DETAILED ACTION
Response to Amendment
Applicant's amendment filed 2/18/2026 has been entered. Currently, claims 1-20 are pending and claims 3-20 are new.
The amendment filed 2/18/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
At [0021], deleting the figure numbers in this paragraph represents new matter because it would then open up applicants to attempting to state the third top bead, i.e. the top bead lying above the bead 24 would be the least height bead. Opening up the description to make this a possibility represents new matter that is not supported by the original disclosure. The least height bead is in the position of 28 and the figures and the specification should be consistent with each other to show this.
At [0031], the changed sentence that “Alternatively, the next bead 114’’’ may be of substantially equal height and width to the second bead 114’’ ” are not supported in the specification as originally filed. The Figure does not show this, and therefore this concept cannot be supported from a figure that shows completely the opposite concept of unequal height beads.
At [0036], the second to last sentence added by amendment is not supported in the specification as originally filed. As an example, the amendment to say that the top layer 122 “is deposited in the same manner as the bottom layer 112, except that it is in the reverse” does not have support because the bottom layer has 4 beads and the top layer has 3 beads, so this cannot be true, and is therefore not supported.
Applicant is required to cancel the new matter in the reply to this Office Action.
Election/Restrictions
Newly submitted claims 17-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Inventions of the Group I, claims 1-16, and Group II, claims 17-20 are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product could be made by forming each layer on a stepped template and then removing the layers from the template and laminated the bead layers together.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 17-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Drawings
The drawing of Figure 4 was received on 2/18/2026. This drawing is acceptable.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
28 in Figure 2
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1 and 12, the Examiner does not find support for the limitations of “substantially equal height and width” for the beads of the second layer, the third layer and the one or more intermediate layers in the specification as originally filed. The closest support for these limitations is at [0020], but this says that the beads are “of equal height and width” and not substantially equal as claimed.
In claims 1 and 12, the Examiner does not find support for removing the limitations that the third layer beads are “equal…oval in shape to that of the second layer” or broadening the one or more intermediate layer beads to not be oval in the specification as originally filed. The closest support for these limitations is at [0007], which states that the intermediate layers comprise oval beads and given the language at lines 7-8 of original claim 1 meant that the claim required both the second and third layers to have oval beads.
In claim 4, the Examiner does not find support for the limitations of “substantially oval in shape” for the beads of the second layer and the third layer in the specification as originally filed. The closest support for these limitations is at [0007], but this says that the beads are “oval” and not substantially oval as claimed.
In claim 5, the Examiner does not find support for the limitations of “substantially equal width” for the beads of the first layer in the specification as originally filed. The closest support for these limitations is at [0020], but this says that the beads are “of equal width” and not substantially equal as claimed. Please note that the substantially in this sentence is modifying the word oval and not the word equal.
In claim 8, the Examiner does not find support for the limitations of “a smallest height stepped height bead in the fourth layer correlates to a largest height stepped height bead in the first layer” in the specification as originally filed. The closest support for these limitations is Figure 2, but applicants are attempting to delete part number 28 from [0021] of the specification (see new matter objection above) and this would then broaden Figure 2 such that it is unclear where the least height bead is located. Figure 2 should be corrected along with replacing part number 28 in the specification.
In claims 10 and 15, the Examiner does not find support for the limitations of “substantially planar top layer” in the specification as originally filed. The closest support for these limitations is in Figures 2 and 4, but this would show a planar layer and not a “substantially” planar layer as claimed.
In claim 11 and 16, the Examiner does not find support for the limitations that the largest bead of the fourth layer and the smallest bead in the first layer are correlated “by being substantially aligned” in the specification as originally filed. The closest support for these limitations is in Figures 2, 4 and [0021], but this does not have the limitations claimed.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1 on line 4, the phrase each bead “being of a different bead height than that of beads adjacent thereto” renders the claim indefinite because the phrase “beads adjacent thereto” does not make sense because the first and last bead in the X-direction cannot have plural “beads adjacent thereto”. The rejection can be overcome by deleting the phrase to “than that of beads adjacent thereto” which is how the claim will be interpreted.
In claim 1 on lines 6 and 9 and claim 12 on line 5, the limitation of “substantially equal height and width” is a term of degree that renders the claim indefinite. It is unclear how different from equal the heights and widths may be and still be considered substantially equal. This rejection can be overcome by deleting the word “substantially” which is how the claims will be interpreted.
In claim 4, the limitation of “substantially oval in shape” is a term of degree that renders the claim indefinite. It is unclear how oval the shape may be and still be considered substantially oval. This rejection can be overcome by deleting the word “substantially” which is how the claim will be interpreted.
In claim 5, the limitation “of substantially equal width” is a term of degree that renders the claim indefinite. It is unclear how different from equal the widths may be and still be considered substantially equal. This rejection can be overcome by deleting the word “substantially” which is how the claim will be interpreted.
In claims 10 and 15, the limitation “substantially planar layer” is a term of degree that renders the claim indefinite. It is unclear how different from planar the layer may be and still be considered substantially planar. This rejection can be overcome by deleting the word “substantially” which is how the claim will be interpreted.
In claims 11 and 16, the limitation “by being substantially aligned” is a term of degree that renders the claim indefinite. It is unclear how different from aligned the beads may be and still be considered substantially aligned. Also, it is unclear in what way they are aligned as the definition of aligned could be to bring into a line to be parallel or straight or to bring parts into a proper or desirable coordination, wherein none of this is supported by the specification as originally filed (see above).
Response to Arguments
Applicant’s arguments, see Remarks, filed 2/18/2026, with respect to the Benefit issues, the objections to the drawings in sections 3 and 4 of the previous Office action, the specification objections, the claim objections and some of the previous 112(b) rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 2/18/2026 have been fully considered but they are not persuasive.
Applicants argue that the amended and new claims have overcome all of the rejections and are in condition for allowance.
The Examiner respectfully disagrees and notes that applicants’ amendment have raised new issues that have necessitated the 112(a) and 112(b) rejections above. Also, one of the 112(b) rejections of claim 1 have not been overcome, i.e. “different bead height than that of beads adjacent thereto”, and has been repeated in this Office action. Applicants can overcome this rejection by using the suggestion in the rejection of claim 1 above or by using the similar language in claim 12, i.e. “than that of adjacent stepped height beads”.
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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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