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 .
Examiner’s Note
The Examiner acknowledges the amendments of claim 1 – 2, 5, 7, 11 – 13, 17, 19, the addition of new claims 21 – 25, and the cancellation of claims 3 – 4, 8, 14, 16.
Claim Objections
Claim 22 is objected to because of the following informalities:
With regard to claim 22, the phrase “comprises includes” is duplicative.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis et al. (US 2017/0151733 A1).
With regard to claim 1, Lewis et al. teach a hydrogel composite structure (i.e., “a drawing substrate”), wherein the drawing substrate comprises a first layer (116) (i.e., “a first structure”) attached via an adhesive film to a substrate (114), such as glass (i.e., “a second structure”), wherein the first structure is composed of hydrogel composite filaments (i.e., “hygromorphic”) (paragraphs [0058] & [0078] & Figs. 1 – 2B shown below).
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Lewis et al. teach a complex flower morphology formed by hydrating a 3D printed structure wherein the first structure comprises a first section and a second section, wherein the first section is the center of the flower attached to the second structure and the second section comprises petals of the flower (see Figs. 10A/10B). Anisotropic swelling behavior can be triggered by exposure to water (paragraph [0028]).
Lewis et al. do not explicitly disclose the center of the flower is attached to the substrate when then the petals are free (from the substrate).
However, Lewis et al. disclose after curing the printed structure is coated in a thin film of DI water to remove from the substrate (paragraph [0078]). Hydrating the filaments may entail exposing the layers to water or an aqueous solution by dipping, immersion, spraying, or another deposition method. Alternatively, hydrating may also entail exposing the filaments to a humid environment (paragraph [0034]). Furthermore, the transformation can be cycled back and forth by changing the water temperature, wherein heating leads to contraction and cooling leads to swelling (paragraph [0046]). The filaments contact the flexible substrate at one or more contact regions (paragraphs [0031] & [0057]). In other words, the regions (sections) that are hydrated with cool water are freed and regions that are not hydrated with water remains attached to the substrate.
Therefore, it would have been obvious to one of ordinary skill in the art to form the 3D printed flower taught by Lewis et al. wherein one or more sections of the flower are exposed to water (first section, second section, or the entire flower) to be freed from the substrate based on the desired aesthetic design choice of the 3D flower decoration. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). See MPEP 2144.04.I.
With regard to claim 15, Lewis et al. teach the substrate (i.e., “the second structure”) comprises material such as glass or another ceramic, PDMS, acrylic, polyurethane, polystyrene or another polymer (i.e. “is non-hygromorphic”) (paragraph [0058]).
Allowable Subject Matter
Claims 2, 5 – 7, 9 – 13, 17 – 20, & 21 – 25 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claim 21, Lewis et al. teach the adhesive is a Bytac® Teflon® adhesive film, which comprises a Teflon® fluorinated ethylene propylene (FEP_ bonded to a support backing with an acrylic pressure-sensitive adhesive. There is no suggestion in the art that the acrylic pressure-sensitive adhesive layer of the Bytac® Teflon® film is water-resistant.
With regard to claims 2 & 22, Lewis et al. fail to teach the first structure comprises a first layer and a second layer.
Claims 5 – 7, 9 – 13, & 17 are dependent on claim 2. Claims 23 – 25 are dependent on claim 22. Therefore, these claims are also allowable.
With regard to claim 18, Lewis fails to teach the first structure comprises a mechanochromic material.
Claim 19 is dependent on claim 18, and therefore also allowable.
With regard to claim 20, Lewis et al. fail to teach a system comprising the drawings substrate of claim 1, wherein the system further comprises a writing instrument configured to dispense a liquid medium comprising water.
Response to Arguments
Applicant argues, “Horikiri fails to disclose each and every element of amended claim 1… Horikiri is entirely silent as to a drawing substrate comprising a first structure and a second structure, the first structure including a first section and a second section, and ‘the first section being attached to the second structure by an adhesive, and the second section comprising a free end,’ as recited in amended claim 1” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: The Examiner acknowledges the subject matter of cancelled claim 16 has been incorporated into claim 1. Claim 16 was not previously rejected over Horikiri. In light of Applicant’s amendment of claim 1, the rejection of claims 1, 2, 10, and 15 under 35 U.S.C. §102 over Horikiri has been withdrawn.
Applicant argues, “Lewis fails to disclose each and every element of amended claim 1… Lewis fails to disclose a drawing substrate comprising a first structure and a second structure, the first structure including a first section and a second section, and ‘the first section being attached to the second structure by an adhesive, and the second section comprising a free end,’ as recited in amended claim 1” (Remarks, Pgs. 8 – 9).
Applicant argues, “Regarding claim 16…whereas in Lewis, the entire 3D structure is removed from an underlying adhesive-coated substrate (see, e.g., paragraph [0078] of Lewis), and thus in Lewis there is no ‘free end’ or attachment point between two structures, as amended claim 1 recites” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: With regard to claim 1, the Examiner acknowledges the subject matter of cancelled claim 16 has been incorporated into claim 1. Claim 16 was rejected over Lewis under 35 U.S.C. §103, but was not previously rejected over Lewis under 35 U.S.C. §102. In light of Applicant’s amendment of claim 1, the rejection of claims 1, 2, 10, and 15 under 35 U.S.C. §102 over Lewis has been withdrawn.
However, with regard to claim 16, Applicant's arguments have been fully considered but they are not persuasive. Applicant asserts the teachings of Lewis is limited to the entire 3D structure removed from the surface. However, this is only one of multiple embodiments taught by Lewis. Lewis et al. teach the filaments contact the flexible substrate at one or more contact regions (paragraphs [0031] & [0057]). This suggests that there are regions that are not in contact with the flexible substrate (i.e., “free”). In other words, Lewis teaches the first section, the second section, or the entire flower may be free from the substrate.
MPEP 2123 [R-6]. II. states:
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994)
Applicant argues, “Further, the recitations of amended claim 1 pertaining to the adhesive and structural components of the drawing substrate do not amount to aesthetic design choices (in contrast to the statements at pages 5 and 6 of the Office Action), but rather relate to the technical effect of the components and overall structure of the drawing substrate. Still further the ‘flower morphology’ described in Lewis relates to the properties of the hydrogel material upon swelling and are not relevant to the recitations Applicant’s claims” (Remarks, Pg. 9).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, the choice of which sections of the flower contact the surface and which do not is simply a matter of design choice.
Second, hydrogel refers to a gel material that absorbs water, resulting in expansion of said gel material. This meets the recitation of Applicant’s claimed “first structure is hygromorphic,” wherein the definition of hygromorphic is a material that changes shape, size, or form in response to environmental humidity/moisture. Therefore, the swelling of materials when exposed to water/humidity are relevant to Applicant’s claim recitations.
Applicant argues, “Applicant argues, “Song fails to disclose each and every element of amended claim 1… Song fails to disclose a drawing substrate comprising a first structure and a second structure, the first structure including a first section and a second section, and ‘the first section being attached to the second structure by an adhesive, and the second section comprising a free end,’ as recited in amended claim 1” (Remarks, Pg. 10).
EXAMINER’S RESPONSE: Song et al. teach “As the occurrence of peeling depends on the adhesion force between the film and the substrate, we developed two types of inks having different adhesion forces by controlling the ink compositions. In this way, programmable design of 2D-to-3D transformation is available by selectively determining the floating and anchoring parts of a drawing” (pg. 1, right column, last paragraph). One of ordinary skill in the art would not have been motivated to use an adhesive to join the film (i.e., “first section”) to the substrate (i.e., “second structure”). In light of Applicant’s amendment of claim 1 requiring the first section being attached to the second structure by an adhesive. Therefore, the rejection of claim 1 under 35 U.S.C. §102 over Song et al. has been withdrawn. Furthermore, the rejection of claims 18 and 19 under 35 U.S.C. §103 over Song have been withdrawn.
Applicant argues, “Wakamatsu fails to disclose each and every element of amended claim 1… Wakamatsu fails to disclose a drawing substrate comprising a first structure and a second structure, the first structure including a first section and a second section, and ‘the first section being attached to the second structure by an adhesive, and the second section comprising a free end,’ as recited in amended claim 1” (Remarks, Pg. 11).
EXAMINER’S RESPONSE: In light of Applicant’s amendment of claim 1, Applicant’s argument is persuasive. The rejection of claims 1 – 4, 10 – 15, and 20 under 35 U.S.C. §102 over Wakamastsu et al. has been withdrawn. Furthermore, the rejection of claims 5 – 9 & 17 – 19 under 35 U.S.C. §103 over Wakamatsu et al. have been withdrawn.
Applicant argues, “New claims 21 – 25 depend from independent claim 1, and thus are allowable for at least the reasons provided above with respect to independent claim 1” (Remarks, Pg. 16).
EXAMINER’S RESPONSE: New claims 21 – 25 are discussed above.
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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781