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
Applicant’s election of Group II (i.e., claim(s) 13-16) without traverse in the reply filed on 02/16/2026 is acknowledged. Claim(s) 9-12 is/are withdrawn as being drawn to nonelected group I. Accordingly, claim(s) 13-16 is/are examined herein.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17255448, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The disclosure of the prior-filed application, Application No. 17255448 fails to provide adequate support for “a control unit configured to: … control … and heating of a plastic sheet disposed between the first stamper and the second stamper to imprint a pattern on first and second faces of the plastic sheet” of instant independent claim 13. As a result, claims 13-16 are not be provided benefit to the parent application.
Drawings
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 “control unit configured to: … control … and heating of a plastic sheet disposed between the first stamper and the second stamper to imprint a pattern on first and second faces of the plastic sheet” of instant independent claim 13 must be shown or the feature(s) canceled from the claim(s). 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 abstract of the disclosure is objected to because it comprises implied language such as “The present disclosure relates”. Furthermore, the abstract is not a concise statement of the technical disclosure of the patent. In this case, examined claims are directed to an embossing tool with specific structural elements; however, the abstract fails to include/summarize the organization/operation of the structural elements. See MPEP § 608.01(b).
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.
Claims 13-16 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.
New claim 13 filed on 07/17/2024 recites the limitation “a control unit configured to: … control … and heating of a plastic sheet disposed between the first stamper and the second stamper to imprint a pattern on first and second faces of the plastic sheet” which fails to comply with the written description requirement. Applicant has not pointed out where the amended claim is supported, nor does there appear to be a written description of the claim limitation “a control unit configured to: control heating of a plastic sheet disposed between the first stamper and the second stamper” in the application as filed (see MPEP 2163.04 and 2163.06).
Claim(s) 14-16 is/are rejected as being dependent from claim 13 and therefor including all the limitation thereof.
Claim Rejections - 35 USC § 112
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(s) 13-16 is/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.
Claim 13 recites the limitation “a control unit configured to: … control … and heating of a plastic sheet disposed between the first stamper and the second stamper to imprint a pattern on first and second faces of the plastic sheet” which is indefinite. The language states a heating result obtained by the control unit without setting forth well-defined boundaries of the invention. It is unclear how the claimed control unit or tool is capable of controlling heating of the plastic sheet when no heating means is recited in the claim. According to paragraphs [0015] and Fig. 1 of applicant’s published application, claimed control unit by itself is incapable of obtaining the claimed heating result. See MPEP §§ 2173.03 and 2173.05 (g).
Claim(s) 14-16 is/are rejected as being dependent from claim 13 and therefor including all the limitation thereof.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jaderberg (US 20140367886 – of record) in view of Kast (US 20130147070 – of record), Curtiss (US 6758664 – of record), and Futurama (US 20070193331), and further in view of Hardt (US 20130337102).
Regarding claims 13 and 14, Jaderberg discloses an embossing tool (Abstract, P0033, Fig. 1) comprising:
a first tool half (3) associated with a first stamper (active surface also referred to as stamper of 3 not shown in Fig. 1: P0033);
a second tool half (5) associated with a second stamper (active surface also referred to as stamper of 5 not shown in Fig. 1: P0033),
wherein at least first stamper floats with respect to the first tool half or the second stamper floats with respect to the second tool half (at least one of the stampers also referred to as the top layer is provided in a floating manner with respect to the second/respective tool half: P0033, 0055, 0067-0070, Fig. 9), wherein the first and second stampers float with respect to the first and second tool halves, respectively (Jaderberg discloses that the opposing halve not shown may be more or less a mirror image of the shown halve: P0047; thus, Jaderberg discloses/suggests the first and second stampers float with respect to the first and second tool halves, respectively),
a heating means (7) in the first tool half (3) and the second tool half (P0033, Fig. 1);
pressing and heating of a plastic sheet (1) disposed between the first stamper and the second stamper (active surfaces) to imprint a pattern on first and second faces of the plastic sheet (P0033).
Jaderberg further discloses/suggests to control pressing force during pressing/embossing to improve optical properties (P0063-0065) and to control temperature/heating (P0043-0044 and 0046).
However, Jaderberg fails to disclose/suggest a plurality of servos and a control unit as claimed.
In the same field of endeavor, tools for embossing and/or improving alignment of stampers, Kast discloses the technique of providing a plurality of actuators (three actuators 34-36) and a control unit (control system not shown) configured to control the plurality of actuators individually to move a first tool half (22) towards a second tool half (21) in an inclined/rotated manner to thereby move a location of a first stamper (2) when the first tool half (22) and the second tool half (21) move into closed positions (P0045-0046, 0050-0051, 0065, Figs. 1 and 4c) for the benefit(s) of improving embossing accuracy (P0006, 0031).
In the same field of endeavor, tools for embossing and/or improving alignment of stampers, Curtiss discloses that the technique of closing the tool halves in an inclined manner is desirable in the art for the benefit(s) of improving alignment of stampers and embossing precision (Figs. 1A-C and accompanying text).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the tool of Jaderberg in view of Kast and Curtiss by incorporating a plurality of actuators, moving the first tool half via the a plurality of actuators, and configuring the control unit to control the plurality of actuators such that the tool halves are closed in an inclined manner for the benefit(s) of improving embossing accuracy/precision and/or alignment of the stampers as suggested by Kast and Curtiss.
The combination/Kast fails to explicitly disclose that the plurality of actuators are servos.
In the same field of endeavor, tools for pressing/molding and/or improving alignment of stampers/dies, Futamura discloses that the technique of using a plurality of servos (409) as suitable actuators and a control unit (423) configured to control the plurality of servos individually for the benefit(s) of improving control accuracy (Abstract, P0001, 0007, P0082, Figs. 7 and 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to further modify the tool of Jaderberg in view of Futamura by incorporating using servos as the plurality of actuators and configuring the control unit to control the plurality of servos such that the tool halves are closed in the inclined manner for the benefit(s) of improving control accuracy and/or alignment of the stampers as suggested by Futamura.
Jaderberg, as modified above, fails to explicitly disclose that the control unit is configured to control pressing and heating of the plastic sheet disposed between the first stamper and the second stamper.
In the same field of endeavor, embossing tools, Hardt discloses the technique of providing a control system configured to control pressing (embossing force) and heating (temperature) of stampers (patterned/embossing platens) when/for embossing/pressing a workpiece between the stampers (abstract, P0004, 0006, 0029, Fig. 4) for the benefit(s) of providing control of temperature and pressure/force (P0004) and/or improving embossing precision (P0009, 0018).
Since Jaderberg discloses pressing and heating of a plastic sheet (1) disposed between the first stamper and the second stamper (active surfaces) to imprint a pattern on first and second faces of the plastic sheet (P0033) and discloses/suggests to control pressing force during pressing/embossing to improve optical properties (P0063-0065) and to control temperature/heating (P0043-0044 and 0046), it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to further have modified the tool of Jaderberg in view of Hardt by configuring the control unit to control pressing by controlling the plurality of servos and heating by controlling the heating arrangement of the plastic sheet disposed between the first stamper and the second stamper during embossing of for the benefit(s) of providing control of temperature and pressure/force and/or improving embossing precision as suggested by Hardt.
Regarding claim 15, Jaderberg, as modified in claim 13 above, further discloses/suggests wherein the plurality of servos is three servos (P0051, Fig. 1 of Kast).
Regarding claim 16, Jaderberg, as modified in claim 13 above, further discloses/suggests wherein an inclination for the movement in the inclined manner is determined by the control unit based on error data (P0019, 0051 of Kast).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13-16 and rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-4 and 13 of U.S. Patent No. 12030236 in view of Hardt (US 20130337102).
Regarding claims 13-14 and 16, the combination of claims 3 and 4 of the U.S. Patent No. 12030236 explicitly disclose/meet all the limitations of the instant claims with the exception of the control unit configured to control pressing and heating of the plastic sheet disposed between the first stamper and the second stamper.
Since claim 4 of the U.S. Patent No. 12030236 disclose that the control unit is configured to control the plurality of servos such that the tool halves are closed in the inclined manner by moving the first stamper, claim 4 of the U.S. Patent No. 12030236 implicitly discloses/suggests the control unit configured to control pressing of the plastic sheet disposed between the first stamper and the second stamper.
In the same field of endeavor, embossing tools, Hardt discloses the technique of providing a control system configured to control pressing (embossing force) and heating (temperature) of stampers (patterned/embossing platens) when/for embossing/pressing a workpiece between the stampers (abstract, P0004, 0006, 0029, Fig. 4) for the benefit(s) of providing control of temperature and pressure/force (P0004) and/or improving embossing precision (P0009, 0018).
Since claim 2 of the U.S. Patent No. 12030236 disclose that the plastic sheet is pressed and heated, via the heating arrangement, between the tool halves while a fine optical pattern is imprinted on first and second faces of the plastic sheet by means of the first stamper and the second stamper associated with the first and second tool halves respectively, it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the tool of the reference patent in view of Hardt by configuring the control unit to control pressing by controlling the plurality of servos and heating by controlling the heating arrangement of the plastic sheet disposed between the first stamper and the second stamper during embossing of for the benefit(s) of providing control of temperature and pressure/force and/or improving embossing precision as suggested by Hardt.
Regarding claims 13 and 16, claim 13 of the U.S. Patent No. 12030236 explicitly discloses/meets all the limitations of the instant claims with the exception of the control unit configured to control pressing and heating of the plastic sheet disposed between the first stamper and the second stamper.
Since claim 13 of the U.S. Patent No. 12030236 disclose that the control unit is configured to control the plurality of servos such that the tool halves are closed in the inclined manner by moving the first stamper, claim 13 of the U.S. Patent No. 12030236 implicitly discloses/suggests the control unit configured to control pressing of the plastic sheet disposed between the first stamper and the second stamper.
In the same field of endeavor, embossing tools, Hardt discloses the technique of providing a control system configured to control pressing (embossing force) and heating (temperature) of stampers (patterned/embossing platens) when/for embossing/pressing a workpiece between the stampers (abstract, P0004, 0006, 0029, Fig. 4) for the benefit(s) of providing control of temperature and pressure/force (P0004) and/or improving embossing precision (P0009, 0018).
Since claim 13 of the U.S. Patent No. 12030236 disclose that the plastic sheet is pressed and heated, via the heating arrangement, between the tool halves while a fine optical pattern is imprinted on first and second faces of the plastic sheet by means of the first stamper and the second stamper associated with the first and second tool halves respectively, it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the tool of the reference patent in view of Hardt by configuring the control unit to control pressing by controlling the plurality of servos and heating by controlling the heating arrangement of the plastic sheet disposed between the first stamper and the second stamper during embossing of for the benefit(s) of providing control of temperature and pressure/force and/or improving embossing precision as suggested by Hardt.
Conclusion
Additional prior art made of record and not relied upon that is considered to be pertinent to
Applicant’s disclosure:
Xu (US 20180221934) discloses a relevant embossing tool (Figs. 4-5 and accompanying text).
Kitahara (US 20150318013 – of record) discloses an embossing tool comprising first and second stampers (upper and lower molds 41: Fig. 10) capable of embossing/imprinting a pattern (14A) on an upper and a lower side of a plastic sheet (P0104-0105, Figs. 10-11), wherein the first and second stampers are configured to imprint at least a first reference mark (upper registration mark 14M) on the first face of the plastic sheet and at least a second reference mark (lower registration mark 14M) on the second face of the plastic sheet (P0105, Figs. 11), to optically determine an alignment error data based on the relative position of the first and second reference marks, and to adjust position of the first and second stampers based on the determined error data before performing subsequent embossing operations for the benefit(s) of improving alignment between stampers (P0104-0105, Figs. 10-11).
Sato (US 20140346700 – of record) discloses first and second stampers (11,13) configured to imprint at least a first reference mark (18) on the first face of a plastic sheet and at least a second reference mark (19) on the second face of the plastic sheet (P0024, Figs. 1 and 5C), at least one image-pickup unit (15, Fig. 1) configured to optically determine an alignment error data based on the relative position of the first and second reference marks, and a control unit (17) configured to adjust position of the first and second stampers based on the determined error data before performing subsequent embossing operations for the benefit(s) of improving alignment between stampers (P0026-0033).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERZI H MORENO HERNANDEZ whose telephone number is (571)272-0625. The examiner can normally be reached 1:00-10:00 PM PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JERZI H. MORENO HERNANDEZ
Primary Examiner
Art Unit 1743
/JERZI H MORENO HERNANDEZ/Primary Examiner, Art Unit 1743