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 .
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.
Claim 59 is 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 59 recites “equipment: writing instruments: manufacturing equipment; or a graphic film” in lines 5-6. The claim is not clear.
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.
Claim(s) 24, 29-32, 46-49, 59 and 60 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnston et al. (US 2002/0146540 A1) (Johnston”).
With respect to claim 24, Johnston discloses an article comprising a base member – element 26b – and a microstructured surface – element 24 - disposed on the base member (abstr., 0009, 0121, Fig. 2a), wherein the microstructured surface comprises a plurality of peak structures and adjacent valleys (0064, 0077, Fig. 2a), wherein the valleys have a width of from 50 to 3000 microns (0113), and the peak structures have a side wall angle of from 10˚ to 60˚ (0113). The ranges of the maximum widths of the valleys and the side wall angle overlap the ranges recited in claim 24. Overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). Johnston discloses the plurality of peak structures and the valleys includes a first peak structure extending from a first non-planar valley to a second non-planar valley, exhibiting a height and having a rounded apex and a second peak structure extending from the second non-planar valley to a third non-planar valley, exhibiting the height and having a rounded apex (Fig. 2d).
Regarding claim 29, Johnston teaches the article of claim 24, wherein the base member comprises a thermoplastic material (0121).
As to claim 30, Johnston teaches the article of claim 29. Johnston discloses the peak structures comprise copolymers of various organic polymeric materials, e.g. copolymers of propylene and ethylene with minor proportions of other monomers such as vinyl acetate or acrylates (0059), thus, it would be obvious to one of ordinary skill in the art that Johnston suggests crosslinked material.
Regarding claim 31, Johnston teaches the article of claim 24. The claim relates to a result that can be obtained after use of the microstructured surface. The Examiner notes the recitation “after cleaning” is very broad. Since Johnston discloses an article comprising all the elements as recited in the instant specification, as discussed above, it is expected that the article of Johnston is capable to perform as intended.
As to claim 32, Johnston teaches the article of claim 24. Since Johnston teaches an article comprising all the elements as disclosed in the instant specification, as discussed above, it would be expected that the microstructured surface of Johnston is capable to perform as intended.
Regarding claim 46, Johnston teaches the article of claim 24. Since Johnston teaches an article comprising all the elements as disclosed in the instant specification, as discussed above, it would be expected that the microstructured surface of Johnston is capable to perform as intended, that is the ratio Sbi/Svi is satisfied.
With respect to claim 48, Johnston teaches the article of claim 24. Johnston discloses the microstructured surface includes other materials than a fluorinated material or polydimethylsiloxane material (0059), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the microstructured surface lacks a fluorinated material or polydimethylsiloxane material.
Regarding claim 49, Johnston teaches the article of claim 24, and discloses embodiments wherein the microstructured surface lacks a coating (0063),
As to claim 59, Johnston discloses that the article can be a computer keyboard (abstr.), which the Examiner interprets as satisfying “office and school supplies and equipment” limitation of the claim.
With respect to claim 60, Johnston teaches the article of claim 24, wherein the second non-planar valley exhibits a root angle that overlaps the range recited in the claim (Fig. 2d). Overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnston, in view of Mizuno et al. (US 2018/0050513 A1) (“Mizuno”).
Regarding claim 28, Johnston teaches the article of claim 24, wherein there may be additional layers present between the microstructured surface and the base member (0121), but Johnston is silent with respect to specifically a pressure sensitive adhesive layer being disposed between the base member and microstructured surface. Mizuno discloses an article comprising a microstructured surface and a base member, wherein a pressure sensitive adhesive is disposed between the base member and the microstructured surface to increase adhesion between the layers (0010-0017, 0076-0085). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to dispose a pressure sensitive adhesive layer between the base member and the microstructured surface of Johnston to increase adhesion between the layers.
Claim(s) 61, 63-69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnston et al. (US 2002/0146540 A1) (Johnston”).
With respect to claim 61, Johnston discloses an article comprising a base member – element 26b – and a microstructured surface – element 24 - disposed on the base member (abstr., 0009, 0121, Fig. 2a), wherein the microstructured surface comprises a plurality of peak structures and adjacent valleys (0064, 0077, Fig. 2a), wherein the valleys have a width of from 50 to 3000 microns (0113), and the peak structures have a side wall angle of from 10˚ to 60˚ (0113). The ranges of the maximum widths of the valleys and the side wall angle overlap the ranges recited in claim 24. Overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). Johnston discloses the plurality of peak structures and the valleys includes a first peak structure extending from a first non-planar valley to a second non-planar valley, exhibiting a height and having a truncated apex and a second peak structure extending from the second non-planar valley to a third non-planar valley, exhibiting the height and having a truncated apex (Fig. 2h).
Regarding claim 63, Johnston teaches the article of claim 61, wherein the base member comprises a thermoplastic material (0121).
As to claim 64, Johnston teaches the article of claim 61. Johnston discloses the peak structures comprise copolymers of various organic polymeric materials, e.g. copolymers of propylene and ethylene with minor proportions of other monomers such as vinyl acetate or acrylates (0059), thus, it would be obvious to one of ordinary skill in the art that Johnston suggests crosslinked material.
Regarding claim 65, Johnston teaches the article of claim 61. The claim relates to a result that can be obtained after use of the microstructured surface. The Examiner notes the recitation “after cleaning” is very broad. Since Johnston discloses an article comprising all the elements as recited in the instant specification, as discussed above, it is expected that the article of Johnston is capable to perform as intended.
As to claim 66, Johnston teaches the article of claim 61. Since Johnston teaches an article comprising all the elements as disclosed in the instant specification, as discussed above, it would be expected that the microstructured surface of Johnston is capable to perform as intended.
Regarding claim 67, Johnston teaches the article of claim 61. Since Johnston teaches an article comprising all the elements as disclosed in the instant specification, as discussed above, it would be expected that the microstructured surface of Johnston is capable to perform as intended, that is the ratio Sbi/Svi is satisfied.
With respect to claim 68, Johnston teaches the article of claim 61. Johnston discloses the microstructured surface includes other materials than a fluorinated material or polydimethylsiloxane material (0059), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the microstructured surface lacks a fluorinated material or polydimethylsiloxane material.
Regarding claim 69, Johnston teaches the article of claim 61 and discloses embodiments wherein the microstructured surface lacks a coating (0063),
Claim(s) 62 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnston, in view of Mizuno et al. (US 2018/0050513 A1) (“Mizuno”).
Regarding claim 62, Johnston teaches the article of claim 61, wherein there may be additional layers present between the microstructured surface and the base member (0121), but Johnston is silent with respect to specifically a pressure sensitive adhesive layer being disposed between the base member and microstructured surface. Mizuno discloses an article comprising a microstructured surface and a base member, wherein a pressure sensitive adhesive is disposed between the base member and the microstructured surface to increase adhesion between the layers (0010-0017, 0076-0085). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to dispose a pressure sensitive adhesive layer between the base member and the microstructured surface of Johnston to increase adhesion between the layers.
Response to Arguments
Applicant’s arguments filed on March 13, 2026 have been fully considered.
In view of the recent amendment 35 USC 112(b) rejections of claims 5, 6, 24, 31, 45, and 47 have been withdrawn.
The Applicant stated that Johnston fails to discloses or suggest an article according to the amended claim 24, specifically with respect to the first and second peak structures as recited in the claim. The Applicant did not provide further arguments. The Examiner notes the article of claim 24 is taught by Johnston as discussed above.
Information Disclosure Statement
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
The information disclosure statement filed on Aug. 26, 2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Foreign patent document at Cite. #3, EP 2563451 is not present in the application file.
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 JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783
Prosecution Insights