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 .
Priority
In light of Applicant’s amendments and explanations given in the reply of 02/06/2026, Examiner acknowledges and accepts the claim for priority to 16/768682.
Claim Objections
Claim 37 is objected to because of the following informalities: “including” should be “includes”. Appropriate correction is required.
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.
Claims 17-22 and 37 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 17 recites the limitation "said rear-side UV exposure" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claims 18-22 are rejected based upon their dependency on claim 17.
Claim 37 recites the limitation "the operator" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Appropriate correction and/or clarification is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 32-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mannes (US 2003/0219659). Regarding claim 32, Mannes discloses “a system for identifying a relief precursor (paragraph 43: flexography) or a relief comprising a carrier and a relief-forming layer, the system comprising an optical reading device (item 23) configured to read a code” on the plate which has information related to the processing of the plate (paragraph 27); the system further comprising a plate processor device (item 7) and a transmission means for transmitting said code from the reading device to the plate processing device (paragraph 27) and use information for processing said identified type of relief precursor or relief (paragraph 27). Mannes does not specifically disclose that the information in the code is used to identify the type of relief precursor or relief, or that the plate processing device is configured to retrieve, based on said code, from a database associated process-relevant data for processing said identified type of relief precursor or relief. However, Mannes does disclose that the information is “related” to the processing of the plate(paragraph 27), and that information related to the precursor can be stored in a data store, and used by the controller to process the relief precursor (paragraph 26, claims 1, 17, and 18). Mannes further discloses that the information is written into the plate in the form of a “code” (paragraph 27) which must implicitly be ‘de-coded.’ Furthermore, Mannes discloses “transferring a type identifier to processor 7 for or with each plate (paragraph 36).” Examiner asserts that one having ordinary skill in the art could at once envisage that the “information related to the processing of the plate” would include the type of plate, as shown in paragraph 21. Thus, in such a scenario, it would be necessary for the controller to retrieve from the database the information for processing based upon the type of precursor read by the reader device in order to process the plate based upon the coded information.
Regarding claim 33, Mannes further discloses “wherein the process-relevant data for processing the relief precursor or the relief comprise at least one of the following: exposure conditions, ablation conditions, temperature conditions, cleaning conditions, development conditions, drying conditions, storage conditions, device configurations and settings, priority in the process flow and any combination thereof (paragraph 21).” Regarding claim 34, Mannes further discloses “wherein the database is an updated database (paragraph 21: data store is interpreted to read on this limitation).” Regarding claim 35, Mannes further discloses “wherein the code is representative of data relating to a type of relief precursor among any one of the following: an article number, a batch number, an identification number, information relating to the thickness of the plate or a layer, information relating to length and width, type or any desired combinations thereof (paragraph 21).”
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 17-29 and 32-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9, and 10 of U.S. Patent No. 12076974. Although the claims at issue are not identical, they are not patentably distinct from each other because even though the instant claims are drawn to a system, the method claims of the patent necessarily would require a system to carry out the method. Furthermore, the specific components recited in the instant claims, such as a laser image, scanner, etc., would be components known to one having ordinary skill in the art to be suitable for each task, and would be motivated to use them because of their suitability. See MPEP §2144.07.
Response to Arguments
Applicant's arguments filed 02/06/2026 have been fully considered but they are moot in view of the new grounds of rejection.
Examiner notes that in the reply filed 08/05/2025, Applicant stated that a Terminal Disclaimer was filed concurrently. However, no Terminal Disclaimer was found to be filed. Thus, the Double Patenting rejection is made over the instant claims.
Applicant’s arguments with respect to Mannes are not persuasive. Examiner maintains that Mannes intended for the database and the code in the plate to be used together. Mannes discloses “transferring a type identifier to processor 7 for or with each plate to be processed by processor 7 (paragraph 36).” Examiner interprets the this to mean that when the type identifier is transferred with each plate, the type identifier is located on the plate, vis-à-vis the code. In such instance, the type identifier would have to be correlated with the table of processing parameters in order to properly process the plate.
Thus, it is still deemed that the claims are not patentable in view of Mannes.
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 JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853
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