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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 17, 2025 has been entered.
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 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eguchi (JP 2005-22272 A).
With respect to claim 8, Eguchi teaches a foil stamping die 11, 12 that can be pressed against a printing object 4 on which foil 3 is placed, to transfer the foil to the printing object 4 while applying an uneven pattern to a surface of the printing object 4,
the foil stamping die 11, 12 comprising:
a pattern-shape portion 11a which is a portion corresponding to the uneven pattern, and
an edge portion 11b, 11c entirely surrounding the pattern shape portion, the edge portion having a constant thickness (see Figs. 3-4),
wherein an end (i.e., bottom surface) of the edge portion, which is an end in a direction orthogonal to both the longitudinal direction and the width direction is a flat surface, as shown in Figures 3-5.
With respect to the language in the last four lines of claim 8, it is noted that this language is a functional recitation of a desired mode of operation and fails to patentably distinguish from the foil stamping die of Eguchi. Note that the MPEP 2114 states that “A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.” In this case, since Eguchi teaches all of the structure of the foil stamping die as recited, it meets the claim language.
Claim 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yogo et al. (JP 2008-110558 A).
With respect to claim 8, Yogo et al. teaches a foil stamping die 1, 10 that can be pressed against a printing object 3 on which foil 40 is placed, to transfer the foil 40 to the printing object 3 while applying an uneven pattern 124 to a surface of the printing object 3,
the foil stamping die 1, 10 (Figs. 1, 4, and 14) comprising:
a pattern-shape portion 12, 32 which is a portion corresponding to the uneven pattern 124, and
an edge portion 14, 34 entirely surrounding the pattern shape portion 12, 32, the edge portion having a constant thickness (see Figures 1 and 4),
wherein an end (i.e., a side edge surface) of the edge portion, which is an end in a direction orthogonal to both the longitudinal direction and the width direction is a flat surface, as shown in Figures 1 and 4.
With respect to the language in the last four lines of claim 8, it is noted that this language is a functional recitation of a desired mode of operation and fails to patentably distinguish from the foil stamping die of Yogo et al. Note that the MPEP 2114 states that “A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus teaches all the structural limitations of the claim.” In this case, since Yogo et al. teaches all of the structure of the foil stamping die as recited, it meets the claim language. Regardless, it is also pointed out that Figure 14(a)-14(b) of Yogo et al. show both the pattern shape portion 12 and edge portion 14 abutting against the foil 40 such that the foil is transferred to the object 3, 33 over the extent of the pattern shape portion and edge portion.
Response to Arguments
Applicant's arguments filed November 17, 2025 have been fully considered but they are not persuasive of any error in the above rejections.
In response to applicant's argument that Eguchi does not teach the subject matter of claim 8 because the device of Eguchi teaches transferring the foil only on the embossed portion of the workpiece and therefore does not teach “the foil is transferred to the surface of the printing object over the entire pattern-shape portion and edge portion,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this instance, Eguchi teaches all of the structure as recited and thereby meets the claim language.
Additionally, applicant’s arguments with respect to claim 8 have been considered but are moot because the new ground of rejection (in view of Yogo et al. ) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In view of this reasoning, the Examiner is not persuaded of any error in the above rejection.
Allowable Subject Matter
Claims 1-4 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Note the previous comments with respect to the indicated allowability of claims 1-4 as set forth in the Office Action dated September 30, 2025.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE J EVANISKO whose telephone number is (571) 272-2161. The examiner can normally be reached M-F 7:30 am-4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen D Meier can be reached at 571-272-7149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Leslie J Evanisko/Primary Examiner, Art Unit 2853