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 .
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 (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 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.
Claims 1-5, 7-8, & 10-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Macor (US PG Pub 2021/0187823; hereafter ‘823).
Claim 1: ‘823 is directed towards a method for producing a workpiece with a structured layer on a support member (see Fig. 1 and Title), comprising the steps:
a providing step: providing a support member, which has a liquid and curable layer on the support member surface (see Fig. 1; abstract);
an applying step: applying a masking agent onto the liquid and curable layer such that the masking agent has a first layer thickness at a first location on the liquid and curable layer and that the masking agent has a second layer thickness at a second location on the liquid and curable layer, wherein the first layer thickness is greater than the second layer thickness (the masking agent has a curved cross-section and thus has a first and second location on the layer wherein the first thickness is greater than the second thickness; see Fig. 1; abstract);
curing step: curing the liquid and curable layer, wherein material of the liquid and curable layer at the first location below the masking agent applied at the first location does not cure or cures less than material of the liquid and curable layer at the second location below the masking agent applied to the second location (see Fig. 1; ¶s 22-30, 34, 72, & 74, the masked region can be a mixture of A & B of ‘823 which solidifies and not polymerizes (i.e. does not cure) and is removed at the next step, ¶s 35-38 & 48); and
removing step: removing uncured material of the liquid and curable layer, that the cured material of the liquid and curable layer forms the structured layer with a height profile on the support member (see Fig. 1, abstract, ¶s 22-30, 34, & 72).
Claim 2: The height profile at the first location has a lower height than at the second location (see Fig. 1).
Claim 3: The first location and the second location are directly adjacent to each other (the first and second location are arbitrary on the droplet and thus can be chosen to be directly adjacent to each other).
Claim 4: The first location or the second location is located at an edge of the layer (the locations are on the surface and thus an edge of the layer).
Claim 5: The first location and the second location extend along a first direction parallel to the support member surface (the first and second locations are arbitrary and thus can be chosen such that they extend along a first direction parallel to the support member).
Claim 7: The height profile is shaped as a rounding (see Fig. 1).
Claim 8: The height profile has different heights along a second direction which is perpendicular to the first direction and which runs parallel to the support member surface (see Fig. 3).
Claim 10: The masking agent is applied onto partial areas of the liquid and curable layer and at least a third location of the liquid and curable layer remains uncovered by the masking agent (see Fig. 1).
Claim 11: The masking agent is applied onto the liquid and curable layer in liquid form (abstract).
Claim 12: The masking agent is applied as droplets onto the layer using inkjet (see Fig. 1).
Claim 13: The liquid and curable layer is partially dried or cured before masking to allow the masking agent to be carried by the liquid and curable layer (abstract).
Claim 14: The curing step comprises curing by radiation (¶ 94).
Claim 15: The removal of uncured material of the liquid and curable layer is carried out mechanically (¶s 98-99).
Claim 16: The liquid and curable layer is applied onto the support member (see Fig. 1).
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.
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.
Claims 6 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over ‘821.
Claim 6: ‘821 teaches that the structures formed can be used as flooring (¶ 3).
‘821 does not teach details regarding using the structural material as flooring or teach separating the support material with the cured liquid and curable layer thereon along the first direction by a separating tool.
However, it is well known in the art of flooring to cut pieces of flooring along the first direction with a saw to the desired dimensions to fit the flooring application.
It would have been obvious to one of ordinary skill in the art at the time of filing to further cut the structural material along the first direction to obtain the desired fit when applying the flooring material because it is an art recognized installation process and would have predictably produced the flooring material in the desired shapes.
It would have been obvious to one of ordinary skill in the art at the time of filing to perform the cuts at the location of the structuring performed by the masking process because one would have chosen locations for the cut to obtain the desired result of fitment.
Claim 9: The height profile has different heights along a second direction which is perpendicular to the first direction and which runs parallel to the support member surface, the height profile rises along the second direction, starting from a cutting edge produced by the separating tool produced by the separating tool.
Response to Arguments
Applicant's arguments filed 2/24/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that claim 1, as amended, requires applying a “continuous or substantially continuous covering” masking agent; the Office does not find this argument convincing because the claim limitations of “a masking agent” with a a “first layer thickness as a first location” and “a second layer thickness at a second location” does not require a continuous covering nor any percent covering specifically. Instead, the plain language only requires that the masking layer comprises at least two different layer thickness at different locations on the surface and as noted above, a droplet as taught by the prior art inherently reads on the limitation because at a first location on the surface there will be a different layer height than a second location on the drop.
In regards to applicant’s argument that individual discrete drops are not a layer of variable thickness; this argument is not found convincing because a droplet has a semicircular cross-section which is inherently a variable thickness layer.
In regards to applicant’s argument that “a layer” is a continuous or substantially continuous sheet of material; this argument is not found convincing because the original disclosure does not define “layer” as proposed and applicant’s own disclosure provides that individual droplets read on the masking layer (see masking agent 3 in Fig. 2b). The term does not define a coverage but instead that there is a material present on another and there can be continuous and discontinuous layers. Does applicant intend to claim that the masking agent is a continuous coating covering the entirety of the surface?
In regards to applicant’s argument that ‘823 does not differentially shield the liquid and curable layer the same way as the instant claims and therefore does not anticipate; the Office does not find this argument convincing because similar materials and process are used and the same results are obtained which implies that the same mechanism is present even though it is not explicitly noted in the prior art. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property. The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
In regards to applicant’s argument that ‘823 teaches an embossing which displaces and does not remove the uncured and shield material as claimed because there is no shielding or attenuating of radiation; applicant is advised that the claims do not recite this mechanism and instead only require that the masking agent masks such that the masked region does not cure or cures less than the unmasked region and thus it is apparent that the process of ‘823 reads on the recited claims.
In regards to applicant’s argument that ‘823 does not shield the underlying layer to prevent curing of the underlying layer which is subsequently removed; the Office does not find this argument convincing because ‘823 teaches that the masking agent can mix with the underlying layer to prevent curing and instead only solidifies (i.e. not cured) and this uncured portion is removed which includes material of the underlying layer (see ¶s 35-38 & 48).
Conclusion
THIS ACTION IS MADE FINAL. 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 JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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