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 .
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and the fee set for0th in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/31/2026 has been entered.
Response to Amendments
Applicant filed a response on 07/31/2026.
Response to Arguments
Applicant’s arguments were fully considered but were not found persuasive.
Applicant argues:
“In sharp contrast to the Examiner's assertion, the claimed system is a system, not only a die. The claimed system positively recites "at least one sheet containing desired artwork in two dimensions, wherein the at least one sheet comprises at least one polyvinyl chloride sheet" and "at least one bonding layer between the at least one sheet and the at least one die." Notably, the system positively claims "desired artwork in two dimensions" on the "at least one sheet" and "a three-dimensional impression of the (same) desired artwork with simulated embroidery threads" on the claimed "at least one die."
The Examiner's reliance upon MPEP § 2115 to ignore positively recited elements of the claimed system is misplaced. MPEP § 2115 does not stand for the proposition that everything recited in a claim that is not a structural component of one of the elements of the claim can be ignored by simply claiming that the elements are an article worked upon by a structure. "Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements." See MPEP § 2115. In fact, the PTAB has limited application of MPEP §2115 in PTAB's Decision on Appeal in Application No. 14/071,774.”
Examiner respectfully disagrees. No claim limitations have been ignored. Whether a claim recites material worked upon requires a fact-based case by case analysis that has been thoroughly performed in determining the patentable weight of each limitation.
In system claims 1, 24, and 28, “at least one sheet containing desired artwork in two dimensions” and “at least one bonding layer between the at least one sheet and the at least one die, wherein the at least one bonding layer is configured to enable the at least one sheet to be attached to a base item” are not structural elements of the system.
The specification discloses the bonding layer as an element of the produced simulated embroidery emblem ([0040] “[t]he bonding layers 24 of the simulated embroidery emblems 18 of the embroidery simulation system 10 may be formed from one or more polyurethane bonding films”). The specification discloses the sheet as an element of the produced simulated embroidery emblem ([0048] “[d]uring use, once the sheet 22 with desired artwork 12 and bonding layer 24 are pressed together and the excessive material has been removed, the standalone artwork member is ready to be attached to a desired base item 32.”)
The specification discloses using a die and press to process a sheet and bonding layer to create the product ([0046] “pressing the sheet 22 containing desired artwork 12 on a die 30 and the bonding layer 24 using a press to create finished desired artwork 12 in three dimensions with simulated embroidery threads together with a bonding layer 24 enabling the finished desired artwork 12 to be attached to the base item 32”). Accordingly, the specification discloses the sheet and bonding layer are materials worked upon by the apparatus in order to create the simulated emblem.
Regarding Applicant’s arguments and alleged similarities with the Appeal in Application No. 14/071,774, Examiner believes the instant application is dissimilar to the appealed application.
In Application 14/071,774, “the powdered materials are necessary parameters of the fluidized bed, which itself is a structural element of the apparatus” (Decision on Appeal, Page 9), and “the apparatus claim positively recites a structural element, the fluidized bed of powdered material, and there is sufficient disclosure to support that this fluidized bed and the particular powdered materials therein are structural limitations of the apparatus, rather than merely material worked upon by the apparatus” (Decision on Appeal, Page 9). In the instant claims, the claimed sheet and bonding layer are not necessary parameters of a structural element of the apparatus or structural elements of the apparatus and there lacks sufficient disclosure to support that the sheet and bonding layer are structural limitations of the apparatus, rather than merely material worked upon by the apparatus.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoon (KR102283611, machine translation provided).
Regarding claim 1, Yoon teaches an embroidery simulation system comprising
a die (Figure 3, 6, 7, and 9 and [0052]-[0056], [0060]),
wherein the at least one die includes a three-dimensional impression of the desired artwork with simulated embroidery threads (Figure 6, item 142 and 144 and [0052]-[0054], [0057]-[0058]).
Yoon does not teach:
at least one sheet containing desired artwork in two dimensions, wherein the at least one sheet comprises at least one polyvinyl chloride sheet and
at least one bonding layer between the at least one sheet and the at least one die,
wherein the at least one bonding layer is configured to enable the at least one sheet to be attached to a base item.
However, the cited prior art teaches all of the positively recited structure of the claimed apparatus. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function (see MPEP §§ 2114 and 2173.05(g)). Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (see MPEP § 2115).
Given that the structure of Yoon is identical to the claimed embroidery simulation system, the system of Yoon would be capable of performing the same functions and operating on the same materials worked upon.
Regarding claims 5-7, limitations related to the at least one sheet and the at least one bonding layer are directed to material worked upon by the apparatus.
However, inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (see MPEP § 2115). The cited prior art teaches all of the positively recited structure of the claimed apparatus, and apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function (see MPEP §§ 2114 and 2173.05(g)).
Given that the system of Yoon is identical to the claimed embroidery simulation system, the system of Yoon would be capable of performing the same functions and operating on the same materials, including the sheet with at least one PTFE coating, the bonding layer comprising at least one polyurethane bonding film, and the bonding layer comprising at least one pressure sensitive adhesive.
Claim(s) 24-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Templer (US 11,206,887).
Regarding claim 24, Templer teaches an embroidery simulation system, comprising:
at least one die (Figure 4 and 6, item 50),
wherein the at least one die includes a three-dimensional impression of the desired artwork with simulated embroidery (Figure 4, and 6 items 54 and 56 and Col 1, ln 26-42; Col 5, ln 36-66; Col 6, ln 67- Col 7, ln 58; and Col 8, ln 34-64).
Simulated embroidery has been interpreted to require decorative three-dimensional design(s), an interpretation consistent with the disclosure (see [0037], impressions 38). Simulated embroidery does not necessarily require simulated embroidery threads (see [0037]).
Templer does not teach:
at least one sheet containing desired artwork in two dimensions, wherein the at least one sheet comprises at least one thermoplastic polyurethane sheet;
at least one bonding layer between the at least one sheet and the at least one die,
wherein the at least one bonding layer is configured to enable the at least one sheet to be attached to a base item.
However, the cited prior art teaches all of the positively recited structure of the claimed apparatus. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function (see MPEP §§ 2114 and 2173.05(g)). Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (see MPEP § 2115).
Given that the structure of Templer is identical to the claimed embroidery simulation system, the system of Templer would be capable of performing the same functions and operating on the same materials worked upon.
Regarding claims 25-27, limitations related to the at least one sheet and the at least one bonding layer are directed to material worked upon by the apparatus.
However, the cited prior art teaches all of the positively recited structure of the claimed apparatus. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function (see MPEP §§ 2114 and 2173.05(g)). Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (see MPEP § 2115).
Templer teaches the die is used to perform embossing on a fabric panel (Col 5, ln 10-20 and Col 7, ln 59- Col 8, ln 9). Accordingly, the die would be capable of being use on a sheet containing desired artwork in two dimensions and a bonding layer, further comprising a PTFE coating on the sheet, a polyurethane bonding film, or a PSA bonding layer.
Regarding claim 28, Templer teaches an embroidery simulation system, comprising:
at least one die (Figure 4 and 6, item 50),
wherein the at least one die includes a three-dimensional impression of the desired artwork with simulated embroidery (Figure 4, and 6 items 54 and 56 and Col 1, ln 26-42; Col 5, ln 36-66; Col 6, ln 67- Col 7, ln 58; and Col 8, ln 34-64).
Simulated embroidery has been interpreted to require decorative three-dimensional design(s), consistent with the disclosure (see [0037], impressions 38). Simulated embroidery does not necessarily require simulated embroidery threads (see [0037], impressions 38).
Templer does not teach:
at least one sheet containing desired artwork in two dimensions, wherein the at least one sheet comprises at least one silicone sheet;
at least one bonding layer between the at least one sheet and the at least one die,
wherein the at least one bonding layer is configured to enable the at least one sheet to be attached to a base item; and
However, the cited prior art teaches all of the positively recited structure of the claimed apparatus. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function (see MPEP §§ 2114 and 2173.05(g)). Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (see MPEP § 2115).
Given that the structure of Templer is identical to the claimed embroidery simulation system, the system of Templer would be capable of performing the same functions and operating on the same materials worked upon.
Regarding claims 29-31, limitations related to the at least one sheet and the at least one bonding layer are directed to material worked upon by the apparatus.
However, the cited prior art teaches all of the positively recited structure of the claimed apparatus. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function (see MPEP §§ 2114 and 2173.05(g)). Inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (see MPEP § 2115).
Templer teaches the die is used to perform embossing on a fabric panel (Col 5, ln 10-20 and Col 7, ln 59- Col 8, ln 9). Accordingly, the die would be capable of being used on a sheet containing desired artwork in two dimensions and a bonding layer, further comprising a PTFE coating on the sheet, a polyurethane bonding film, or a PSA bonding layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANA C PAGE whose telephone number is (571)272-1578. The examiner can normally be reached M-F, 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at 5712721095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANA C PAGE/Examiner, Art Unit 1745
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