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 .
Applicant's submission filed on 6/27/25 has been entered. Claims 1-2, 5-13 and 15-16 are currently pending examination, claim 14 has been withdrawn and claims 3-4 have been canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is 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. Claim 15 recites the limitation “more than one helical grooves provided that those grooves do not intersect to form a diamond shaped pattern” this is considered a negative limitation. "Any negative limitation or exclusionary proviso must have basis in the original disclosure. The mere absence of a positive recitation is not basis for an exclusion.” MPEP 2173.05(i). The examiner is unable to find suitable basis for such a negative limitation.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is 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.
Claim 15 recites the limitation: “wherein the groove includes more than one helical grooves…”. Such recitation is grammatically confusing and indefinite as to the intended scope. Groove is a singular term, thus is it indefinite as to how a singular channel can include “more than one helical groove(s)”. For purposes of examination, these limitations will be interpreted as at least inclusive of the paint roller comprising more than one helical groove…
Claim Rejections - 35 USC § 103
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 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) 1-2, 5-6, 8-13, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsumori et al (CN 106413918; citations directed to machine translation provided herein; hereafter Mitsumori) in view of Montaner (FR 2496501; hereafter Montaner)
Claim 1: A method comprising providing a multicolor paint which comprises two or more paints of different colors each paint of different color being in discrete domains in a base paint wherein the domains have an average domain size (See, for example, figures, pg 1 – pg 2, and pg 5)
applying the multicolor paint to a paint roller cover (see, for example, figures, pg 1 – pg 2, and pg 5),
wherein the paint roller cover comprises a foam having a surface extending between a first edge and a second edge (see, for example, Figures, pg 4-5)
and an average cell size in the range of about 0.1 to 0.5 cm (1mm to 5 mm) (See, for example, bottom of pg 4),
an average domain size (interpreted as at least inclusive of multicolor paint particle size) of greater than 0.2 cm (See, for example, pg 3 and 5). Although the sizing does not at all instances explicitly result in a % difference of wherein the average cell size of the foam is within 25% of the average domain size in the multicolor paint there is overlap. Thus it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a sizing within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976) .
rolling the paint roller cover on a surface to form a painted surface (see, for example, pg 1-2, 4-5, figures, examples).
Mitsumori further teaches recessed features possessing a depth of 1 to 15 mm, and wherein shaping of said recesses is not particularly limited, (See, for example, pg 3-4) but it does not explicitly teach a groove on the surface wherein a portion of the groove is positioned at an angle relative to an edge of the foam and has a groove depth of 1 to 15 millimeters. Montaner teaches a foamed cylindrical paint application roller with a structured surface features (See, for example, abstract, figure). Montaner further teaches wherein a method of roller coating wherein the roller comprises in addition to recesses (such as 9), it further comprises at least one groove positioned at an angle relative to an edge of the foam (see, for example, abstract, pg 2, Fig). Montaner further teaches wherein the helical grooves enhance the rollers paint holding capacity and spreading (see, for example, pg 1-2). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a groove on the surface wherein a portion of the groove is positioned at an angle relative to an edge of the foam as such a feature would predictably enhance paint capacity and spreading. In addition to Mitsumori teaching recessed features possessing a depth of 1 to 15 mm (see above), which the groove would similarly be a recessive feature; Montaner has further taught the depth of the groove as about half the wall thickness of the foam (See, for example, pg 2). Mitsumori has taught its foam thickness as most preferably 4 to 7 mm (see, for example, pg 5), thus by combination the depth of the groove would most preferably be 2 to 3.5 mm.
Claim 2: Mitsumori further teaches wherein the paint roller is not limited, but preferably 80 mm to 250 mm (see, for example, pg 5). Although such a range is not explicitly 50-90 mm, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a diameter within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 5: Montaner further teaches wherein the groove is a helical groove (See, for example, pg 2 Fig) .
Claim 6: Montaner further teaches wherein the helical groove extends around the roller in a continuous manner (see, for example, pg 2, Fig).
Claim 8: Mitsumori further teaches wherein the foam is characterized by cells on the surface which are open to the surface (see, for example, figures, pg 4-5).
Claim 9: Mitsumori further teaches wherein the foam thickness is most preferably 4 to 7 mm (See, for example, pg 5). Although such a range is not explicitly 5 to 25 millimeters, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a thickness within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 10: Mitsumori and Montaner both further teaches foam is polyurethane (see, for example, Mitsumori at pg 5- formed from urethane resin, and Montaner at abstract, pg 2).
Claim 11: Mitsumori further teaches the foam is an open cell foam (opening holes) characterized by a cell frequency of about 10 to 2 pores per cm (see, for example, Figures and calculated from pg 4 wherein the pore diameter is taught as 1-5 mm). Although such a range is not explicitly 4 to 12 pores per centimeter, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a cell frequency within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 12: In addition to Mitsumori teaching recessed features possessing a depth of 1 to 15 mm (see above), which the groove would similarly be a recessive feature; Montaner has further taught the depth of the groove as about half the wall thickness of the foam (See, for example, pg 2). Mitsumori has taught its foam thickness as preferably 2 to 13 mm (see, for example, pg 5), thus by combination the depth of the groove would preferably be 1 to 7.5 mm. Although such a range is not explicitly 1 to 2 millimeters as claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a depth within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 13: Mitsumori in view of Montaner teach the method of claim 1 (Above). With respect to the limitation of “wherein in a histogram of a digitized image of the painted surface, spot counts measured in an x direction and a y direction show a variance in average intensity in the x direction or the y direction of less than 0.25 and/or the sum of variances in the x direction and the y direction is less than 0.45.” the examiner notes that the claim does not actively recite a step of actually producing a digitized image and producing the histogram and accompanying supporting steps attributed to its production. Instead, as presently structured it claims essentially that the formed coating meets a threshold for a resulting property; specifically, what appears to be a degree of uniformity over an area thereof. As Mitsumori in view of Montaner have taught all the claimed functional steps and conditions as applicant to achieve such a uniformity, the examiner asserts that should a histogram of a digitized image of the painted surface be prepared it similarly would yield variance results within the claimed range since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Additionally / alternatively with respect to the resulting uniformity of the formed coating, Mitsumori explicitly identifies that previous roller based coating method has resulted in unsatisfactory and uneven coatings (See, for example, pg 1). Mitsumori teaches its method overcomes these issues, thus it is explicitly concerned with a more even / uniform coating, and further explicitly teaches the uniform transfer of coating particles (See, for example, pg 1 and pg 6). Thus if not inherent the uniformity is a condition ripe and desired to be optimized, there it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a degree of uniformity equating the claimed range since [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and since discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Claim 16: Mitsumori in view of Montaner teach the method of claim 1 (Above), wherein Montaner further teaches wherein the groove is a single helical groove (see, for example, Fig, wherein one of the single helical grooves of Montaner is interpreted as the claimed groove).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsumori in view of Montaner as applied to claim 5 above, and further in view of Lomasney (US 5,133,117; hereafter Lomasney).
Claim 7: Mitsumori in view of Montaner teach the method of claim 5 (above), but Montaner is silent as to the pitch of the helical groove, so it does not explicitly teach the helical groove has a pitch of 5 to 40 millimeters. Lomasney teaches a method directed to applying coatings uniformly with roller applicator (See, for example, abstract, col 2 lines 1- 42). Lomasney further teaches wherein its roller similarly comprise a helical feature, and further teaches wherein the pitch of the helical feature can be optimized relative to the performance desired (See, for example, col 2 lines 1-48, col 4 lines 22-32). Lomasney further a 12 inch roller having 2 to 8 winds (see, for example, col 4 lines 22-31, which converts to a pitch of 152.4 mm to 30.48 mm). Although such a range is not explicitly a pitch of 5 to 40 millimeters as claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a pitch within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim(s) 1-2, 5-6, 8-13, and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsumori in view of Coronet (DE 29803800; citations directed to machine translation provided herein, hereafter Coronet) and Satoshi (JPH1190307; citations directed to machine translation provided herein, hereafter Satoshi).
Claim 1: Mitsumori teaches a method comprising providing a multicolor paint which comprises two or more paints of different colors each paint of different color being in discrete domains in a base paint wherein the domains have an average domain size (See, for example, figures, pg 1 – pg 2, and pg 5)
applying the multicolor paint to a paint roller cover (see, for example, figures, pg 1 – pg 2, and pg 5),
wherein the paint roller cover comprises a foam having a surface extending between a first edge and a second edge (see, for example, Figures, pg 4-5)
and an average cell size in the range of about 0.1 to 0.5 cm (1mm to 5 mm) (See, for example, bottom of pg 4),
an average domain size (interpreted as at least inclusive of multicolor paint particle size) of greater than 0.2 cm (See, for example, pg 3 and 5). Although the sizing does not at all instances explicitly result in a % difference of wherein the average cell size of the foam is within 25% of the average domain size in the multicolor paint there is overlap. Thus it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a sizing within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976) .
rolling the paint roller cover on a surface to form a painted surface (see, for example, pg 1-2, 4-5, figures, examples).
Mitsumori further teaches recessed features possessing a depth of 1 to 15 mm, and wherein shaping of said recesses is not particularly limited, (See, for example, pg 3-4) but it does not explicitly teach a groove on the surface wherein a portion of the groove is positioned at an angle relative to an edge of the foam and has a groove depth of 1 to 15 millimeters. Coronet teaches a foamed cylindrical paint application roller with a structured surface features (See, for example, [0001-0011], [0018] figure1-2). Coronet further teaches wherein a method of roller coating wherein the roller comprises at least one groove positioned at an angle relative to an edge of the foam (see, for example, Fig 1-2, [0010-11], [0018]). Coronet further teaches wherein such rollers enhance available surface texturing, while reducing manufacturing complexity and costs (see, for example, [0001-0011]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a groove on the surface wherein a portion of the groove is positioned at an angle relative to an edge of the foam as such a feature would predictably enhance available surface texturing, while reducing manufacturing complexity and costs. Though Coronet is silent as to an appropriate groove depth, Mitsumori teaches recessed features possessing a depth of 1 to 15 mm (see above), which the groove would similarly be a recessive feature. For sake of argument that such a teaching is not sufficient to adapt to the grooves; Satoshi has taught a foamed cylindrical paint application roller with a structured surface features (See, for example, abstract, pg 2, figures). Like Coronet, Satoshi similarly teaches the roller comprises at least one groove positioned at an angle relative to an edge of the foam and further teaches wherein the depth of the groove influences the applied layers sufficiency, and further, though explicitly not limiting, recommends preferably a groove depth on the order of 3 to 7 mm (see, for example, Figs, pg 2); which aligns with the teaching of Mitsumori to recessed features possessing a depth of 1 to 15 mm (see above). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a groove depth on the order of 3 to 7 mm since the depth of the grooves is known as a result effective variable wherein discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) and, since such an order of recess depth is known in the art to predictably avoid applied layer insufficiency.
Claim 2: Mitsumori further teaches wherein the paint roller is not limited, but preferably 80 mm to 250 mm (see, for example, pg 5). Although such a range is not explicitly 50-90 mm, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a diameter within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 5: Coronet further teaches wherein the groove is a helical groove (See, for example, Fig 1-2 [0010]) .
Claim 6: Coronet further teaches wherein the helical groove extends around the roller in a continuous manner (see, for example, Fig 1-2 [0010]) .
Claim 8: Mitsumori further teaches wherein the foam is characterized by cells on the surface which are open to the surface (see, for example, figures, pg 4-5).
Claim 9: Mitsumori further teaches wherein the foam thickness is most preferably 4 to 7 mm (See, for example, pg 5). Although such a range is not explicitly 5 to 25 millimeters, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a thickness within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 10: Mitsumori and Satoshi both further teaches foam is polyurethane (see, for example, Mitsumori at pg 5- formed from urethane resin, and Satoshi at pg 2).
Claim 11: Mitsumori further teaches the foam is an open cell foam (opening holes) characterized by a cell frequency of about 10 to 2 pores per cm (see, for example, Figures and calculated from pg 4 wherein the pore diameter is taught as 1-5 mm). Although such a range is not explicitly 4 to 12 pores per centimeter, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a cell frequency within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 12: In addition to Mitsumori teaching recessed features possessing a depth of 1 to 15 mm (see above), which the groove would similarly be a recessive feature; Satoshi has further taught wherein the depth of the groove influences the applied layers sufficiency (see, for example, Figs, pg 2). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a groove depth on the order of 1 to 2 mm since the depth of the grooves is known as a result effective variable wherein discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) and since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 13: Mitsumori in view of Coronet and Satoshi teach the method of claim 1 (Above). With respect to the limitation of “wherein in a histogram of a digitized image of the painted surface, spot counts measured in an x direction and a y direction show a variance in average intensity in the x direction or the y direction of less than 0.25 and/or the sum of variances in the x direction and the y direction is less than 0.45.” the examiner notes that the claim does not actively recite a step of actually producing a digitized image and producing the histogram and accompanying supporting steps attributed to its production. Instead, as presently structured it claims essentially that the formed coating meets a threshold for a resulting property; specifically, what appears to be a degree of uniformity over an area thereof. As Mitsumori in view of Coronet and Satoshi have taught all the claimed functional steps and conditions as applicant to achieve such a uniformity, the examiner asserts that should a histogram of a digitized image of the painted surface be prepared it similarly would yield variance results within the claimed range since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Additionally / alternatively with respect to the resulting uniformity of the formed coating, Mitsumori explicitly identifies that previous roller based coating method has resulted in unsatisfactory and uneven coatings (See, for example, pg 1). Mitsumori teaches its method overcomes these issues, thus it is explicitly concerned with a more even / uniform coating, and further explicitly teaches the uniform transfer of coating particles (See, for example, pg 1 and pg 6). Thus if not inherent the uniformity is a condition ripe and desired to be optimized, there it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a degree of uniformity equating the claimed range since [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) and since discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Claim 15: Mitsumori in view of Coronet and Satoshi teach the method of claim 1 above wherein Coronet further teaches more than one helical groove wherein the grooves do not intersect to form a diamond shaped pattern (See, for example, [0011], [0019], Fig 1-2).
Claim 16: Mitsumori in view of Coronet and Satoshi teach the method of claim 1 (Above), wherein Cornet further teaches wherein the groove is a single helical groove (see, for example, Fig 1, [0010], [0019]).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsumori in view of Coronet and Satoshi as applied to claim 5 above, and further in view of Lomasney.
Claim 7: Mitsumori in view of Coronet and Satoshi teach the method of claim 5 (above), but they are is silent as to the pitch of the helical groove, so it does not explicitly teach the helical groove has a pitch of 5 to 40 millimeters. Lomasney teaches a method directed to applying coatings uniformly with roller applicator (See, for example, abstract, col 2 lines 1- 42). Lomasney further teaches wherein its roller similarly comprise a helical feature, and further teaches wherein the pitch of the helical feature can be optimized relative to the performance desired (See, for example, col 2 lines 1-48, col 4 lines 22-32). Lomasney further a 12 inch roller having 2 to 8 winds (see, for example, col 4 lines 22-31, which converts to a pitch of 152.4 mm to 30.48 mm). Although such a range is not explicitly a pitch of 5 to 40 millimeters as claimed, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a pitch within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Response to Arguments
Applicant's arguments filed 6/27/25 have been fully considered but they are not persuasive. In response to applicant's argument that “nothing in Mitsumori provides any guidance as to how to provide a more uniform multicolor painted surface… [and for Montaner]… A skilled worker would have no expectation that a roller with intersecting helical grooves for applying a thick paste would resolve the problem of non-uniform distribution of the colors of the multicolor paint.” the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With respect to Applicant’s argument that “claim 12 recites a groove width of 1 to 2 mm which is smaller than the minimum depression size which Mitsumori indicates is required”; the examiner notes that claim 12 as previously and presently claimed recites “the groove has a depth of 1 to 2 millimeters.”, not a “width”, thus applicant’s arguments directed to a width are not convincing. For sake of argument that depth was intended to be argued, the examiner notes that Mitsumori has explicitly taught that “depth of the success is 1mm or more and less than 15 mm” thus a depth of 1 to 2 mm would not be unsuitable for Mitsumori, but rather would be taught towards.
Applicant’s arguments that the references do not teach the newly added claim 15 are unconvincing in view of newly-cited Coronet and Satoshi, as discussed above.
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 NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712