CTFR 18/341,010 CTFR 85054 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 § 103 07-06 AIA 15-10-15 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 (i.e., changing from AIA to pre-AIA) 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim (s) 1, 4-8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nedelec et al. (CH713871) . Regarding claims 1 and 8, Nedelec teaches that it is known to form openings (21, 22 and 23 in Fig. 5) which each may read upon recessed portions via a femtosecond laser wherein according to Nedelec each removed portions can be done “directly one after the other” wherein it is stated that it some embodiments a portion is removed by a laser and then settings are changed and a second portion in a differing layer is removed. Accordingly, as shown in Fig.5, removing the portion corresponding to layer 13 would read upon the formation of a first recessed portion and the removal of the layer corresponding to 12e would read upon forming a “groove” in the recessed portion although removing 12c after 12d is a clearer example of groove formation. Further the recessed portion of Nedelec as described above is show to be “substantially flat” (Fig. 5). Nedelec fails to teach necessarily wherein the second groove crosses the first forming protruding portion in between the grooves. However, changing the pattern to a crossing pattern would constitute both a change in shape of the prior art laser pattern and a mere aesthetic design change. The Court has long held that in the absence of a new and unexpected result arising from a change in a prior art shape for a similar feature is generally considered obvious in view of the prior art feature shape. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further the court has 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). Although Fig. 5 is a cross sectional view, a groove such as that penetrating into 12a provided in both an x and y direction would read upon the claim limitations. It is further noted that that Nedelec shows that the removal of layers is done for decorative aesthetic reasons (abstract) wherein the Court has clearly 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). Regarding claim 4, the grooves of Nedelec, regardless of direction and orientation, are formed in the bottom of the recessed portion of Nedelec. Regarding claims 5-6, the teachings of Nedelec are as shown above. Nedelec fails to teach wherein the grooves and recessed portion have the depth claimed. However, the change of the current application depth compared to that of Nedelec would be considered a mere aesthetic design change, a change of the prior art recess and groove shape to deeper rectangles and a change in relative dimensions of the prior art device grooves. The Court has long held that in the absence of a new and unexpected result arising from a change in a prior art shape for a similar feature is generally considered obvious in view of the prior art feature shape. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further the court has 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). Further the Court has long held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Regarding claim 7, Nedelec further teaches wherein the filling material (40) can be a lacquer, which is implicitly clear without a statement otherwise indicating the presence of a coloring agent. Further changing the color of the lacquer would be considered a mere aesthetic design change of the prior art lacquer. Further the court has 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). Regarding claims 12, it is noted that all claim limitations present are drawn to changes in shape of the prior art provided groove shape wherein the Court has long held that in the absence of a new and unexpected result arising from a change in a prior art shape for a similar feature is generally considered obvious in view of the prior art feature shape. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Further wherein the shape is provided as a matter of aesthetics the Court has further long 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). Response to Arguments The applicant argues that the Nedelec fails to teach wherein the bottom surface has a plurality of protruding portions since the bottom is configured with top flat surfaces of the underlying layers. However, the applicant fails to acknowledge the wording of the claim. According to claim 1, the “bottom surface” is the bottom surface of the recessed portion, the “recessed portion” being formed by the first laser irradiation. Further in claim 1, “the bottom surface is defined by the plurality of top portions and a plane on which the plurality of top portions exist, is substantially flat”. Accordingly the prior art reads upon the claims as shown below: PNG media_image1.png 390 626 media_image1.png Greyscale wherein the bottom surface is defined by a top portion of the protrusion and is planar. Further it is noted that as above in the rejection, the shape of the protrusion can vary if the pattern is provided in a three dimensional way. There is not requirement that the top portion be adjacent to the wall between 22 and 23 and could be located centrally as a matter of aesthetic design choice. Conclusion 07-40 AIA 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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ANDREW J BOWMAN/Examiner, Art Unit 1717 /ROBERT S WALTERS JR/Primary Examiner, Art Unit 1717 Application/Control Number: 18/341,010 Page 2 Art Unit: 1717 Application/Control Number: 18/341,010 Page 3 Art Unit: 1717 Application/Control Number: 18/341,010 Page 4 Art Unit: 1717 Application/Control Number: 18/341,010 Page 5 Art Unit: 1717 Application/Control Number: 18/341,010 Page 6 Art Unit: 1717
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