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 .
Examiner’s Comments
Applicants’ response filed on 6/20/2025 has been fully considered. Claim 9 is cancelled and claims 1-8 and 10-17 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/5/2026 has been entered.
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.
Claims 8 and 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Soethout (DE 3539078 A1).
Regarding claim 8, Soethout discloses a print product composed of a printed carrier material having an image motif (material may form a portrait or pattern, which is a print product; claim 1, first paragraph of the description, and the text corresponding to figure 1).
wherein a material thickness of the printed carrier material, which is uniform over an areal extent of the printed carrier material, is up to two millimeters (the tapes are made of less than 0.1 mm thick plastic or metal foils; paragraph [0008]).
wherein the print product has a first print region and a second print region on the printed carrier material which differ from each other (opaque color coating on the tapes and wickerwork comprising bands on the longitudinal direction and bands in the transverse direction; Figs. 1 and 3 #1; paragraph [0004]),
wherein the first and second print regions are each based on the image motif, and each of the first and second print regions at least partially reproduce the image motif (opaque color coating on the tapes and wickerwork comprising bands on the longitudinal direction and bands in the transverse direction; Figs. 1 and 3 #1; paragraph [0004]),
wherein longitudinal strips of the printed carrier material are provided in the first print region and transverse strips of the printed carrier material and provided in the second print region to thereby define a woven areal weaving pattern comprising the longitudinal strips and the transverse strips which are crossed at right angles with respect to one another (opaque color coating on the tapes and wickerwork comprising bands on the longitudinal direction and bands in the transverse direction; Figs. 1 and 3 #1; paragraph [0004]),
wherein a first coordinate direction is defined by a strip longitudinal direction of the longitudinal strips, wherein the longitudinal strips are parallel to one another (bands in the longitudinal direction; Figs. 1 and 3 #1; paragraph [0004]), and wherein a second coordinate direction is defined by a strip longitudinal direction of the transverse strips, wherein the transverse strips are parallel to one another (bands in the transverse direction; Figs. 1 and 3 #1; paragraph [0004]),
wherein the longitudinal strips and the transverse strips are separated from one another in the strip longitudinal direction (bands in the longitudinal direction and bands in the transverse direction; Figs. 1 and 3 #1; paragraph [0004]),
wherein a visible side of the woven areal weaving pattern is visible to a person as a reproduction of the image motif (visible side of finished woven weaving pattern; Figs. 1 and 3 #1; paragraph [0004]),
wherein all of the longitudinal strips that run in parallel in the first coordinate direction of the woven areal weaving pattern are arranged in the first print region, and all of the transverse strips that run in parallel in the second coordinate direction of the woven areal weaving pattern are arranged in the second print region (bands in the longitudinal direction and bands in the transverse direction; Figs. 1 and 3 #1; paragraph [0004]).
The limitation that the print product is produced by a digital printing method on the basis of data relating an image motif, the first print region and the second print region coordinated with one another such that the image motif is completely and correctly reproduced on the visible side of the woven areal weaving pattern, the image motif is divided into a multiplicity of quadrilateral image sections and wherein an identical distance in the first coordinate direction is always provided between two adjacent image sections on the longitudinal strips, and the identical distance depends on the material thickness of the printed carrier material are product-by-process limitations.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). The image formed in the product reads upon an image motif. The limitations that the overall image motif is divided into a multiplicity of quadrilateral image sections, wherein the first print region serves to provide all the longitudinal strips, the longitudinal axis of which run in the first coordinate direction, wherein account is always taken of an identical distance on the longitudinal strip in the first coordinate direction between two adjacent image sections on the longitudinal strip, the distance being dependent on the material thickness of the carrier material are product-by-process limitations.
Similarly, the limitation that each print region at least partially reproduces the image motif is a product-by-process limitation met by the printed material taught in Soethout. The visible side of the finished woven weaving pattern is visible to a person viewing the image motif. The first print region and the second print region of the print product has the longitudinal strips running in parallel in the first coordinate direction of the weaving pattern. The transverse strips running in parallel in the second coordinate direction of the weaving pattern form the second print region, wherein the first print region of the print product and the second print region of the print product are designed to be coordinated with one another in such a way that, in the finished weaving pattern, an image motif is formed on the visible side of the weaving pattern.
The limitation of a print product is a preamble limitation. The wickerwork is a print product, however, for the presently claimed product, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. print product, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art of Soethout and further that the prior art structure which is a wickerwork is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
Soethout does not disclose the print product comprising the identical distance on the longitudinal strip between two adjacent image sections on the longitudinal strip is calculated from the thickness of the carrier material multiplied by a factor, the factor having a value between 5.5 and 8.5.
However, it would have been obvious to one ordinary skill in the art to adjust the identical distance on the longitudinal strip between two adjacent image sections on the longitudinal strip is calculated from the thickness of the carrier material multiplied by a factor having a value between 5.5 and 8.5 because doing so would provide the desired image for the wickerwork of Soethout.
Regarding claim 10, Soethout discloses the print product of claim 8 and Soethout discloses the print product comprising longitudinal strips having opposite parallel longitudinal edges separated from adjoining regions of print product (wickerwork comprising bands in the longitudinal direction and bands in the transverse direction and bands in the longitudinal direction have opposite parallel longitudinal edges separated from adjacent bands in the longitudinal direction; Fig. 1 #1; paragraph [0004]).
Regarding claim 11, Soethout discloses the print product of claim 8 and Soethout discloses the print product comprising transverse strips having opposite parallel longitudinal edges separated from adjoining regions of the print product (wickerwork comprising bands in the longitudinal direction and bands in the transverse direction where the bands in the transverse direction have opposite parallel longitudinal edges separated from adjacent bands in the transverse direction; Fig. 1 #1; paragraph [0004]).
Regarding claim 12, Soethout discloses the print product of claim 8 and Soethout discloses the print product comprising an end portion of the longitudinal strip connected to a region of the print product that adjoins one of the longitudinal strips (bands in the longitudinal direction and bands in the transverse direction and wherein both sides of the tape are connected with an adhesive strip and sealed with elastic liquid plastic (Fig. 1 #1; paragraphs [0004] and [0007]).
Regarding claim 13, Soethout discloses the print product of claim 8 and Soethout discloses the print product comprising an end portion of at least one transverse strip connected to a region that adjoins another one of the transverse strips (wickerwork comprising bands in the longitudinal direction and bands in the transverse direction and wherein both sides of the tape are connected with an adhesive strip and sealed with elastic liquid plastic (Fig. 1 #1; paragraphs [0004] and [0007]).
Regarding claim 14, Soethout discloses the print product of claim 8 and Soethout discloses the print product comprising a marking is provided in an extension portion of an end of a longitudinal strip and/or in an extension portion of an end of a transverse strip, which corresponds to a position of a respective one of the longitudinal and transverse strips in the first coordinate direction and/or the second coordinate direction (wickerwork comprising the bands each having a simple color coding; Fig. 3; paragraph [0004]).
Regarding claim 15, Soethout discloses the print product of claim 8 and Soethout discloses the print product comprising information outside the region of the longitudinal strip or outside the region of the transverse strip (wickerwork comprising the bands each having a simple color coding; Fig. 3; paragraph [0004]).
Regarding claim 16, Soethout discloses a woven weaving pattern composed of strips of a carrier material (wickerwork having tapes; paragraph [0004]).
wherein a material thickness of the carrier material is uniform over an areal extent of the printed carrier material, is up to two millimeters (the tapes are made of less than 0.1 mm thick plastic or metal foils; paragraph [0008]).
wherein the woven weaving pattern is formed from longitudinal strips and transverse strips which are crossed at right angles and woven together in a first coordinate direction of the longitudinal strips, which are parallel to one another, and a second coordinate direction of the transverse strips, which are parallel to one another (bands in the longitudinal direction and bands in the transvers direction; Fig. 1 #1; paragraph [0004]),
wherein the longitudinal strips and the transverse strips are made of a print product, and define printed carrier material strips which are separated from one another in a strip longitudinal direction (bands in the longitudinal direction and bands in the transvers direction; Fig. 1 #1; paragraph [0004]),
wherein the print product has a first print region in which all of the longitudinal strips running in parallel in the first coordinate direction of the weaving pattern are arranged, and a second print region in which all of the transverse strips running in parallel in the second coordinate direction of the weaving pattern are arranged (bands in the longitudinal direction and bands in the transvers direction; Fig. 1 #1; paragraph [0004]),
wherein the print product has a first print region and a second print region on the printed carrier material which differ from each other (opaque color coating on the tapes and wickerwork comprising bands on the longitudinal direction and bands in the transverse direction; Figs. 1 and 3 #1; paragraph [0004]) and
wherein all of the longitudinal strips are provided in the first print region and a longitudinal axis of the longitudinal strips run in the first coordinate direction (opaque color coating on the tapes and wickerwork comprising bands on the longitudinal direction and bands in the transverse direction; Figs. 1 and 3 #1; paragraph [0004]).
The limitations of a visible side of the woven weaving pattern is visible to a person as a reproduction of an image motif, the first print region and the second print region are coordinated with one another such that the image motif is completely and correctly reproduced on the visible side of the woven weaving pattern, the image motif is divided into a multiplicity of quadrilateral image sections and an identical distance in the first coordinate direction is always provided between two adjacent image sections on the longitudinal strips, and the identical distance depends on the material thickness of the printed carrier material are product-by-process limitations.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). The image formed in the product reads upon an image motif. The limitations that the overall image motif is divided into a multiplicity of quadrilateral image sections, wherein the first print region serves to provide all the longitudinal strips, the longitudinal axis of which run in the first coordinate direction, wherein account is always taken of an identical distance on the longitudinal strip in the first coordinate direction between two adjacent image sections on the longitudinal strip, the distance being dependent on the material thickness of the carrier material are product-by-process limitations.
Soethout does not disclose the woven weaving pattern comprising the identical distance on the longitudinal strip between two adjacent image sections on the longitudinal strip is calculated from the thickness of the carrier material multiplied by a factor, the factor having a value between 5.5 and 8.5.
However, it would have been obvious to one ordinary skill in the art to adjust the identical distance on the longitudinal strip between two adjacent image sections on the longitudinal strip is calculated from the thickness of the carrier material multiplied by a factor having a value between 5.5 and 8.5 because doing so would provide the desired image for the wickerwork of Soethout.
Regarding claim 17, Soethout discloses a woven weaving pattern of claim 16 as noted above and Soethout discloses the weaving pattern comprising a framed border of the weaving pattern provided and framed border adjoining longitudinal ends of the longitudinal strips and adjoining longitudinal ends of the transverse strips; (the wickerwork comprising a frame area; paragraph [0013]).
Regarding claim 18, Soethout discloses the print product of claim 8 as noted above and Soethout discloses the print product comprising the carrier material selected from plastic (the tapes are made of less than 0.1 mm thick plastic foils; paragraph [0008]).
Regarding claim 19, Soethout discloses the weaving pattern of claim 16 as noted above and Soethout discloses the weaving pattern comprising the carrier material selected from plastic (the tapes are made of less than 0.1 mm thick plastic foils; paragraph [0008]).
Response to Arguments
Applicant's arguments filed 1/5/2026 have been fully considered but they are not persuasive.
Applicants argue that Soethout does not disclose the identical distance on the longitudinal strip between two adjacent image sections on the longitudinal strip is calculated from the thickness of the carrier material multiplied by a factor, the factor having a value between 5.5 and 8.5.
This argument is not persuasive as these limitations are obvious to one of ordinary skill in the art based on the wickerwork of Soethout as one would be able to adjust the identical distance for each of the longitudinal strips such that it is calculated from the thickness of the carrier material multiplied by a factor having a value between 5.5 and 8.5 and because doing so would provide the desired image for the wickerwork of Soethout.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785