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 .
Election/Restrictions
Claim 11 – 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/9/2026. Claims 1 – 10 and 20 have been considered below.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 7 is objected to because of the following informalities: claim 7 recites, “wherein obtaining a surface profile a point sensor is utilized to map a profile of the die.” It appears this should recite, “wherein -in obtaining a surface profile, a point sensor is utilized to map a profile of the die.” Appropriate correction is required.
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 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 recites the phrase “fast replication.” The term “fast” is a relative term which renders the claim indefinite. The term “fast” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear if the replication method is required to be performed within a particular time period, and if so, what time period would be considered to result in “fast” replication. Examiner suggests removing the term “fast” to overcome this rejection. Claims 2 – 10 are also rejected by virtue of their dependence on claim 1.
Similarly, claim 1 recites the phrase “soft-metal substrates.” The term “soft” is a relative term which renders the claim indefinite. The term “soft” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear which metals fall within the scope of ‘soft-metals’. Applicant’s filed specification provides examples wherein the method is performed on silver, copper, and aluminum (page 4, lines 5-9). For examination purposes, ‘soft-metals’ will be interpreted as metals having a hardness value less than or equal to that of silver, copper, or aluminum on either of the Mohs hardness scale or the Vickers hardness scale. Clarification is required to overcome this rejection, without adding new matter.
Claim 2 recites, “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.” Claim 1, from which claim 2 depends, recites, “pre-flattening of the substrate using two blank dies with a pre-flattening load.” It is unclear if the pre-flattening step in claim 2 is (A) 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), or (B) an additional pre-flattening step. Examiner is interpreting as described in (A).
Claim 3 recites, “about 10 to 30 percent less.” The term “about” is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear if “about 10 percent” should be construed as, for example, 9.5 percent, 9 percent, 8 percent, etc. and if “about 30 percent” should be construed as 30.1 percent, 30.5 percent, 30.9 percent, etc. Examiner suggests removing the term “about” to overcome this rejection.
Claim 4 recites, “further comprising … laser machining the die material with the generated pattern design.” Claim 1, from which claim 4 depends, recites, “laser machining of a die to engrave grooves.” It is unclear if the laser machining step in claim 4 is (A) the same laser machining step as in claim 1, wherein the generated pattern design recited in claim 4 corresponds to the grooves that are engraved in claim 1, or (B) an additional laser machining step. Examiner is interpreting as described in (A).
Claim 6 recites, “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[].” It is unclear if the embossing step in claim 6 is (A) the same embossing step as in claim 1, or (B) an additional embossing step. Examiner is interpreting as described in (A).
Claim 7 recites, “wherein obtaining a surface profile ….” Claim 7 depends from claim 1, but claim 1 does not recite a step of obtaining a surface profile. However, claim 4 recites “obtaining a surface profile.” It is unclear if claim 7 is intended (A) to depend from claim 4, or (B) to depend from claim 1 and recite, “further comprising obtaining a surface profile.” Examiner is interpreting as described in (A). Please see the objection to claim 7, above, regarding a grammatical issue with claim 7.
Claim 9 recites, “wherein determining laser machining parameters further comprises ….” Claim 1, from which claim 9 depends, does not recite a step of determining laser machining parameters. However, claim 4 recites, “determining laser machining parameters.” It is unclear is claim 9 is intended (A) to depend from claim 4, or (B) to depend from claim 1 and recite, further comprising determining laser machining parameters, comprising ….” Examiner is interpreting as described in (B).
Claim 20 recites, “the substrate.” There is insufficient antecedent basis for this limitation, since “a substrate” is not recited before “the substrate.” Additionally, claim 20, the preamble indicates that the invention of claim 20 is a non-transitory computer readable memory containing instructions for manufacturing a die. The first instruction, which is to perform “laser machining of the die to engrave grooves,” is for manufacturing a die. However, the second and third instructions, which are “pre-flattening of [a] substrate …” and “embossing of the substrate …,” respectively, are for replication of a laser machined pattern onto a substrate, rather than for manufacturing a die. It is unclear if the non-transitory computer readable memory of claim 20 is intended to (A) contain an instruction for manufacturing a die, wherein the instruction performs laser machining of the die to engrave grooves, or (B) contain instructions for replication of a laser machined pattern onto a substrate, wherein the instructions perform: laser machining of a die to engrave grooves; pre-flattening of a 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. Examiner is interpreting as in described in (B).
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 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719) and Fercke (DE 2227187).
Regarding claim 1, Gates discloses a method of fast replication of laser machined patterns onto soft-metal substrates 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]) 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 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.
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].
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. 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].
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.
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, 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, 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]).
Claims 4, 7 – 8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719) and Fercke (DE 2227187), further in view of Ren et al. (US 2004/0176863).
Regarding claim 4, Gates discloses 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; generating a pattern design for application to the die material applying the obtained surface profile; 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 (“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; 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.
Regarding claim 7, Gates does not expressly disclose wherein in obtaining a surface profile a point sensor is utilized to map a profile of the die.
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).
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 a surface profile a point sensor is utilized to map a profile of the die. 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 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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719) and Fercke (DE 2227187), further in view of Fahrenbach (US 2010/0294015).
Regarding claim 5, Gates does not expressly disclose processing the die to removed redeposited material.
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]).
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 removed redeposited material. This keep the die clean, so that subsequent embossing produces the desired pattern.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719) and Fercke (DE 2227187), further in view of Boegli et al. (US 2024/0017458).
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 20 is rejected under 35 U.S.C. 103 as being unpatentable over Gates (US 2010/0320180) in view of Matthiesen (WO 9835719) and Fercke (DE 2227187), 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]); 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 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 features.
Matthiesen is directed to “a method for impressing microstructures, especially holograms, into coins or similar” [Abstract]. Matthiesen discloses micro-scaled features (“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].
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 features. 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 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.
Conclusion
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761