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 .
Response to Amendments
Applicant filed a response; amended claim 1; canceled claims 2-4 and 8-23; and added new claims 24-31 on 12/03/2025.
The amendments overcome the 112(b) rejections previously presented.
Response to Arguments
Arguments are primarily drawn to the amended claims. The rejection below addresses the amended claims.
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 and Col 7, ln ),
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
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 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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/HANA C PAGE/Examiner, Art Unit 1745
/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
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