1.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) 1-5, 9, 10, 18, 19 and 21-23 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Tanikita et al 5,833,889 essentially for reasons of record noting the following.
Applicant has amended the independent claims 1 and 18 to recite the limitations of now cancelled claims 11 or 12 in the alternative, so that if either limitation is met, the claims would stand as anticipated. It is noted that original claim 11 was rejected under 102 and hence the anticipation rejection has been maintained. It is respectfully submitted that original claim 11—which constitutes the only amended limitation that needs to be met—is in fact taught in the applied reference. Clearly, the insert 1’ of Tanikita et al constitutes a base or substrate of material from which the insert is formed with the optical relief formed directly on the surface of the base or substrate material of the insert. Note further that lines 3-4 of instant claim 1 (and the corresponding recitation at lines 4-5 of claim 18) sets forth “the relief structure forming or contributing to the optical function of the component to be moulded”. While it is true that Tanikita et al forms a reflective surface over the relief structure, it is also quite clear that the relief structure contributes to the optical function of the molded component. Hence, the claims must stand as anticipated. Even if the material injection molded against the insert does not have to be high grade material, there can be no question that the molding conditions—ie, the temperature and the pressure-- employed to mold such inexpensive material would have to be controlled in the manner set forth in the instant claims to ensure that the plastic insert itself is not damaged by such material during the injection. Remember, the insert 1” of Tanikita et al is a thin plastic film with a thickness of .3 mm as disclosed at column 3, lines 20-30 of the reference. Such a plastic film would clearly be susceptible to a subsequent injection molding in which the temperature at the relief structure is greater than the lowest of the glass transition temperature, the melting temperature and the onset of thermal decomposition temperature as recited in the claims. It is known that the glass transition temperature is the lowest of the three claimed temperatures and this is the temperature at which the insert would be deformable. The other two temperatures would in fact not just damage the relief structure, but eliminate it. Indeed, Tanikita et al contains no disclosure that insert 1’ would be of a material that is not affected by the injection and hence it is submitted that the instant claims remain properly rejected.
2.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.
Claim(s) 1-10, 13, 16-19 and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanikita et al 5,833,889, either alone, or further in view of Guest 2002/0114080 (see paragraphs 0064-0065).
Tanikita et al is applied for reasons of record and discloses the basic claimed method, apparatus and component as set forth in paragraph 3 of the previous action lacking an explicit teaching of the recitations as noted therein. While it is submitted that such recitations are either inherent in or obvious over Tanikita et al, Guest has hereby been additionally applied to provide evidence of the Judicial Notice statement in the first rejection and provide a showing that the limitations are in fact well known in the art. See in particular paragraphs 0064 and 0065 of Guest, disclosing that a film insert (20) with ridges (22) similar to the relief structure of Tanikita et al should have such relief structure protected during an injection molding by ensuring that the temperature of the ridges does not exceed a deformation temperature. It is submitted that such a deformation temperature would in fact be the glass transition temperature since a plastic starts to deform –under pressure—at temperatures above the glass transition temperature. It is respectfully submitted that if the instant parameter selection or control is not obvious over Tanikita et al alone, then it certainly is obvious in the combination as applied. As already noted, the exact dimensions of the relief structure as recited in newly added claims 24 and 25 would have been obvious over the primary reference dependent on the exact optical effect desired for the final product.
3.Applicant's arguments filed December 23, 2025 have been fully considered but they are not persuasive. Applicant submits that the independent claims 1 and 18 are allowable since the “surface roughness” of the resin film of Tanikita et al has nothing to do with the optical function of the component. This is submitted to be erroneous. The “surface roughness” is in fact a relief structure that certainly contributes to the optical function of the final component. Comments at the top of page 13 of the amendment are not well taken. There is no disclosure in Tanikita et al et al that the reference is “not concerned at all about the thermal behavior of the shaped resin film 1’” as suggested by applicant and it is not clear how applicant has come to this conclusion. The instant invention is not opposite to what is taught in Tanikita et al. The only difference between the two is that Tanikita et al coats the relief structure with a reflective coating and the explicit teaching of employing injection parameters so that the film is not damaged during the injection. One of ordinary skill in this art would understand that the selection of the material for the relief structure and the selection of injection parameters –ie, temperature—so that the relief structure is not damaged during the subsequent injection molding would have been either—(1) anticipated or (2) obvious to ensure that the structure is not damaged. If such is not inherent in, or obvious over, Tanikita et al alone, then it is submitted that it is obvious in the combination of Tanikita et al and Guest. It appears that applicant has misinterpreted the portion of Tanikita et al at column 4, lines 21-27. Indeed, Tanikita et al is merely suggesting that the resin used for the injection can be an inexpensive one—not that the injection itself would be performed under conditions that would damage the insert film nor that the insert film is incapable of being damaged by injection of the inexpensive resin, if indeed such is used. Again, since Guest has been applied to back up a Judicial Notice statement concerning what was submitted to be conventional in the art, the rejection is being made final. It is respectfully submitted that the instant claims constitute no ore than what is well known in the art of optical insert molding and as such would not be patentable for reasons already noted.
4.THIS ACTION IS MADE FINAL. 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.
5.Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATHIEU D VARGOT whose telephone number is (571)272-1211. The examiner can normally be reached on Mon-Fri from 9 to 6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A Johnson, can be reached at telephone number 571 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742