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 .
Withdrawn Rejections
The 35 U.S.C. 112(b) rejection of claims 1-15 of record in the previous Office Action mailed on 3/11/2026 has been withdrawn due to Applicant's amendment filed on 4/20/2026.
The 35 U.S.C. 112(f) rejection of claims 1 and 13 of record in the previous Office Action mailed on 3/11/2026 has been withdrawn due to Applicant's amendment filed on 4/20/2026.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-5 and 8-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Poulakis (US 2017/0066181).
Regarding claim 1, Poulakis discloses a fastening system (Figs. 1 and 5) which is configured to be applied repeatedly to third components having smooth surfaces for the purpose of detachable fastening to the same (paragraph [0025]), comprising at least two interconnected functional parts of planar shape (12, 18 and/or 20), of which at least one functional part has the form of a film (film 18) and at least one further functional part (12) has a plurality of individual elements (14), free end faces (16) of which adhere to the smooth surface of the respective third component by means of Van der Waals forces (paragraph [0025]), and wherein the individual elements (14) are each formed from stem or stalk parts having free ends (16) that widen in diameter to form a broadening (Figs. 1 and 5), wherein a connecting means in the form of a glue is introduced between the two functional parts for keeping the two functional parts together (paragraph [0027]).
Regarding the limitation “bears information” in claim 1, it is to be pointed out that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. MPEP 2112.01(III).
Regarding claim 3, Poulakis discloses a fastening system (Figs. 1 and 5) which is configured to be applied repeatedly to third components having smooth surfaces for the purpose of detachable fastening to the same (paragraph [0025]), comprising at least two interconnected functional parts of planar shape (12, 18 and/or 20), of which at least one functional parts has the form of a film (film 18) and at least one further functional part (12) has a plurality of individual elements (14), free end faces (16) of which adhere to the smooth surface of the respective third component by means of Van der Waals forces (paragraph [0025]), and wherein the individual elements (14) are each formed from stem or stalk parts having free ends (16) that widen in diameter to form a broadening (Figs. 1 and 5), wherein a connecting means in the form of a glue is introduced between the two functional parts for keeping the two functional parts together (paragraph [0027]), wherein a third functional part is arranged between the two functional parts, wherein the third functional part is designed as a support part and has the connecting means to at least one of the adjacent functional parts on at least one side (Fig. 1; paragraph [0027]).
Regarding the limitation “bears information” in claim 3, it is to be pointed out that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. MPEP 2112.01(III).
Regarding claim 4, Poulakis discloses all the functional parts, including any connecting means, being provided as layers and, at least in an initial state prior to use, are in contact with one another in a plane-parallel and full-contact manner and without any protrusions (Figs. 1 and 5).
Regarding claim 5, Poulakis discloses at least some of the functional parts themselves having a multilayer structure (Figs. 1 and 5; paragraphs [0027] and [0041]).
Regarding claim 8, Poulakis discloses the functional parts arranged adjacent to one another, are connected to each other without glue by means of coating or lamination process (paragraph [0027]).
Regarding claim 9, Poulakis discloses the respective functional part consisting of a plastic material, and wherein the further functional part, at least to the extent of its individual elements, has adhesion properties of the class of poly(organo)siloxane (paragraph [0026]).
Regarding claim 10, Poulakis discloses the one functional part being colored (paragraphs [0027] and [0029]). Regarding the limitations “bearing information” and “symbols”, it is to be pointed out that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. MPEP 2112.01(III).
Regarding claim 11, Poulakis discloses wherein at least one of the functional parts is equipped with a flame retardant (paragraphs [0042] and [0050]).
Claim 12 defines the product by how the product was made. The limitation “the individual elements is produceable using a forming screen in a chill-roll process" is deemed a process limitation. Thus, claim 12 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited step implies forming individual elements capable of adhesion. As shown above, Poulakis suggests such a product. The method of forming the product is not germane to the issue of patentability of the product itself. MPEP 2113.
Regarding claim 13, Poulakis discloses the fastening system, configured to be designed as rolled or wound material, such that in the unrolled or unwound state and divided into predeterminable lengths can fulfill respective purposes (paragraph [0035]). Claim 13 recites a recitation of the intended use of the claimed invention. It has been held that a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As shown above, Poulakis clearly teaches all the structural limitations of the claimed fastening system. Accordingly, the fastening system of Poulakis is capable of performing the intended use recited in claim 13.
Regarding claim 14, Poulakis discloses a tradable merchandise item consisting of a plurality of fastening systems combined on a carrier strip, as small parts that can be separated from one another, and after detachment from the carrier strip, are provided for detachable adhesion to the third component (Fig. 5; paragraph [0025]).The limitation “tradable merchandise item” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “tradable merchandise item” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Claim 15 recites a recitation of the intended use of the claimed invention. It has been held that a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As shown above, Poulakis clearly teaches all the structural limitations of the claimed fastening system. Accordingly, the fastening system of Poulakis is capable of performing the intended use recited in claim 15.
Claim Rejections - 35 USC § 103
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 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Poulakis as applied to claim 1 above.
Poulakis discloses the claimed fastening system as shown above, but fails to teach the further functional part as a whole together with the individual elements being subdivided into groups which at least in a longitudinal and/or transverse direction to the extension of the film of the one functional part, have a predeterminable distance from one another, with a gap size that is smaller than a film thickness of each of the functional parts, and wherein a group member of the groups is formed of a single segment which in conjunction with further segments forms the further functional part. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the further functional part as a whole together with the individual elements in Poulakis to be subdivided into groups which at least in a longitudinal and/or transverse direction to the extension of the film of the one functional part, have a predeterminable distance from one another, with a gap size that is smaller than a film thickness of each of the functional parts, and wherein a group member of the groups is formed of a single segment which in conjunction with further segments forms the further functional part, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. See MPEP 2144.04 (V) C.
Response to Arguments
Applicant's arguments filed 4/20/2026 have been fully considered but they are not persuasive.
Applicant argues that “claim 1 is directed to a system for ‘detachable fastening” that can be ‘applied repeatedly’. While Poulakis mentions van der Waals forces in paragraph [0025], this passage merely describes the intrinsic adhesive properties of the micro-structured elements themselves, a system for releasable attachment to a third component. The actual inventive method taught by Poulakis is to take this micro-structured part and permanently weld it to the target surface, thereby creating a non-releasable connection. In other words, the glue is for manufacturing convenience, not part of a system designed for repeatable, detachable adhesion. The office action has cited a feature of an intermediate product, not the final functional system as applied”.
This argument is not deemed persuasive. Applicant’s arguments rely on language solely recited in preamble recitations in claims 1 and 3. When reading the preamble in the context of the entire claim, the recitation “configured to be applied repeatedly to third components having smooth surfaces, for the purpose of detachable fastening to the same” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Applicant then argues that “claim 1 requires that the system includes ‘at least one functional part (2) has the form of a film and bears information.’ This limitation, viewed together with the requirement for ‘detachable fastening,’ points to a technical purpose - such as temporary signage or removable labels - distinct from that of Poulakis, which concerns permanent structural bonds for vehicle interiors (Poulakis, [0006]). The claimed invention solves the problem of providing a reliable, releasable, information-carrying system, a problem not addressed or solved by Poulakis's permanent welding method”.
This argument is not deemed persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., temporary signage or removable labels) are not recited in the rejected claim(s). 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).
Furthermore, Applicant argues that “there is no disclosure or suggestion in Poulakis of a third functional part in the form of an intermediate support part placed between an information film and an adhesive film for the specific purpose of increasing bending stiffness”.
This argument is not deemed persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., adhesive film) are not recited in the rejected claim(s). 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). Furthermore, Poulakis teaches three functional parts (12, 18 and 20). In Fig. 1, Poulakis teaches a third functional part (18) between functional part (20) and functional part (12) which includes a plurality of elements (14) and a connecting means in the form of glue to at least one of the adjacent functional parts on at least one side (paragraph [0027]). Accordingly, claim 3 is unpatentable over Poulakis.
In view of the foregoing, claims 1 and 3-15 are unpatentable over Poulakis.
Conclusion
THIS ACTION IS MADE FINAL. 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 CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
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