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 .
Election/Restrictions
In response to the Election/Restriction mailed to applicant on 03/20/2026, applicant has made an election with traverse of Invention II in the reply filed on 05/19/2026. The traversal is on the ground(s) that there would not be any serious burden to examine all pending claims, see Election of 05/19/2026, pages 2-3. This is not found persuasive because of the following reason(s).
a) Applicant is respectfully invited to review the claims of each groups of Inventions I-II which recite different features and not overlapped from each other. In particular, the claims of the Invention I is directed to an article having a plurality of regions with specific features regarding the emissivity and reflectance in different wavelengths of each regions while the claims of the Invention II is directed to an article having a plurality of regions with specific features regarding the shapes/irregular structures /roughness of each regions wherein the shapes/irregular structures /roughness of each regions are not related to the wavelengths being applied and/or the results of emissivity and reflectance of an article with a general structure as read from the claims of the Invention I.
b) It is noted that the Election/Restriction set forth in the office action of 03/20/2026 provided different classes/subclasses which are required to search for different features recited in different Inventions.
Thus, the different features among claims of the Inventions I-II require different searches and thus cause a serious burden on the examiner to search and examination of different inventions if an election was not being issued.
The requirement is still deemed proper and is therefore made FINAL.
As a result of applicant’s election and the examiner’s response provided above, claims 1, 6, 9 and 12-20 are examined in the present office action, and claims 2-5, 7-8 and 10-11 have been withdrawn from further consideration as being directed to non-elected Invention I.
Applicant should note that the non-elected claims will be rejoined if the linking claim 1 is later found as an allowable claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Japanese reference No. H0719798 listed in the information disclosure statement filed on 04/15/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
In particular, applicant has provided only the English abstract and the drawings section of the mentioned Japanese reference. There was not any content/specification of the mentioned reference being provided/shown in the mentioned reference.
Drawings
The drawings contain eight sheets of figures 1-3, 4A-4D, 5-6, 7A-7B and 8 were received on 04/15/2024. These drawings are objected by the examiner for the following reason(s).
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the feature regarding “a heat generator” as recited in claim 20 must be shown or the feature canceled from the claim. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 13-19 are objected to because of the following informalities. Appropriate correction is required.
a) In claim 13: the use of claimed language is not consistent. In particular, in the claim on lines 3-4, applicant has used the claimed language thereof “a second irregularity structure with an arithmetic average roughness”; however, on lines 6-7, applicant has also used the claimed language thereof ““a fourth irregularity structure having an arithmetic average roughness”. Should “having” appeared on line 6 be changed to --with--?
b) In claim 18: on line 3, what does applicant mean by “a metal layer containing metal”? Should “containing metal” be deleted?
c) The remaining claims re dependent upon the objected base claim and thus inherit the deficiencies thereof.
Claim Interpretation
10. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
11. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
12. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are “a first irregularity structure”, “a second irregularity structure”, “a third irregularity structure”, and “a fourth irregularity structure” recited in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
13. 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.
14. Claims 1, 6, 9, and 12-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, for the following reasons.
a1) The claim is rejected by the feature thereof “an emissivity of infrared light in a first wavelength in the first region and the second region is equal to or less than 90%” (lines 5-6). What does applicant imply by the mentioned feature? Does applicant intend to claim that the emissivity of infrared light equals to or less than 90% is a summation of an emissivity of infrared light in a first wavelength of the first region and an emissivity of infrared light in a first wavelength of the second region (examiner’s emphasis) as read from the claimed language provided in the claim?
For the purpose of examination, the mentioned feature is understood as --an emissivity of infrared light in a first wavelength in each of the first region and the second region is equal to or less than 90%--.
a2) The similar question is also raised to the feature thereof “a reflectance of visible light in a second wavelength in the first region and the second region is equal to or less than 10%” (lines 7-8). What does applicant imply by the mentioned feature? Does applicant intend to claim that the reflectance of visible light equals to or less than 10% is a summation of a reflectance of visible light in a second wavelength of the first region and a reflectance of visible light in a second wavelength of the second region (examiner’s emphasis) as read from the claimed language provided in the claim?
For the purpose of examination, the mentioned feature is understood as --a reflectance of visible light in a second wavelength in each of the first region and the second region is equal to or less than 10%--.
b) Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “an area of the first region and the second region is equal to or greater than 25 cm2 and equal to or less than 10000cm2” (lines 1-2). What does applicant imply by the mentioned feature? Does applicant intend to claim that --an area of both the first region and the second region is equal to or greater than 25 cm2 and equal to or less than 10000cm2-- (examiner’s emphasis) as read from the claimed language provided in the claim?
For the purpose of examination, the mentioned feature is understood as -- an area of each of the first region and the second region is equal to or greater than 25 cm2 and equal to or less than 10,000cm2--
c) Each of claims 14-15 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element a) and b) above.
d) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 102
15. 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.
16. 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.
17. Claims 1, 6, 9, 12 and 20, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Conway et al (US Patent No. 5,077,101).
Conway et al discloses a camouflage system.
a) Regarding present claim 1, the camouflage system as described in columns 3-5 and shown in figs. 1 and 3 comprises the following features:
a1) a first region (3);
a2) a second region (4) disposed from the first region (3) within a distance equal to or less than a width of the first region, see fig. 1; and
a3) an emissivity of infrared light in a first wavelength in the first region and the second region is equal to or less than 90%; a reflectance of visible light in a second wavelength in the first region and the second region is equal to or less than 10% wherein a difference between an average emissivity (%) of infrared light in a wavelength range of (8 μm, 13 μm) in the first region, and an average emissivity (%) of infrared light in a wavelength range of (8 μm, 13 μm) in the second region is equal to or greater than 5%, see columns 4-5.
b) Regarding present claim 6, the shapes of the first and second regions are different from each other, see figs. 3.
c) Regarding present claim 9, the dimension of the area of each of the first and second regions is read from the description provided in columns 3-4.
d) Regarding present claim 12, the roughnesses of the first and second regions are different from each other as read description provided in columns 4-5.
e) Regarding present claim 20, because the camouflage is worn by a person who acts as a heat generator wherein the camouflage shields heat from the person.
Allowable Subject Matter
18. Claims 13-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. It is noted that the claims need to overcome the rejections/objections under 35 USC 112(s) set forth in the present office action.
19. The following is a statement of reasons for the indication of allowable subject matter:
The article having a first region and a second region as recited in the dependent claim 13 is allowable with respect to the prior art, in particular, the US Patent Nos. 5,077,101 and 6,929,861 by the limitations regarding the structure of the first and second regions as recited in the features thereof “the first region … are different” (claim 13 on lines 2-11). It is noted that an article having regions wherein a first irregularity structure and a second irregularity structure formed on the first irregularity structure wherein the roughnesses of the first and second irregularity structures are different from each other is known to one skilled in the art as can be seen in the US Patent No. 6,929,861; however, an article having all features recited in claims 1 and 13 is not disclosed in the prior art.
Conclusion
20. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
21. The US Patent No. 12,681,218 is cited as of interest in that it discloses an article having a metal layer and a protrusion-and-recess shaped layer formed on the metal layer wherein the shaped layer having irregularity structures with different roughnesses. The Patent is issued to the same entity as that of the present US application.
22. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached on M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone B. Allen can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
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