DETAILED ACTION
Response to Amendment
Applicant's amendment filed 10/31/2025 has been entered. Currently, claims 1-12 and 17-24 are pending and claims 13-16 are cancelled.
Drawings
The drawings were received on 10/31/2025. These drawings are acceptable.
Claim Rejections - 35 USC § 112
Claims 1-12 and 17-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, the Examiner does not find support for the limitations of “an average % mismarked of the plurality of marks of the predetermined feature is less than 15% as measured according to the average % mismarked method” in the specification as filed. The limitations on page 31 of the specification teach that the “average % mismarked” is for “a predetermined pattern comprising multiple alphanumeric characters” and not for any predetermined feature per se.
In claim 17, the Examiner does not find support for the limitations of “an average % displacement for the predetermined pattern is between about 30% and about 60% as measured according to the average % mismarked method” in the specification as filed. The limitations on page 31 of the specification teach that the “average % displacement” is for “a predetermined pattern comprising multiple alphanumeric characters” and not for any predetermined feature per se.
Claims 1-12 and 17-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, the phrase “the average % mismarked method” lacks antecedent basis in the claims and the specification as there is no defined “average % mismarked method” per se in the specification as filed. The word “method” is not used and there is no defined method set forth on page 31 of the specification as filed.
In claim 1, the phrase “average % mismarked” renders the claim indefinite as this is a subjective term. According to page 31, this term is comparing the number of mistakes divided by the number of “desired marked locations”. The concept of “desired marked locations” is a subjective term that renders the claim indefinite. Any mark location in the prior art will read on a desired marked location.
In claims 9 and 22, the phrase “the sheet of material is formed into an article” renders the claims indefinite as this could be interpreted as either that the sheet of material “can be formed into an article” or “is in the form of an article” depending on how it is read. This difference in reading would affect the metes and bounds of the claims as it makes some limitations either read as functional limitations of structural limitations, which renders the claims indefinite. Given the overall context of the specification, the Examiner is interpreting the phrase as “the marked sheet of material can be formed into an article” which is how the claims can be amended to overcome the rejection.
In claims 10 and 23, the phrase “the article is a” renders the claims indefinite for the same reasons as set forth for claims 9 and 22, respectively, i.e. it is unclear if this is functional or structural limitations. The rejection can be overcome by making the change to claims 9 and 22 noted above and changing these claims to recite “the article can be a” which is how the claims will be interpreted.
In claim 17 on line 10 and claim 21 on lines 1-2, the phrase “the packet of instructions” lacks antecedent basis in each claim. The rejection can be overcome by changing the phrase to “each packet of instructions” which is how the claims will be interpreted.
In claim 17, the phrase “average % displacement” renders the claim indefinite as this is a relative term that depends on how one measures displacement. According to pages 30-31, applicants describe that displacement is measured based on “the start point” and “the finish-point” of each marked portion. These terms are not definite as it is unclear how one determines where the start and finish of a row is located. Specifically, if one looks at the traveling direction of the arrow 59 in Figure 5, one row can start on the left and the next row could start on the right. Given this indefinite nature of the property, it is unclear how one could determine whether a prior art marked sheet of material would meet the property as start or finish could be in any direction of an image.
In claim 17 on line 14, the phrase “the predetermined pattern” lacks antecedent basis in the claims. This rejection can be overcome by changing the phrase to “the predetermined feature” which is how the claim will be interpreted.
In claim 17 on lines 15-16, the phrase “the average % displacement method” lacks antecedent basis in the claims and the specification as there is no defined “average % displacement method” per se in the specification as filed. The word “method” is not used and there is no defined method set forth on pages 30-31 of the specification as filed.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In claim 12, the limitations that the at least 2 individual instructions “are any combination of marks and voids” fails to limit the claim from which it depends because claim 1 has the scope that the at least 2 individual instructions can include any combination of marks and voids. This means claim 12 is a mere restating of the scope of claim 1, which fails to limit the claim.
Claim Rejections - 35 USC § 102
Claims 1, 2, 5, 9-12, 17, 18 and 21-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Applicants admitted prior art”.
The Examiner notes the presence of product-by-process limitations in claims 1, 2, 12, 17, 18 and 21. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The limitations on how the pulse lasing apparatus uses packets of instructions to form the marked and unmarked areas in the marked sheet of material and that constant surface velocity bitmap marking is used are product-by-process steps.
With regard to claims 1, 2, 5, 11, 12, 17, 18, 21 and 24, Applicants state on pages 1-2 of their specification that laser marking of regions on articles with date codes, which reads on an alphanumeric character or a symbol, “is known”. They also teach that the “current state of the art” includes raster and vector processes and the raster process is known to form marks in a grid point by point and row by row, which reads on the locations separated by X-distances and rows separated by Y-distances. This anticipates the claimed marked sheet of material with predetermined features including marked and unmarked locations, which reads on applicants’ marks and voids as per their definition, and would read on the average % mismarked as any mark location reads on a desired marked location, see 112(b) rejection above; hence, the product of the prior art would have all marks being in their desired location and the average % mismarked would be 0%.
Despite the marked sheet of material of Applicants admitted prior art not being taught as being the result of a pulse lasing apparatus that marks by constant surface velocity bitmap marking controlled by a computing device that sends packets of instructions, wherein each packet includes at least 2 individual instructions or wherein each packet includes positional information, the resultant structure of applicants admitted prior art will be the same as that resultant from the product-by-process limitations claimed.
With specific regard to the limitations in claim 17 concerning the average % displacement, this limitation would only apply “when” the galvo mirror velocity is set to 1000 rad/sec, but this is therefore not required when it is any other speed other than 1000 rad/sec to meet the claim. The product of the prior art recorded by the “slow” process of page 2 of Applicants’ admitted prior art will inherently not be recorded upon at this speed.
With regard to claims 9, 10, 22 and 23, these represent intended use/functional limitations of how the marked sheet of material may be used. Given the fact that the structure of applicants admitted prior art is identical to that of claims 1 and 17, it can inherently be formed into one of the articles claimed.
Claims 1, 2, 5, 8-12, 17, 18 and 21-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kokkelenberg et al. (WO 2021/023492).
The Examiner notes the presence of product-by-process limitations in claims 1, 2, 12, 17, 18 and 21. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The limitations on how the pulse lasing apparatus uses packets of instructions to form the marked and unmarked areas in the marked sheet of material and that constant surface velocity bitmap marking is used are product-by-process steps.
With regard to claims 1, 2, 5, 11, 12, 17, 18, 21 and 24, Kokkelenberg et al. teach a laser markable/marked label, which reads on applicants’ sheet of material that is marked and can form a laminate article, wherein the label comprises a polyester laser markable layer [0026]. The label can be marked with a pulsed layer to form a barcode, which would read on a symbol and a predetermined feature of marks and voids, i.e. marked and unmarked regions [0092] and [0098]. It is also known that laser image on labels can be numbers, which are alphanumeric [0002]. The laser marking can be done to with an XY-addressable system at 14000 dpi, which will inherently form a grid of locations separate by an X-distance and rows separated by a Y-distance comprising marks where printing is done and voids where printing is not done [0101]. These marks would read on the average % mismarked as any mark location reads on a desired marked location, see 112(b) rejection above; hence, the product of the prior art would have all marks being in their desired location and the average % mismarked would be 0%.
Despite the marked sheet of material of Kokkelenberg et al. not being taught as being the result of a pulse lasing apparatus that marks by constant surface velocity bitmap marking controlled by a computing device that sends packets of instructions, wherein each packet includes at least 2 individual instructions or wherein each packet includes positional information, the resultant structure of Kokkelenberg et al. will be the same as that resultant from the product-by-process limitations claimed.
With specific regard to the limitations in claim 17 concerning the average % displacement, this limitation would only apply “when” the galvo mirror velocity is set to 1000 rad/sec, but this is therefore not required when it is any other speed other than 1000 rad/sec to meet the claim.
With regard to claim 8, the polyester layer can comprise TiO2, which reads on applicants’ laser absorption additive [0062].
With regard to claims 9, 10, 22 and 23, these represent intended use/functional limitations of how the marked sheet of material may be used. Given the fact that the structure of Kokkelenberg et al. is identical to that of claims 1, 8 and 17, it can inherently be formed into one of the articles claimed.
Claim Rejections - 35 USC § 103
Claims 3, 4, 6, 7, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over “Applicants admitted prior art”.
Applicants admitted prior art teach all of the limitations of claims 1, 2, 5, 17 and 18 above; however, they do not specifically teach the location and spacing of the marks in the laser printed image.
The spacing and location of the marks represent a mere design choice of the printed image. It would have been obvious to one having ordinary skill to have printed the marks in adjacent rows as either stacked, such as for forming the letter “I” or a barcode, or offset, such as for forming the diagonal portions of the letter “v”.
Additionally, it would have been obvious to have printed alphanumeric character of from 6 to 10 pt or from 11 to 16 pt depending on the intended use of the images/text and it would have been obvious to have printed any amount of dots in the X and Y directions, such as printing a mark at every other location in the Y-direction versus the X-direction, which would be a 2 to 1 ratio of Y to X distances. This is a mere design choice on how one would want the image to appear after printing.
Claims 3, 4, 6, 7, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kokkelenberg et al. (WO 2021/023492).
Kokkelenberg et al. teach all of the limitations of claims 1, 2, 5, 17 and 18 above; however, they do not specifically teach the location and spacing of the marks in the laser printed image.
The spacing and location of the marks represent a mere design choice of the printed image. It would have been obvious to one having ordinary skill to have printed the marks in adjacent rows as either stacked, such as for forming the letter “I” or forming a barcode, or offset, such as for forming the diagonal portions of the letter “v”.
Additionally, it would have been obvious to have printed alphanumeric character of from 6 to 10 pt or from 11 to 16 pt depending on the intended use of the images/text and it would have been obvious to have printed any amount of dots in the X and Y directions, such as printing a mark at every other location in the Y-direction versus the X-direction, which would be a 2 to 1 ratio of Y to X distances. This is a mere design choice on how one would want the image to appear after printing.
Response to Arguments
Applicant’s arguments, see Remarks, filed 10/31/2025, with respect to the objections to the drawings, the claim objections, the previous 112(a) rejection, some of the previous 112(b) rejections and the rejections based on Lester et al. ‘739 and ‘740 have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicants have properly invoked the 102(b)(2)(C) exclusion for the Lester et al. rejections.
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive.
Applicants argue on page 10 of their Remarks that their specification does not contain admitted prior art.
The Examiner respectfully disagrees and notes that applicants have not set forth a persuasive explanation as to how the Examiner’s position was improper, and therefore this means the Examiner’s maintains that his position was proper and has repeated it in this Office action.
Applicants argue on page 11 of their Remarks that the Applicants admitted prior art and Kokkelenberg do not teach or suggest the new limitations of the “average % mismarked” as claimed.
The Examiner respectfully disagrees and notes that these limitations are indefinite as it is a subjective term that renders the claim indefinite because it is based on “desired marked locations”. Any mark location of Applicants admitted prior art and Kokkelenberg would read on a desired marked location, see 112(b) rejection above; hence, the product of the prior art would have all marks being in their desired location and the average % mismarked would be 0%, which would read on the structure of the claim.
Applicants argue on pages 11-12 of their Remarks that the product-by-process steps would imply distinctive structural characteristics that are not present in Kokkelenberg or Applicants admitted prior art.
The Examiner respectfully disagrees and notes that the “average % mismarked” is met by the prior art for the reasons noted above.
Additionally, the “average % displacement” is indefinite for the reasons above, and therefore it is unclear to be able to know when an article of the prior art would possess this property or not as the way it is measured does not make sense. Also, the limitations in claim 17 are only required “when” the galvo mirror was operated at 1000 rad/sec, which means that if the galvo mirror was not operated at 1000 rad/sec, then the prior art article does not need to have the average % displacement claimed.
Lastly, the claims are open to any speed of a CV bitmap marking process. This means the claims are very broad and are open to any placement of marks on a surface, including structures formed by the processes of Kokkelenberg or Applicants admitted prior art. The Examiner respectfully disagrees with applicants’ position that the structure implied by the claimed limitations excludes the prior art references.
Applicants argue on page 14 that the Office has not properly rendered obvious the stacked and offset grid patterns.
The Examiner respectfully disagrees and notes that he called this a design choice on how one laser prints the image, which was a proper rationale to render obvious the claims. Also, given that these are the only two options on how someone can laser print an image, it would clearly be within the level of ordinary skill to laser print in either of the two options of laser printing, i.e. stacked or offset, to form a proper image.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm (variable one work-at-home day).
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/Gerard Higgins/Primary Examiner, Art Unit 1785