focus and maintain consistent machining quality; and laser machining the die material with the generated pattern design.
Ren is directed to a method of modifying stamping tools [Title]. Ren discloses obtaining a surface profile of a workpiece, and generating a pattern design by applying the obtained surface profile to calibrate laser focus and maintain consistent machining quality (“Referring to FIGS. 1-3, a part having a profile is shown by the line 22 (Die 0). Line 22 denotes a sectional line taken through a three-dimensional part. In the start of the process, a stamping tryout is made using a test or current die. The workpiece will typically start out as a flat sheet of material. The panel or current die, also referred to Die 0, can have a profile that is identical to the profile of the design intent workpiece or may have a profile which has some initial modifications. After stamping, the workpiece is removed from the die. The workpiece initially has a profile shown by line 24 (Part 0). This profile will be measured by appropriate means including but not limited to optical scanning techniques. Another technique is to use a coordinate measuring machine. A coordinate measurement machine has a needle-type contact point which travels along the surface to measure its geometry. Between the lines 22 and 24 is a spring back, FIG. 2, item 26. A comparison is made to determine a dimensional variance between the part noted by line 24 and the profile of the design intent part noted as line 22. This variance in profile will be made in all three dimensions. If the variance is within predetermined limits then the current die is designated as the final die. The process is now complete. If the variance is beyond the pre-determined limits, then further steps must occur. A non-linear finite element method is utilized to analyze the profile of the stamped workpiece. A non-linear finite element method is also utilized to make an analysis of the surface of the current die which in the example is formed having a profile equal to the design intent part. The current die stamped part, FIG. 2, item 24 is conceptually stamped by upper and lower standard die members 28 and 30 usually simulated on a computer with finite element analysis or other numerical methods. The upper and lower members 28 and 30 are configured to have a profile which is identical to the design intent profile of the workpiece. This would be the case even if the initial current die had a different configuration. From this conceptual step, the residual forces will be noted in the workpiece when the upper and lower members 28 and 30 of the conceptual die are brought together. These residual forces will be reversed in the profile of the current die to develop a new current die, FIG. 2, line 34. The new current die is developed to obtain a workpiece with a reversal of the residual stresses noted in the process shown in FIG. 3. A new workpiece is stamped using the new current die“ [0025]-[0030]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include obtaining a surface profile of the die material; generating a pattern design for application to the die material applying the obtained surface profile to calibrate laser focus and maintain consistent machining quality; and laser machining the die material with the generated pattern design. This allows for adjusting the profile of the die so that the embossed workpiece will have a shape that corresponds to the exact desired shape.
Ren does not expressly disclose using a chromatic confocal point sensor to map height variations across a surface of the die.
Marx is directed to a “system for the measurement of high aspect ratio trenches” [Abstract]. Marx discloses using a chromatic confocal point sensor to map height variations across a surface (“The present invention relates generally to an instrument and method for the measurement of high aspect ratio trenches at a micrometer or submicrometer scale. The invention pertains more specifically to a system and related method using in combination a microscope and a chromatic confocal single point optical height sensor” [0002]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include using a chromatic confocal point sensor to map height variations across a surface of the die. This is the use of a known point sensor, applied to a known device, to predictably determine height variations.
Regarding claim 7, Gates does not expressly disclose wherein in obtaining the surface profile a point sensor is utilized to map a profile of the die, the point sensor comprising a chromatic confocal point sensor having a resolution sufficient to maintain laser focus during machining of micron and sub-micron scale features.
Ren discloses wherein in in obtaining a surface profile a point sensor is utilized to map a profile (“This profile will be measured by appropriate means including but not limited to optical scanning techniques. Another technique is to use a coordinate measuring machine. A coordinate measurement machine has a needle-type contact point which travels along the surface to measure its geometry“ [0026]; the described coordinate measurement machine is a type of point sensor).
Marx discloses using a chromatic confocal point sensor having a resolution sufficient to maintain laser focus during machining of micron and sub-micron scale features (“The present invention relates generally to an instrument and method for the measurement of high aspect ratio trenches at a micrometer or submicrometer scale. The invention pertains more specifically to a system and related method using in combination a microscope and a chromatic confocal single point optical height sensor” [0002]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein in obtaining the surface profile a point sensor is utilized to map a profile of the die, the point sensor comprising a chromatic confocal point sensor having a resolution sufficient to maintain laser focus during machining of micron and sub-micron scale features. Using a point sensor is a known means for obtaining a surface profile. Obtaining a surface profile allows for adjusting the profile of the die so that the embossed workpiece will have a shape that corresponds to the exact desired shape.
Regarding claim 8, Gates does not expressly disclose wherein a displacement in a x-axis and y-axis between the point sensor and the laser are determined to calibrate the surface profile.
Ren discloses wherein a displacement in a x-axis and y-axis between the point sensor and the laser are determined to calibrate the surface profile (“A comparison is made to determine a dimensional variance between the part noted by line 24 and the profile of the design intent part noted as line 22. This variance in profile will be made in all three dimensions” [0027]; the three dimensions are the x-, y-, and z-dimensions).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein a displacement in a x-axis and y-axis between the point sensor and the laser are determined to calibrate the surface profile. This ultimately allows for adjusting the profile of the die so that the embossed workpiece will have a shape that corresponds to the exact desired shape.
Regarding claim 9, Gates discloses wherein determining laser machining parameters comprises: determining a groove geometry associated with a pattern design (“laser etching is used to form the design of the master template” [0046]; Fig. 3 shows an embodiment of a template / die; to create this die with laser etching, a groove geometry was necessarily determined); and
determining a range of laser fluence ((“laser etching is used to form the design of the master template” [0046]; Fig. 3 shows an embodiment of a template / die; to create this die with laser etching, a range of laser fluence was necessarily determined).
Gates does not expressly disclose performing a machining test using the determine parameters; and determining optimal laser machining parameters from the machining test.
Boegli is directed to a method for manufacturing an embossing device [Abstract]. Boegli discloses performing a machining test using determined parameters, and determining optimal laser machining parameters from the machining test (“The appropriate ablation rate can be determined in preliminary tests, for example by the use of a separate piece of material having the same hard-coating as layers 30, 36, respectively, in which defined parameters, e.g., pulse energy, repetition rate, of the ablation laser beam are varied”; “By carrying out these tests, … the optimal choice” is determined [0036]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include performing a machining test using the determine parameters; and determining optimal laser machining parameters from the machining test. This ultimately allows for adjusting the profile of the die so that the embossed workpiece will have a shape that corresponds to the exact desired shape.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719), Fercke (DE 2227187), and Boegli et al. (US 2024/0017458), further in view of Fahrenbach (US 2010/0294015) and Li et al. (US 2005/0211680).
Regarding claim 5, Gates does not expressly disclose processing the die to remove redeposited material, by polishing with a colloidal suspension to smooth laser machined grooves.
Fahrenbach is directed to an embossing method [Title]. Fahrenbach discloses processing a die to removed redeposited material (“The micro-embossment station is generally provided with a cleaning arrangement which keeps the micro-stamp clean. This may be achieved by occasional direct cleaning of the micro-stamp die and/or by cleaning of the object supplied to the micro-stamping station” [0015]).
Li is directed to systems and methods for laser texturing of surfaces [Title]. Li discloses polishing with a colloidal suspension to smooth laser machined grooves (“Micro-grooves were produced on the surfaces” and “ mechanically polished utilizing colloidal silica for the final polishing step” [0068]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include processing the die to remove redeposited material, by polishing with a colloidal suspension to smooth laser machined grooves. This keeps the die clean and the grooves smooth, so that subsequent embossing produces the desired pattern.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719), Fercke (DE 2227187), and Boegli et al. (US 2024/0017458), further in view of Ren et al. (US 2004/0176863).
Regarding claim 10, Gates does not expressly disclose wherein a surface profile is obtained in a z-axis.
Ren discloses wherein a surface profile is obtained in a z-axis (“A comparison is made to determine a dimensional variance between the part noted by line 24 and the profile of the design intent part noted as line 22. This variance in profile will be made in all three dimensions” [0027]; the three dimensions are the x-, y-, and z-dimensions).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein a surface profile is obtained in a z-axis. This ultimately allows for adjusting the profile of the die so that the embossed workpiece will have a shape that corresponds to the exact desired shape.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719), Fercke (DE 2227187), and Boegli et al. (US 2024/0017458), further in view of Praharaj et al. (US 2019/0240873).
Regarding claim 20, Gates discloses a die containing features (“master template” containing a “design” [0041]),
laser machining of the die to engrave grooves (“laser etching is used to form the design of the master template” [0046]);
a substrate comprising a metal having a hardness value less than or equal to that of silver, copper, or aluminium on the Vickers hardness scale (“the clay material comprises one or more metals selected from the group consisting of silver, platinum, gold, copper, titanium, bronze, magnesium and titanium” [0043]), and
embossing of the substrate (“clay material”) using the laser machined die (“master template”) and a blank die (“a press”) with an embossing load (“pressing a clay material having one or more metals onto a template (or master template)”; “the clay material is pressed onto the template with the aid of a user's hand pressure”, alternatively, “the clay material is pressed onto the template with the aid of a mechanical device, such as a roller or a press” [0041]; the embossing load corresponds to the pressure applied by the press).
Gates does not expressly disclose micro-scaled patterns, and grooves having widths ranging from 700 nm to several micrometers.
Matthiesen is directed to “a method for impressing microstructures, especially holograms, into coins or similar” [Abstract]. Matthiesen discloses micro-scaled patterns (“microstructures” [Abstract]; additionally, “These structures have typical line widths between 800 lines and 1,500 lines per millimeter and relief depths between 0.2 μ and 0.8 μ (1 μ = 1/1000 mm)” [page 4 of attached translation]; this corresponds to grooves having widths ranging from 200 nm to 800 nm.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include micro-scaled patterns, and grooves having widths ranging from 700 nm to several micrometers. This advantageously allows for forming an image of a particular size with a desired resolution, for example, a small-sized image with high resolution.
Gates does not expressly disclose pre-flattening of the substrate using two blank dies with a pre-flattening load.
Fercke is directed to “pressing coin blanks” [Title]. Fercke discloses pre-flattening of a substrate using two blank dies with a pre-flattening load (“the coin blanks are prepressed in the direction of the later deformation during the minting process” (para. [0013] of attached translation); it is understood that in order to press the coin blanks in the direction of the later deformation during the minting process (which involves the following: “During the minting process, the coin blanks are pressed simultaneously between the obverse and reverse dies to fully form the design” [0004]), this involves two-blank dies (one for supporting the coin blanks and one for providing pressure (a pre-flattening load) to prepress the coin blanks; these dies are indicated to be blank dies because a smooth surface is produced on the coin blanks (“the pre-pressed coin blanks have a comparatively very low roughness depth, resulting in a smooth and even surface” [0008]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include pre-flattening of the substrate using two blank dies with a pre-flattening load. “[T]he pre-pressed coin blanks have a comparatively very low roughness depth, resulting in a smooth and even surface that also has a beneficial effect on the wear of the minting tools” [0008].
Gates does not expressly disclose wherein the laser machining of the die is performed using an ultrafast pulsed laser.
Boegli is directed to a “method for manufacturing an embossing device” [Abstract]. Boegli discloses wherein laser machining of a die is performed using an ultrafast pulsed laser (“laser processing of step S50 can be performed with an ultrafast-pulsed laser (picosecond or femtosecond type” [0030]; “ A result of this step is an embossing roller or drum 100” [0031]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the laser machining of the die is performed using an ultrafast pulsed laser. This is the use of a known laser pulse length for engraving an embossing tool, applied to a known method, to achieve predictable results.
Gates / Fercke does not expressly disclose wherein the embossing load is less than the pre-flattening load to enable transfer of the micro-scaled patterns without substrate adhesion to the die.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the embossing load is less than the pre-flattening load to enable transfer of the micro-scaled patterns without substrate adhesion to the die, because this would have been obvious to try. There are three possible options for the embossing load relative to the pre-flattening load: (1) the embossing load is greater than the pre-flattening load, (2) the embossing load is equal to the pre-flattening load, and (3) the embossing load is less than the pre-flattening load. One of ordinary skill in the art would have a reasonable expectation of success in using either of these three options, in order to provide adequate pre-flattening of the substrate as well as adequate embossing of the substrate.
Gates does not expressly disclose a non-transitory computer readable memory containing instructions, the instructions when executed by a processor perform (the above steps).
Praharaj is directed to an apparatus and method for embossing a substrate [Abstract]. Praharaj discloses a non-transitory computer readable memory containing instructions for embossing a substrate (“The processor executing the computer readable or software instructions relating to the above described method(s) can be perceived as a programmed processor or a specialized processor. As such, the present module 505 for embossing a substrate (including associated data structures) of the present disclosure can be stored on a tangible or physical (broadly non-transitory) computer-readable storage device or medium, e.g., … memory” [0057]).
Given Praharaj’s disclosure of a non-transitory computer readable memory containing instructions for embossing a substrate, and Gates / Matthiesen / Fercke’s disclosure of laser machining of the die to engrave grooves, pre-flattening of the substrate using two blank dies with a pre-flattening load, and embossing of the substrate using the laser machined die and a blank die with an embossing load, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a non-transitory computer readable memory containing instructions, the instructions when executed by a processor perform the above steps. This allows for inputting the steps into a computer program in advance of manufacturing the die, such that the die can be manufactured at a later time by simply executing the program.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719), Fercke (DE 2227187), and Boegli et al. (US 2024/0017458), further in view of Allstrom (US 2021/0070100).
Regarding claim 22, Gates does not expressly disclose wherein the metal substrate comprises tin.
Allstrom is directed to a component having an embossed texture [Abstract]. Allstrom discloses wherein a metal substrate comprises tin (“embossing and/or debossing a sheet of material including one or more layers of chromium, aluminum, nickel, copper, bronze, tin, and/or other suitable materials” [0049]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the metal substrate comprises tin. This results in a final product made of a desired material. Furthermore, the courts have held it to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 7/8/2026 have been fully considered but they are not persuasive.
On page 8, Applicant argues, “1. Gates Does Not Teach Embossing Bulk Metal Substrates.” Applicant states, “Gates is directed to jewellery making using metal clay, a composite material comprising metal particles (such as silver) suspended in an organic binder, not bulk solid metals. Gates expressly states that "the clay material having one or more metals" is pressed onto a template, after which "the clay material is then dried and annealed" (Gates, paragraphs [0041]-[0042]). The present invention is fundamentally different. Amended claim 1 recites embossing "metal substrates having a hardness value less than or equal to that of silver, copper, or aluminium on the Vickers hardness scale" at "room temperature." The specification discloses embossing bulk metals such as silver, copper, and aluminium - solid metals, not metal clay composites, with micro- and sub-micron scale patterns in a repeatable, industrial-scale process (Published Application, paragraphs [0044], [0046], [0065]).
However, the substrates in claim 1 are “metal substrates having a hardness value less than or equal to that of silver, copper, or aluminium on the Vickers hardness scale.” The metal clay of Gates reads on the metal substrates of claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On pages 8-9, Applicant argues, “2. Fercke Does Not Teach Pre-Flattening with Two Blank Dies as Claimed.” Applicant states, “The Examiner relies on Fercke for teaching "pre-flattening of the substrate using two blank dies with a pre-flattening load" (Office Action, page 4). However, Fercke teaches pre- pressing coin blanks during the knurling process to increase initial hardness and reduce die wear during subsequent minting (Fercke, Abstract and Description). Fercke states that "coin blanks are pre-pressed in the direction of later deformation during minting" as part of the knurling operation.”
However, based on the description in Fercke, knurling is applied to the edges of the coin blanks, and at the same time, the blanks are pre-pressed. Fercke further states, “the pre-pressed coin blanks have a comparatively very low roughness depth, resulting in a smooth and even surface that also has a beneficial effect on the wear of the minting tools” [0008]. This further indicates that blank dies are used, such that a smooth and even surface is achieved.
On page 9, Applicant argues, “3. The Combined References Do Not Teach the Critical Load Relationship.” Applicant states, “This relationship, wherein the embossing load is 60-80% of the pre-flattening load depending on groove geometry, is a key aspect of the present invention that enables repeated cold embossing of micro-scale features using the same die without substrate material adhering to grooves of the die (Published Application, paragraphs [0096], [0113]). The specification explains that "[i]f the material is pre-flattened with a certain tonnage, then it can be embossed with a tonnage at 60 to 80 percent of the pre-flattening tonnage.. without adhesion" (Published Application, paragraph [0113]).”
However, the relationship between the embossing load and the pre-flattening load as recited in amended claim 1 would have been obvious to try, for the reasons described in the rejection of amended claim 1. Regarding claim 3 and the claimed range, there is no indication that a new and unexpected result would be produced by applying a particular embossing load.
On page 10, Applicant argues, “4. No Motivation to Combine the References.” Applicant states, “One of ordinary skill in the art would not be motivated to combine Gates (jewellery making with metal clay), Matthiesen (coin microstructures), and Fercke (coin blank pre-pressing) to arrive at the claimed invention. The references address fundamentally different technical problems: Gates addresses creating textured jewellery pieces from metal clay; Matthiesen addresses creating holograms on coins; and Fercke addresses extending die life by work-hardening coin blanks. None of these references addresses the problem solved by the present invention: enabling repeated room-temperature embossing of micron/sub-micron scale patterns on bulk metals without die degradation from substrate adhesion. The specification discloses that "[e]xisting methods and systems for embossing fine structures may be limited by microscale failure of a transfer, whereby a deformed portion of a substrate may remain stuck in a groove of a die" (Published Application, paragraph [0081]). The claimed combination of pre-flattening with two blank dies followed by embossing at a lower load addresses this specific problem.”
However, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Additionally, it has been held that a prior art reference must either be in the field of the inventor' s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
On pages 10-11, Applicant refers to the previous rejections of claims 4, 7-8, and 10. On pages 11-12, Applicant refers to the previous rejections of claim 5.
New grounds of rejection are made in view of Applicant’s amendments. It is also noted that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.
On page 12, Applicant refers to the previous rejection of claim 9. Applicant states, “The Examiner relies on Boegli for teaching preliminary tests to determine ablation rate by varying pulse energy and repetition rate (Office Action, page 7; Boegli, paragraph [0036]). However, the claimed process is more comprehensive. The specification explains that the groove geometry is determined based on the die substrate and embossing material for achieving good optical effects (Published Application, paragraph [0112]). The range of laser fluence is determined based on the relationship between desired groove size and laser spot size - if the groove width is larger than the spot size, high fluence is required; if close to the spot size, medium fluence is used; if similar and close to the ablation threshold, low fluence is required (Published Application, paragraph [0112]). Boegli's preliminary testing for hard-coating ablation rate on embossing rollers does not address these considerations for creating embossing dies with specific optical properties on bulk metal substrates. Boegli is concerned with ablating hard ceramic coatings (e.g., TiN, CrN) to create embossing structures on rollers, not with optimising laser parameters for creating dies that will emboss micro-scale patterns onto bulk metal substrates.”
However, in claim 9, Boegli is relied upon as disclosing performing a machining test using determined parameters, and determining optimal laser machining parameters from the machining test (“The appropriate ablation rate can be determined in preliminary tests, for example by the use of a separate piece of material having the same hard-coating as layers 30, 36, respectively, in which defined parameters, e.g., pulse energy, repetition rate, of the ablation laser beam are varied”; “By carrying out these tests, … the optimal choice” is determined [0036]). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
On page 13, Applicant refers to the previous rejection of claim 20.
New grounds of rejection are made in view of Applicant’s amendments.
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.
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761
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