DETAILED ACTION
In Reply filed on 01/30/2025, claims 1-20 are pending. Claims 1-3, 5-6, 9, 11, and 17 are currently amended. No claim is canceled, and no claim is newly added. Claims 12-15 and 19 are withdrawn. Claims 1-11, 16-18, and 20 are considered in this Office 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/30/2026 has been entered.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6, 8-9, 11, 16-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (US 20200316846 A1) in view of Banquet (US 5,238,642).
Regarding claim 1, Nakajima teaches a process for modifying a plastic surface comprised on a [hollow] article (figs. 1-3; [0022, 0028-0031]: embossing apparatus 10 comprising die 20 and heating unit 40; [0070-0077]: embossing method), the process comprising:
mounting a die into a heating printing machine ([0022, 0028-0031]: embossing apparatus 10 comprising at least embossing die 20 and heating unit 40; here, it is implied that the embossing die 20 (i.e., “die” as recited) is mounted in the embossing apparatus 10 (i.e., “heating printing machine” as recited) for operation; [0072-0073]; figs. 1, 3);
heating the die ([0028, 0071, 0073]: the heating unit 40 heats the embossing die 20);
bringing the die in contact with the plastic surface of the [hollow] article to modify the plastic surface of the [hollow] article ([0072-0073], figs. 1-3; [0078-0080]: the first sheet 86 made of plastics, for example, a fibrous sheet material including woven fabrics, knitted fabrics, non-woven fabrics, or natural leathers, or a sheet material in which a synthetic resin is impregnated or laminated on the fibrous sheet material, examples of such a sheet material include synthetic leathers, artificial leathers and vinyl chloride leathers, and examples of the fibrous material made of various synthetic resin; [0081-0083]: the second and the third sheets made of plastics),
the die being made of a silicone rubber material ([0029]: an example of the resin forming the embossing die 20 includes silicone rubber) and
the die having a surface with a surface structure comprising embossed areas ([0030] and fig. 1: molding unit 24 including a convex portion 24 and a concave portion 26), a mean roughness depth value of the surface of the die ([0030]: a heigh difference ΔH between the height of a top portion of the convex portion 24 and the height of a bottom portion of the concave portion 26; here, it is implied that the height difference ΔH is substantially similar to a mean roughness value of the surface of the die) being [less than about 250 µm, as measured according to DIN EN ISO 4287].
Nakajima does not specifically teach the bracketed limitation(s) as presented above, i.e., (A) a mean roughness depth value of the surface of the die is of “less than about 250 µm,” and (B) the article is a hollow article.
Regarding the deficiency (A), Nakajima further teaches that the convex portion 24 and the concave portion 26 correspond to the concave portion 82 and the convex portion 83 of the concavo-convex pattern 81, respectively, and the shape of the convex portion 24, the shape of the concave portion 26, and the arrangement of the convex portion 24 and the concave portion 26 are appropriately determined in consideration of the aspect of the concavo-convex pattern 81 ([0030], figs. 1, 2).
Here, a mean roughness depth value of the surface of the die (i.e., corresponding to the height difference ΔH of Nakajima) is a result-effective variable (i.e., a variable which achieves a recognized results, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (MPEP 2144.05 (II)(B)). For example, a mean roughness depth value of the surface of the die is determined by a desired aspect of the concavo-convex pattern on the embossed surface of a product, thus, as a result, to make the roughness of the embossed product to have a desired texture/pattern/appearance. Moreover, through routine optimization and experiment, it would have been obvious to one or ordinary skill in the art that the mean roughness depth value of the surface of the die could be at least less than 250 µm, eventually to achieve the desired texture/pattern/appearance. Moreover, it would also have been obvious to one of ordinary skill in the art at the time of filing invention to use a known standard method (i.e., DIN EN ISO 4287 for a mean roughness depth value of a surface) to measure a quality parameter in order to yield known results of obtaining reliable and reproducible results and better control of a process.
Regarding the deficiency (B), Banquet teaches a process/apparatus for producing markings or lines engraved on a sheet or a tubular piece made of plastic material (abstract). Banquet teaches that bringing the die in contact with the plastic surface of the hollow article to modify the surface of the hollow article (fig. 1 and col. 3 line 59 – col. 4 line 6: the tube 6 is rotated about its axis 7a, thus being gripped between the rotating embossed roller 1 and a fixed counter-support 8 formed by an insert 9 embedded in a rigid support 10).
Both Nakajima and Banquet teaches a method/apparatus for patterning on a surface of an object made of plastic material using a rotatable embossing roller (Nakajima: abstract, fig. 1; Banquet: abstract, col. 3 line 59 – col. 4 line 6, fig. 1), and Banquet teaches that the method is applicable to a sheet or a tubular piece (Banquet: col. 1 lines 34-47). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing inventio to modify the base sheet material of Nakajima with a tubular piece and to allow the tubular piece to rotate along with the rotating embossing roller as taught by Banquet in order to obtain known results or a reasonable expectation of successful results of forming a desired pattern on a tubular-shaped product (Banquet: derived from abstract).
Regarding claim 2, modified Nakajima teaches the process according to claim 1, wherein the step of bringing the die in contact with the plastic surface of the hollow article to modify the surface is carried out by rolling the plastic surface on the surface structure of the die or pressing the surface structure of the die on the plastic surface of the hollow article, and the plastic surface of the hollow article is flat (Banquet: fig. 1 and col. 3 line 59 – col. 4 line 6: the tube 6 is rotated about its axis 7a, thus being gripped between the rotating embossed roller 1 and a fixed counter-support 8 formed by an insert 9 embedded in a rigid support 10; of note, here, during rolling, pressing is implied as the plastic surface of the tube 6 deforms; also, the plastic surface of the tube 6 is flat at least in a longitudinal direction (i.e., along an axis 7); Nakajima: [0073] and fig. 1: the base material 85 is in contact with the molding unit 22 on the front face and is pressed by the molding unit 22; [0127-0130] and fig. 3: upon reciprocation of the embossing die 20).
Regarding claim 3, modified Nakajima teaches the process according to claim 1, wherein the plastic surface comprised on the hollow article is a plastic film covering at least one part of an original surface of the hollow article (Nakajima: [0025-0027]: e.g., first sheet 86 of base material 85; [0078-0080]: the first sheet 86 made of a thermoplastic resin; Banquet: col. 1 lines 7-13: a thin tubular piece of plastic or multi-layered metal plastic material).
Regarding claims 4 and 16, modified Nakajima teaches the process according to claim 1, wherein a temperature to which the die is heated in the heating the die is in the range of about 100 to about 300 °C (claim 4) or in the range of about 100 to about 200 °C (claim 16) (Nakajima: [0068-0069]: the heating unit 40 heats the embossing die 20 to a predetermined value in the range of 60 to 260° C). Here, although modified Nakajima does not anticipate the recited range, the disclosed range of modified Nakajima overlaps with the recite range between 100 °C and 260 °C (claim 4) or between 100 °C and 200 °C (claim 16). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 I).
Regarding claim 5, modified Nakajima teaches the process according to claim 1, wherein the plastic surface comprised on the hollow article comprises a partially color-decorated surface or a metallized surface, and forming the partially color-decorated surface of the metalized surface takes place prior to the bringing the die in contact with the plastic surface of the hollow article to modify the plastic surface (Nakajima: [0080]: the first sheet 86 is a sheet material in which a synthetic resin is impregnated or laminated on the fibrous sheet material, and the fibrous sheet material may be colored with a known dye or pigment; Banquet: col. 1 lines 7-13: a thin tubular piece of plastic or multi-layered metal plastic material).
Regarding claim 6, modified Nakajima teaches the process according to claim 1, wherein the plastic surface comprised on the hollow article is made of a thermoplastic material (Nakajima: [0078-0080]: e.g., the first sheet 86 made of a thermoplastic resin; Banquet: col. 2 lines 30-36: polyolefins such as polyethylene).
Regarding claims 8, 18, and 20, modified Nakajima teaches the process according to claim 1, wherein the silicone rubber material of the die has a Hardness Shore A Durometer of about 40 to about 90 (claim 8), about 90 (claim 18), or about 60 to about 90 (claim 20) (Nakajima: [0029]: the embossing die 20 may be formed of a material having a hardness higher than that of an elastic unit 32 described later, and an example of the resin forming the embossing die 20 includes silicone rubber; [0034]: the elastic resin 32 is formed of a resin having a hardness of A60 or less; here, it is implied or at least obvious to one of ordinary skill in the art that the embossing die 20 including silicone rubber has a hardness A higher than 60). Thus, although the disclosed range of hardness A of modified Nakajima does not anticipate the recited range, the disclosed range overlaps with the recited range between about 60 to about 90 (claims 8 and 20) or about 90 (claim 18). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 I).
Regarding claim 9, modified Nakajima teaches the process according to claim 1, further including rolling the plastic surface of the hollow article on the surface structure of the die with a rotational driving system to keep the hollow article rolling across the die without skidding or slipping (Nakajima: [0031, 0072] and fig. 1: the embossing die 20 rotates in a direction corresponding to the conveying direction with the shaft 28 as a rotation axis by a driving force from a drive unit, and the base material 85 fed out from the supply device 90 is conveyed in the conveying direction and reaches the embossing apparatus 10; [0030] and figs. 1, 2: the convex portion 24 and the concave portion 26 correspond to the concave portion 82 and the convex portion 83 of the concavo-convex pattern 81, respectively, and the shape of the convex portion 24, the shape of the concave portion 26, and the arrangement of the convex portion 24 and the concave portion 26 are appropriately determined in consideration of the aspect of the concavo-convex pattern 81; here, it is implied that the rolling is performed without skidding or slipping because the concavo-convex portions of the die 20 correspond to the concavo-convex pattern 81; Banquet: fig. 1 and col. 3 line 59 – col. 4 line 6: the tube 6 is rotated about its axis 7a, thus being gripped between the rotating embossed roller 1 and a fixed counter-support 8 formed by an insert 9 embedded in a rigid support 10).
Regarding claim 11, modified Nakajima teaches the process according to claim 1, wherein the heating the die includes heating the die to a temperature within a melting range of the plastic surface of the hollow article (Nakajima: [0068-0069]: the heating unit 40 heats the embossing die 20 to a predetermined value in consideration of the type of the base material 83; assuming that the first sheet 86 is polyethylene terephthalate having the melting point of 260 °C, the heating unit 40 heats the embossing die 20 to a predetermined value in the range of 60 to 260 °C; here, at least about 260 °C is within a melting range of the first sheet 86).
Regarding claim 17, modified Nakajima teaches the process according to claim 1, wherein the plastic surface comprised on the hollow article is made of polyethylene, polypropylene, polyester, polycarbonate, polystyrene, polyacrylate, polyethylene-terephthalate or polyethylene terephthalate comprising post-consumer recycled polyethylene terephthalate (Nakajima: [0079]: an example of first sheet 86; [0081]: an example of second sheet 87; Banquet: col. 2 lines 30-36: polyolefins such as polyethylene).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (US 20200316846 A1) ) in view of Banquet (US 5,238,642) as applied to claim 1, and further in view of Ha (KR 101110134 B1).
Regarding claim 7, modified Nakajima teaches the process according to claim 1, but does not specifically teach that the heat printing machine is a pneumatic and servo-driven hybrid machine.
Ha teaches a pattern forming device for a sheet, capable of preventing inconsistency in a pattern formed on a sheet according to a thickness difference or curvature within the sheet by tilting a roller up and down according to a thickness difference in the sheet, thereby improving a transfer effect ([0001]). The forming device is a pneumatic and servo-driven hybrid machine ([0041-0045, 0047-0048] and fig. 5 ).
Both modified Nakajima and Ha teach a method/apparatus for stamp patterning (Nakajima: abstract; Ha: [0001]), and the embossing die 20 of modified Nakajima is given a driving force from a drive unit (Nakajima: [0031]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of fling invention to modify the drive unit of the embossing die of modified Nakajima to be driven by both pneumatic and servo-driven motors as taught by Ha in order to yield known results or a reasonable expectation of successful results of controlling the forming die in a precise and efficient manner while applying high force in a simple and robust manner, taking advantages of the respective motors, so as to form a patterned product in an improved quality (Ha: derived from [0001]).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (US 20200316846 A1) in view of Banquet (US 5,238,642) as applied to claim 1, and further in view of Friemuth (WO 9322149 A1).
Regarding claim 10, modified Nakajima teaches the process according to claim 1, but does not specifically teach that the heating the die includes heating the die to a temperature that is measured on the surface of the die with thermocouples.
Friemuth teaches a method/device for producing decorative articles (page 1 lines 13-20). Friemuth teaches that the heating the die includes heating the die to a temperature that is measured on the surface of the die with thermocouples (figs. 1-2 and page 5 lines 186-191: heating plate 5 and a male plate 6, thermocouples 8 embedded in recesses 7 of the male plate 6; heating can be controlled via a control circuit whose actual values are determined by the signals from the thermocouples 8).
Both modified Nakajima and Friemuth teach a method/apparatus for heat-involved stamp patterning (Nakajima: abstract, fig. 1; Friemuth: abstract, figs. 1, 3), Therefore, it would have been obvious to one of ordinary skill in the art at the time of fling invention to modify the heating of the embossing die 22 of modified Nakajima to further include thermocouples on the surface of the die as taught by Friemuth in order to obtain known results or a reasonable expectation of successful results of controlling heating of the die and stamping process by precisely monitoring/controlling the temperature of the surface of the die, to which a pattern forming material directly contacts, so as to form a patterned product in an improved quality.
Response to Arguments
Applicant’s arguments with respect to claim 1 (which have been newly amended by the applicants) has been considered but are moot or not persuasive because the new ground of rejection have been made due to the newly added features from the applicant’s latest amendment filed on 01/30/2026.
The Applicant argues (see pages 5-7 of Remarks) that Nakajima does not teach or suggest the limitation “bringing the die in contact with the plastic surface of the hollow article to modify the plastic surface of the hollow article” as (A) Nakajima does not teach a hollow article, (B) the base material is formed of three sheets 86, 87, and 88 that are each formed of a fabric, leather, or foam material, and (C) Instant Invention is directed to modify a plastics surface of a hollow article that has very fine structures.
The Examiner respectfully disagrees with this argument. See above, the 35 U.S.C. 103 rejection of claim 1.
Regarding the argument (A), the argument is moot. The basis of the applicant’s argument is based upon the changes regarding the shape of the product part as amended to a hollow article. After further search and reconsideration, the Banquet reference applied to the rejection. Thus, when Nakajima’s teaching is modified in view of Banquet, modified Nakajima does teach/suggest all the claimed limitations and the motivation to combine.
Regarding the argument (B), Nakajima discloses that the base material 85 comprising three sheets 86, 87, and 88 is made of plastic materials (Nakajima: [0078-0080]: the first sheet 86; [0081]: the second sheet 87; [0082]: the third sheet 88). Regardless of the form of each of the three sheets – i.e., whether each sheet is made of a fibrous sheet, a leather-like sheet, or a foam sheet having cushioning properties, each of the three sheets are made of plastics such as various synthetic resin materials as disclosed. Thus, modified Nakajima teaches the limitation “bringing the die in contact with the plastic surface of the hollow article to modify the plastic surface.”
Regarding the argument (C), in response to applicant's argument that the references fail to show certain features of the invention (i.e., a plastic surface of a hollow article that can have very fine structure, not having a combination of a hard roller and a soft roller), modified Nakajima teaches all the claimed limitations regarding the features (see above, the 35 U.S.C. 103 rejection of claim 1; Nakajima: [0029-0030]: an example of the resin forming the embossing die 20 includes silicone rubber, having a height difference between a convex portion 24 and a concave portion 26). Moreover, a plastic surface having a fibrous sheet, a fibrous-impregnated sheet, or a leather-like sheet as disclosed Nakajima (e.g., the first sheet 86 as shown in fig. 2) does not teach away to have a fine and smooth surface structure thereon and further to be embossed with a die having a larger or a smaller roughness pattern than an original surface structure of a plastic product.
The Applicant also argues (see page 7 of Remarks) that the combination of Nakajima in view of Benquet does not teach or suggest the limitation “bringing the die in contact with the plastic surface of the hollow article to modify the plastic surface of the hollow article” as (D) Benquet’s application structure is different from the one of Instant Invention due to (i) direct support from the back of the hollow article, (ii) the entire surface of the hollow article is deformed, and (iii) a combination of a hard roll and a soft roll in Benquet, and (iv) Benquet does not teach that the die is made of a silicone rubber material.
The Examiner respectfully disagrees with this argument. See above, the 35 U.S.C. 103 rejection of claim 1.
Regarding the argument (D) - (i) and (ii), although the differences of the application methods between Benquet and Instant Invention are addressed by the Applicant, modified Nakajima teaches all the claimed limitations, and the differences do not teach away any claimed limitations that modified Nakajima does disclose or suggest.
Regarding the argument (D) - (iii) and (iv), in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Thereby, after reconsideration, claim 1 remains rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kieras (EP 0835738 A1) teaches a method of making a decorative feature formed in a side wall of a thermoplastic tube (abstract; figs. 1-3).
Boesch (EP 0676251 A2) teaches a method for decorating aluminum tubes ([0001], figs. 1-4).
Hikita (US 20040188874 A1) teaches a method/apparatus for producing an antiglare and antireflection film with convexes and concaves in micro sizes by emboss process ([0009, 0030], figs. 1, 3, 4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to INJA SONG whose telephone number is (571)270-1605. The examiner can normally be reached Mon. - Fri. 8 AM - 5 PM.
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/INJA SONG/Examiner, Art Unit 1744