The arguments and amendments submitted 11/13/2025 have been considered. In light of amendments made, all prior USC § 112(b) rejections are hereby withdrawn. The merits of the claims, however, remain unpatentable as set forth below.
Double Patenting
The terminal disclaimer filed on 11/14/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent 12,059,050 has been reviewed and is accepted. The terminal disclaimer has been recorded. Accordingly, all previous non-statutory double patenting rejections are hereby withdrawn.
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.
Claims 1-5, 9-16, and 21-23 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 pre-AIA the applicant regards as the invention.
Claims 1, 12, and 21 each recite "a hypothetical surface of the first mandrel". However, the scope of this term is unclear at least because the claim does not describe any hypothesis or claim features providing any definite bounds upon or basis for the hypothetical surface. Therefore, the metes and bounds of the claim are undefined and indefinite. For the purpose of examination, claims 1, 12, and 21 each read on "a hypothetical surface of the first mandrel extending beyond the portion of the ellipse defining the shape of the first mandrel, and wherein the hypothetical surface consists of the edge of the remaining portion of the ellipse". Dependent claims fall herewith.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21-23 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Figueroa (US PG Pub 2019/0126665).
Regarding claim 21, Figueroa teaches a cap logo applicator (200 in Fig. 7, see also Figs. 6A-8C), comprising:
a first mandrel having a front and a back (700), the first mandrel having a curved, non-cylindrical surface (as shown in Fig. 7), and a relief space in the back such that when a cap is positioned on the first mandrel (relief space near 260 in Fig 8), a front of the cap is in contact with the non-cylindrical surface and a top of the cap extends over the relief space (as shown in Figs. 8B, 8C); and
a second mandrel opposing the first mandrel (220) and configured to apply pressure to the first mandrel (para. 0034);
wherein at least one of the first mandrel and the second mandrel includes a heater (para. 0034),
wherein the non-cylindrical surface of the first mandrel is shaped as defined by a portion of an ellipse having a center point (as shown in Fig. 7A, upper surface of mandrel 700 is shaped as defined by a portion of an ellipse with a major axis oriented horizontally and a minor axis oriented vertically; it is also noted that all ellipses implicitly have a center point, a major axis, and a minor axis), and
wherein a first distance is defined from the center point of the ellipse to the non-cylindrical surface of the first mandrel (for example, the distance from the ellipse center point to the right edge of the cylindrical surface in Fig. 7A), a second distance is defined perpendicular to the first distance from the center point of the ellipse to a hypothetical surface of the first mandrel extending beyond the portion of the ellipse defining the shape of the first mandrel, and wherein the hypothetical surface consists of the edge of the remaining portion of the ellipse (a second distance perpendicular to the first distance and extending down and toward the right to a hypothetical surface of the first mandrel consisting of the edge of the remaining portion of the ellipse of the first mandrel in Fig. 7A), and the first distance is greater than the second distance (since the first distance is oriented more parallel to the major axis of the ellipse than the second distance the first distance is implicitly greater than the second distance in Fig. 7A).
Regarding claim 22, Figueroa shows the first distance can extend in a generally vertical direction of the applicator (for example, the distance from the ellipse center point to the right edge of the cylindrical surface in Fig. 7A is generally vertical since it is upward in the figure and the instant specification does not provide any definition of what is generally vertically).
Regarding claim 23, Figueroa teaches the second mandrel has a concave curved surface opposing the curved, non-cylindrical surface of the first mandrel and is shaped with a different curvature than the ellipse (as shown for the bottom surface of second mandrel 220 in Fig. 7A).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-5 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Figueroa (US PG Pub 2019/0126665) in view of Rinaldi (US Patent 5,481,759).
Regarding claims 1 and 12, Figueroa teaches a cap logo applicator (200 in Fig. 7, see also Figs. 6A-8C) and a method of fabricating it thereof (para. 0007), comprising:
providing a first mandrel having a front and a back (700), the first mandrel having a curved, non-cylindrical surface (as shown in Fig. 7), and a relief space in the back such that when a cap is positioned on the first mandrel (relief space near 260 in Fig 8), a front of the cap is in contact with the non-cylindrical surface and a top of the cap extends over the relief space (as shown in Figs. 8B, 8C); and
configuring a second mandrel opposing the first mandrel (220) and configured to apply pressure to the first mandrel (para. 0034);
positioning a heater in at least one of the first mandrel and the second mandrel (para. 0034),
wherein the non-cylindrical surface of the first mandrel is shaped as defined by a portion of an ellipse having a center point, a major axis, and a minor axis (as shown in Fig. 7A, upper surface of mandrel 700 is shaped as defined by a portion of an ellipse with a major axis oriented horizontally and a minor axis oriented vertically; it is also noted that all ellipses implicitly have a center point, a major axis, and a minor axis).
Figueroa does not teach a first distance is defined from the center point of the ellipse to the non- cylindrical surface of the first mandrel and along the major axis, a second distance is defined along the minor axis from the center point of the ellipse to a hypothetical surface of the first mandrel extending beyond the portion of the ellipse defining the shape of the first mandrel, and wherein the hypothetical surface consists of the edge of the remaining portion of the ellipse, and the first distance is greater than the second distance. Instead, Figueroa implicitly teaches that a first distance is defined from the center point of the ellipse to the non-cylindrical surface of the first mandrel and along the minor axis, a second distance is defined from the center point of the ellipse to the hypothetical surface of the first mandrel and along the major axis, and thus the second distance is implicitly greater than the first distance (as shown in Fig. 7A). These differences therefore merely amount to Figueroa’s non-cylindrical surface of the first mandrel having a different elliptical shape, which is defined by a portion of a different ellipse than the ellipse defined in claims 1 and 12.
The courts have held that a mere change in shape of an element does not have patentable significance unless a new and unexpected result is achieved and is generally recognized as being within the capability of one of ordinary skill in the art. See MPEP § 2144.04.IV.B. “The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of
ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.” In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Furthermore, it is known in the prior art, as taught for example by Rinaldi, that human heads have different shapes (abstract) and that is thus necessary to make accommodation for this when designing caps and other hats (col. 2, lines 46-48). For example, Figueroa shows a cap with a non-cylindrical surface shaped as defined by a portion of an ellipse wherein a first distance defined from the center point of the ellipse to the non-cylindrical surface of the cap nearest to the cap brim is along the minor axis of the ellipse (as shown in Fig. 8B), which generally matches the shape of the non-cylindrical surface of Figueroa’s first mandrel, whereas Rinaldi shows a differently-shaped cap with a non-cylindrical surface shaped as defined by a portion of an ellipse wherein a first distance defined from the center point of the ellipse to the non-cylindrical surface of the cap nearest to the brim is along the major axis of the ellipse (as shown in Fig. 3), which generally matches the recited shape of the non-cylindrical surface of the claimed first mandrel.
Therefore, in view of Rinaldi’s teachings and the above considerations, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the shape of the non-cylindrical surface of Figueroa’s first mandrel to utilize a first distance greater than the second distance wherein the first distance is along the major axis of the ellipse and the second distance is along the minor axis of the ellipse (i.e. the recited shape features) in order to predictably conform better to a cap having this shape, such as the one taught by Rinaldi.
Regarding claims 2 and 13, Figueroa implicitly teaches the minor axis is orthogonal to the major axis (implicit for all ellipses).
Figueroa does not teach that the major axis extends in a generally vertical direction of the applicator, however the modification of Figueroa discussed above in the rejections of claims 1 and 12 would result in the major axis extending in a generally vertical direction of the applicator and is obvious for the reasons given above.
Regarding claims 3 and 14, Figueroa teaches the second mandrel has a concave curved surface opposing the curved, non-cylindrical surface of the first mandrel and is shaped with a different curvature than the ellipse (as shown for the bottom surface of second mandrel 220 in Fig. 7A).
Regarding claims 4 and 15, Figueroa teaches defining the second mandrel by a portion of one of a circle and an ellipse having a second center point (implicit per Fig. 7A), and defining a third distance from the second center point of the circle or ellipse to a first surface of the second mandrel, wherein the third distance is greater than the first distance (as shown implicitly in Fig. 7A).
Regarding claims 5 and 16, Figueroa teaches positioning the heater further comprises positioning the heater in the second mandrel (para. 0034).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Figueroa in view of Rinaldi, as applied to claim 1 above, in view of Cordoba (EP2606761).
Regarding claim 9, Figueroa teaches a first support that supports the first mandrel (black box below region 260 in Fig. 7), but does not explicitly teach the other features in these claims.
However, Cordoba teaches a heated applicator useful for cap logo applications (paras. 0002-0003 & Fig. 3) comprising providing a heater arm (30) that supports the second mandrel (as shown);
providing a column support that supports the heater arm (column region below 3); and
providing a pivot located at a pivot point between the heater arm and the column support (pivot point 3).
The courts have held that combining prior art elements according to known methods to yield predictable results is sufficient to establish a prima facie case of obviousness. See MPEP §2143.I (rationale A) and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
In view of Cordoba’s teachings and/or KSR rationale A, it would have been obvious to one of ordinary skill in the art at the time of filing to combine Cordoba’s structures with Figueroa’s applicator to predictably obtain capability to pivot the upper mandrel/heater to and from the lower mandrel for ease of loading a cap onto the mandrel and/or maintenance and interchangeability of accessories.
Allowable Subject Matter
Claims 10-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and all intervening claims.
Response to Arguments
Applicant's arguments filed 11/13/2025 have been fully considered and are addressed in the sections above and following.
Applicant’s arguments regarding the features added to claims 1 and 12 by the present amendment are moot in view of the new grounds of rejection for these claims presented above.
Conclusion
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/JRS/
Examiner
Art Unit 1745
/JIMMY R SMITH JR./Examiner, Art Unit 1745