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 .
Response to Arguments
Applicant’s arguments of May 18, 2026 (“Remarks”) have been fully considered, but are not persuasive. Applicant has made substantive arguments based upon the cited references Carey, Miyake, and Chapman, which will be addressed in turn.
--- Rejections Based Upon Carey ---
Applicant argues that cited reference Carey fails to disclose or suggest the newly-recited limitation of independent Claim 1: wherein a height of the device is 0.084 inches to 0.72 inches (see pages 5-6 of the Remarks). As Applicant recognizes, and the Office concedes, Carey’s only explicit disclosure of a height for the device is “about 2 inches” (see paragraph [0040] and FIGS. 1-11 of Carey showing a pavement marker having a capital letter “I” shaped profile, e.g., the device shown by reference numerals 100, 200, 400, 500, 600). Thus, the newly-claimed height is shorter than what is explicitly mentioned by Carey. The issue at hand, therefore, is whether it would have been obvious to select a height as low as 0.72 inches for the device of Carey.
As a preliminary matter, the Office notes that Carey explicitly points out that the dimensions of the device are not restricted in any manner, so long as the device still provides utility in delineating traffic lanes (see paragraphs [0003], [0024], [0040] of Carey). Thus, Carey does contemplate larger or smaller dimensions, such as taller or shorter heights for the device.
Nonetheless, Applicant argues that selecting a height as low as the claimed 0.72 inches would not be an obvious modification of Carey because such modification would render Carey unsatisfactory for its intended purpose and change its principle of operation (see page 6 of the Remarks, citing to MPEP § 2143.01, Sections V and VI, which find their authority in In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) and In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959)). Specifically, Applicant argues that the height of the device in Carey is a “critical feature” for a “rebound function” (avoiding damage to tires or the device) and “visibility over surface conditions such as dirt, sand, ice, snow, water, etc.”, and cites to paragraphs [0027] and [0038] of Carey to support such assertions.
The Office disagrees that such teachings are present, and that such conclusions can be drawn, from the disclosures of Carey.
With respect to paragraph [0027] of Carey, this paragraph does not provide any discussion of height. Paragraph [0027] merely discusses the flexibility of the device, stating that parts of the device may be joined together as a “living hinge” and may exhibit a “rebound” effect in which the device returns to its original configuration (shape) after being run over by an automobile. Carey does not disclose that the flexibility aspects of the device have anything to do with the height of the device.
With respect to paragraph [0038], this paragraph also does not provide any discussion of height. Paragraph [0038] discusses the materials of the device and the thickness of various device components. With respect to thickness, paragraph [0038] merely states that components of the device should have a minimum thickness for maintaining shape, and for returning to such shape, under a variety of road conditions. The only road conditions that are specifically mentioned by Carey are “icy” or “desert”. Carey does not use the phrase “surface conditions” and does not use the terms “dirt”, “sand”, “ice”, or “snow”. The term “water” is only used in a separate section (paragraph [0018]) with respect to shielding a reflective surface from an intentional spraying of water from above, rather than any sort of weather conditions or “surface conditions”.
Applicant appears to assert that Carey teaches the presence of debris or fluids on the road (“dirt”, “sand”, “ice”, “snow”, “water”) which would require a minimum height for the device of Carey to be higher than the claimed 0.72 inches. However, no such teaching appears to be present in Carey. As explained above, the only terms Carey uses with respect to road conditions in paragraph [0038] are “icy” and “desert”. And such terms are used in the context of teachings about materials and their thickness. Thus, when Carey mentions “road conditions”, Carey appears to be discussing the resiliency of the device with respect to temperature or climate, i.e., cold climates or hot climates, rather than transient weather conditions or “surface conditions” relating to debris or fluids being present on the road.
With respect to “visibility”, Carey indicates that visibility is maintained through the device maintaining its shape, and returning (or rebounding) to its original shape (if run over), rather than as a result of any considerations as to a height of the device (see paragraphs [0027], [0038] of Carey). Thus, even if the “rebound function” of Carey can be considered a critical feature (the Office notes that Carey does not use the terms “critical” or “essential”), height is not a critical feature of Carey. Applicant has not explained how lowering the height of the device of Carey to 0.72 inches would “remov[e the] features” of rebound and visibility.
The Office further notes that nowhere in Carey does the term “tall” appear, nor does Carey provide any indication that the device being “tall” is part of an “intended purpose” or “principle of operation” of Carey (see page 6 of the Remarks and compare to the text of Carey). The Office further notes that a lower device height may actually improve a “rebound function” based upon the device undergoing less deformation when run over due to its lower profile.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the device of Carey with a height as low as 0.72 inches because such height would still result in retro-reflective articles that are visible to approaching motorists and thus useful for delineating traffic lanes (see paragraphs [0027], [0038], [0040] of Carey).
Consequently, for the above reasons, Applicant’s arguments with respect to the Carey reference are unpersuasive, and the claims remain rejected based upon the Carey reference.
--- Rejections Based Upon Miyake and Chapman ---
Applicant argues that cited references Miyake and Chapman each fail to anticipate independent Claim 16. More specifically, Applicant argues that because Miyake is from an inventive field which is different from “pavement marking form[s]”, and Chapman fails to disclose “pavement marking form[s]”, these references fail to disclose all of the recited features because the claim limitation “pavement marking [form]” is recited not only in the preamble, but also in the body of the claim (see page 7 of the Remarks).
However, it has been held that the question of whether a reference is analogous art is not relevant to whether that reference anticipates. See MPEP § 2131.05, citing State Contracting & Eng. Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003). Furthermore, it has been held that during patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. See MPEP § 2111, citing Phillips v. AWH Corp., 415 F.3d 1303, 1316; 75 USPQ2d 1321, 1329 (Fed. Cir. 2005).
In the present case, the Office acknowledges that the term “pavement marking form” appears in the body of independent Claim 16 (i.e., after the preamble). However, Applicant has not provided a special definition of the term “pavement marking form” in the specification (see MPEP § 2173.01, Section I). Furthermore, the claim does not recite any steps involving pavement, e.g., there is no recited step of attaching any structure to pavement. Thus, the term “pavement marking form” must be given its broadest reasonable interpretation in light of these considerations.
The preamble of Claim 16 recites a “pavement marking”, indicating that Applicant considers the term “pavement marking” to refer to the overall finished article that is manufactured by the method. The (very generic) word “form” in the term “pavement marking form” does not appear to provide any physical or structural constraints on the term “pavement marking”. Thus, the Office’s present interpretation of the term “pavement marking form” is something akin to “a structure that will become a pavement marking by virtue of attaching a reflective strip thereto”. Under this interpretation, even an article or device that is outside of the field of road/pavement marking articles will qualify as anticipating the claimed invention, so long as the other steps of positioning a reflective strip over a front surface and laser welding the reflective strip to the front surface are met. In the present case, cited reference Miyake satisfies these requirements, even though Miyake is from the field of battery manufacture. Cited reference Chapman is, in fact, from the field of road/pavement marking articles, because Chapman specifically discloses articles suitable for “highway safety applications, such as highway signs and pavement markers” (see at least paragraphs [0003], [0006] of Chapman).
Further, with respect to the claimed “front surface”, Applicant appears to be arguing features which are not claimed. It has been held that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See MPEP § 2145, Section VI, citing In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In the present case, Applicant appears to assert that the claimed “front surface” cannot be “hidden”, e.g., joined to another surface (see page 7 of the Remarks). Thus, Applicant asserts that Chapman fails to disclose the claimed front surface because Chapman’s interface area or seam 23 (see also wall 13 and common edge 14) is a surface of joined tiles (see, e.g., FIGS. 7, 8 of Chapman). However, no such requirement of, e.g., an exposed surface appears to be present in the scope of independent Claim 16. Furthermore, even though a surface of Chapman may be a “joined” surface, such surface (at least of common edge 14) is still a retroreflective surface for light incident at an angle perpendicular to the joined surface, e.g., light traveling in a downward direction based on the article depicted in FIGS. 7, 8 of Chapman.
The Office further notes that Applicant has not provided a special definition of the term “front surface” in the specification (see MPEP § 2173.01, Section I). Furthermore, without claim language relating to any other direction, such as “back”, “upward”, “downward”, there is no orientational requirement imposed by the term “front”. Thus, the term “front surface” appears to merely require “a surface to which a reflective strip may be welded”.
At most, what appears to be required by Claim 16 is a structure capable of use as a pavement marking. Although Miyake relates to batteries, Miyake satisfies such “capable of use” requirement in that the device of Miyake is capable of being placed on pavement, wherein such device would then serve as a marking, delineating one side of the pavement from the other. And in Chapman, road/pavement use is already contemplated in at least paragraphs [0003], [0006] of Chapman, which refer to “highway safety applications, such as highway signs and pavement markers”.
Therefore, Applicant’s arguments with respect to the Miyake and Chapman references are unpersuasive, and the claims remain rejected based upon these references.
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 16, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyake et al., US 2012/0055909 A1, previously-cited.
Regarding Claim 16, Miyake discloses: A method of making a pavement marking, comprising: (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
manufacturing a pavement marking form comprising a front surface for a reflective strip (negative electrode terminal 20 having an upper surface [as depicted in Miyake’s figures] which may be identified as a “front surface”; Abstract and paragraphs [0030], [0036] and FIGS. 1-6 of Miyake);
positioning the reflective strip over the front surface (rivet portion 22 of lead 21 is positioned over negative electrode terminal 20, and may be formed of copper, wherein copper is highly reflective of laser radiation; paragraphs [0039], [0042], [0052] and FIGS. 1, 2, 6 of Miyake); and
laser welding the reflective strip to the front surface (laser welding step S1 includes a step for laser welding the negative electrode terminal 20 and the rivet portion 22 of the negative electrode lead 21; paragraph [0046] and FIGS. 2, 4, 6 of Miyake).
Regarding Claim 18, Miyake discloses the limitations of Claim 16 and further discloses: wherein the front surface is a front-upward angled surface, when a bottom of the form is placed on a road surface (the upper surface of negative electrode terminal 20 faces upward relative to other surfaces/angles of the article of Miyake, and would do so when an opposite side of the device is placed on a road surface; see FIGS. 1, 2, 6 of Miyake).
Regarding Claim 19, Miyake discloses the limitations of Claim 16 and further discloses: wherein the pavement marking comprises a lip overhanging the front surface (rivet portion 22 of lead 21 includes a portion which overhangs the upper surface of negative electrode terminal 20, e.g., welded portions 30 of FIG. 2 of Miyake, and edge portion 25 of FIG. 6 of Miyake; paragraphs [0040], [0077], [0078] and FIGS. 1, 2, 6 of Miyake).
Claims 16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chapman et al., US 2016/0144581 A1, previously-cited.
Regarding Claim 16, Chapman discloses: A method of making a pavement marking, comprising: (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
manufacturing a pavement marking form comprising a front surface for a reflective strip (first tile 24 has surfaces “wall 13” and “common edge 14” depicted at an upper-right side of first tile 24 as shown in FIGS. 6-12 and 16 of Chapman; see especially FIGS. 7, 8 of Chapman);
positioning the reflective strip over the front surface (a left side of retroreflective sheeting / prism elements 12 [part of second tile 25] is positioned over [is brought into contact with and covering] wall 13 and common edge 14 of first tile 24; paragraphs [0067], [0072] and FIGS. 7, 8 of Chapman); and
laser welding the reflective strip to the front surface (first tile 24 and second tile 25 may be secured together at the seam 23 by laser welding; paragraph [0112], [0122] and FIGS. 7, 8 of Chapman).
Regarding Claim 20, Chapman discloses the limitations of Claim 16 and further discloses: wherein the reflective strip is a retroreflective strip (retroreflective sheeting / prism elements 12; paragraphs [0067], [0072] and FIGS. 7, 8 of Chapman).
Claims 21-24 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Takata et al., US 2025/0341659 A1, newly-cited.
Regarding Claim 21, Takata discloses: A retroreflective pavement marking device comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
a top surface and a bottom (optical element 20 has an upper surface and a lower surface; paragraphs [0157]-[0169], [0214], [0215] and FIGS. 8A, 8B of Takata);
a front-upward angled surface (filling portion 84 includes a central portion having a central front-upward angled surface which faces diagonally upward and to the right in FIGS. 8A, 8B of Takata; see especially the central region of the zoomed-in view of FIG. 8B of Takata);
a reflective strip coupled to the front-upward angled surface (reflective body 26 is coupled to the central surface of filling portion 84; FIGS. 8A, 8B of Takata); and
a lip that at least partially overhangs the front-upward angled surface and the reflective strip (an upper region of filling portion 84 partially overhangs the central front-upward angled surface of filling portion 84; FIGS. 8A, 8B of Takata);
wherein the lip overhangs 50% to 99% of the front-upward angled surface (the upper region of filling portion 84 overhangs approximately 75% of the central front-upward angled surface of filling portion 84; see FIGS. 8A, 8B of Takata, and see annotated FIG. 8B of Takada provided below which has been annotated with vertical dashed lines to illustrate the degree of overhang).
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Regarding Claim 22, Takata discloses the limitations of Claim 21 and further discloses: wherein the lip includes a bottom lip surface and a top lip surface (upper region of filling portion 84 includes a lower surface and an upper surface; FIGS. 8A, 8B of Takata) and a second angle is formed between the bottom lip surface and the reflective strip coupled to the front-upward angled surface, wherein the second angle is in a range of 50° to 87° (as illustrated below in the annotated FIG. 8B of Takata, an angle formed between (A) the lower surface of upper region of filling portion 84 and (B) the reflective body 26 coupled to the central surface of filling portion 84 is approximately 85 degrees).
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Regarding Claim 23, Takata discloses the limitations of Claim 21 and further discloses: wherein the device is configured to be a permanent fixture on pavement (optical element 20 is a solid tangible device, which may form part of smart glasses, head mounted display, or goggles, and thus is a device capable of being adhered permanently to pavement; paragraphs [0239]-[0243] and FIGS. 8A, 8B of Takata).
Regarding Claim 24, Takata discloses the limitations of Claim 21 and further discloses: wherein the device is constructed such that reflectivity of the retroreflective strip is maintained at 75% or more for at least three years (reflective body 26 is embedded within the glass or plastic of filling portion 84 and the glass or plastic of base 201, and thus does not appear to be susceptible to any changes to its reflectivity over an indefinite period of time, e.g., maintaining 100% reflectivity for five years; paragraphs [0097], [0164] and FIGS. 8A, 8B of Takata; the Office notes that Applicant appears to be claiming a goal or desired outcome of the invention, without reciting any particular physical structure or chemical composition which would accomplish the desired goal or outcome; and the Office further notes that since Takata discloses a same physical structure and chemical composition as the claimed invention, the device of Takata would have the same durability characteristics as well).
Claim Rejections - 35 USC § 103
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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 1, 2 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Carey et al., US 2017/0356146 A1, previously-cited.
Regarding Claim 1, Carey discloses: A retroreflective pavement marking device comprising (the Office notes that the term “comprising” is an open-ended transitional phrase which permits additional elements or features):
a top surface and a bottom (a pavement marker having a capital letter “I” shaped profile [e.g., 100, 200, 400, 500, 600] has a protective shield [e.g., 102, 202, 402, 502, 602, 702 having an upper surface] and a base [e.g., 106, 206, 406, 506, 606, 706]; paragraph [0019] and FIGS. 1-11 of Carey);
a front-upward angled surface (stand [e.g., 104, 204, 404, 504, 604] has a surface which may be front-facing as shown in FIGS. 1-10 of Carey, or may be front-upward facing as shown in FIG. 11 of Carey; see paragraph [0042] of Carey);
a reflective strip coupled to the front-upward angled surface (reflective tape / reflective portion [e.g., 108, 208, 408, 508, 608] is coupled to the front-facing or front-upward-facing surface of the stand [e.g., 104, 204, 404, 504, 604]; paragraphs [0024], [0025] and see FIGS. 1-7, 11 of Carey, but see especially FIG. 11 of Carey); and
a lip that at least partially overhangs the front-upward angled surface and the reflective strip (protective shield [e.g., 102, 202, 402, 502, 602, 702] overhangs the front-upward-facing surface of the stand [e.g., 104, 204, 404, 504, 604] and reflective tape / reflective portion [e.g., 108, 208, 408, 508, 608]; FIG. 11 of Carey).
Carey does not appear to disclose: wherein a height of the device is 0.084 inches to 0.72 inches.
However, it has been held that mere changes of size or proportion are generally considered an obvious modification of the prior art. More specifically, it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, then the claimed device is not patentably distinct from the prior art device. See MPEP § 2144.04, Section IV, Subsection A, citing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In the present case, independent Claim 1 now recites an upper limit of 0.72 inches for the height of the claimed device. This is shorter than the explicitly disclosed height of the device of prior art reference Carey of “about 2 inches” (see paragraph [0040] and FIGS. 1-11 of Carey). However, Carey merely discloses 2 inches as an exemplary height, and in fact states that the dimensions may be any that are useful for delineating traffic lanes (paragraph [0040] of Carey). Merely scaling down the size of the markers of Carey to about one-third would still result in markers that are useful for delineating traffic lanes, because such scaled-down markers would still function as retro-reflective articles that are visible to approaching motorists.
Furthermore, although Carey’s disclosure of “about 2 inches” is likely what Carey considers to be an optimal range for the device height, it appears that a height of 0.72 inches is still within a workable range of heights for the device of Carey (based upon the explanation in the above paragraphs, and also the explanations in the Response to Arguments section above). See MPEP § 2144.05, Section II, Subsection A, citing In re Aller, 220 F.2d 454, 456; 105 USPQ 233, 235 (CCPA 1955), explaining that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover workable ranges by routine experimentation.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the claimed height of 0.72 inches for the device of Carey because such height would still result in retro-reflective articles that are visible to approaching motorists and thus useful for delineating traffic lanes.
Regarding Claim 2, Carey discloses the limitations of Claim 1 and further discloses: wherein the lip overhangs 50% to 100% of the front-upward angled surface (protective shield [e.g., 102, 202, 402, 502, 602, 702] overhangs 100% of the front-upward-facing surface of the stand [e.g., 104, 204, 404, 504, 604] and reflective tape / reflective portion [e.g., 108, 208, 408, 508, 608]; FIG. 11 of Carey).
Regarding Claim 6, Carey discloses the limitations of Claim 1 and further discloses: wherein the front-upward angled surface is at a first angle with respect to a horizontal plane extending from the bottom of the retroreflective pavement marking device, wherein the first angle is 110° to 145° (the orientation of the front-upward-facing surface of the stand [e.g., 104, 204, 404, 504, 604] may deviate from vertical by about 30 degrees, and thus an angle between the front-upward-facing surface of the stand [e.g., 104, 204, 404, 504, 604] and a horizontal plane extending from the base [e.g., 106, 206, 406, 506, 606, 706] may be about 120 degrees; see paragraph [0042] and FIG. 11 of Carey).
Regarding Claim 7, Carey discloses the limitations of Claim 1 and further discloses: wherein the front-upward angled surface is at a first angle with respect to a horizontal plane extending from the bottom of the retroreflective pavement marking device, wherein the first angle is 120° (the orientation of the front-upward-facing surface of the stand [e.g., 104, 204, 404, 504, 604] may deviate from vertical by about 30 degrees, and thus an angle between the front-upward-facing surface of the stand [e.g., 104, 204, 404, 504, 604] and a horizontal plane extending from the base [e.g., 106, 206, 406, 506, 606, 706] may be about 120 degrees; see paragraph [0042] and FIG. 11 of Carey).
Carey does not appear to explicitly disclose a slightly more inclined angle, such that: the first angle is 125° to 135°.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP § 2144.05, Section II, Subsection A, citing In re Aller, 220 F.2d 454, 456; 105 USPQ 233, 235 (CCPA 1955).
In the present case, the general conditions of a claim are disclosed in the prior art because Carey discloses a device that is intentionally subject to being run over by an automobile and deformed, but has a high degree of flexibility, stating that parts of the device may be joined together as a “living hinge” and which ideally exhibits a “rebound” effect in which the device returns to its original configuration (shape) after being run over by an automobile (see, e.g., paragraph [0027] of Carey).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the slightly more inclined angle of 125° for the device of Carey because such angle appears to be within a workable range of angles, as the surfaces of Carey may encompass a very large range of angles in the course of being run over (i.e., flattened or substantially flattened), as evidenced by the disclosures of at least paragraph [0027] of Carey.
Regarding Claim 8, Carey discloses the limitations of Claim 1 and further discloses: wherein the bottom includes a raised portion with an undercut (mounting surface [e.g., 112, 212, 412, 512] of the base [e.g., 106, 206, 406, 506, 606, 706] may include one or more ridges [e.g., 114, 414, 614] which facilitate retaining a fluid, such as tar, asphalt, epoxy, or other adhesive, to improve the adhesion of the pavement marker to the pavement; paragraph [0020] and FIGS. 1, 4, 6, 8-11 of Carey).
Regarding Claim 9, Carey discloses the limitations of Claim 1 and further discloses: wherein the lip includes a bottom lip surface and a top lip surface and a second angle is formed between the bottom lip surface and the front-upward angled surface, wherein the second angle is in a range of 50° to 130° (protective shield [e.g., 102, 202, 402, 502, 602, 702] includes upper and lower surfaces, and an angle between the lower surface of the protective shield and the front-upward-facing surface of the stand [e.g., 104, 204, 404, 504, 604] may be about 80 to 90 degrees as depicted in FIG. 11 of Carey).
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Carey in view of Ueda et al., US 2017/0357039 A1, previously-cited.
Regarding Claims 3-5, Carey does not appear to disclose: wherein the reflective strip comprises a top layer and an inner retroreflective layer, in which retroreflective geometrical elements are embossed therein, wherein the inner retroreflective layer comprises an acrylate, wherein the top layer comprises a polyurethane.
Ueda is related to Carey with respect to retroreflective articles.
Ueda teaches: wherein the reflective strip comprises a top layer and an inner retroreflective layer, in which retroreflective geometrical elements are embossed therein, wherein the inner retroreflective layer comprises an acrylate, wherein the top layer comprises a polyurethane (retroreflective sheet 100 may include a retroreflective layer 110 including structured surface 114 having a plurality of cube corner elements 112 and comprising a polyfunctional acrylate, and an upper/outer protecting layer 148 comprising polyurethane; paragraphs [0047], [0056], [0059] and FIG. 1 of Ueda).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the composition of Ueda for the retroreflective strip of Carey because the upper/outer polyurethane layer provides weather resistance and chemical resistance required for outdoor use, and the polyfunctional acrylate of the retroreflective layer provides thermal stability, environmental stability, transparency, and excellent peeling properties from tools and molds, as well as adhesion to other layers, as taught in paragraphs [0045], [0056] of Ueda.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Carey in view of Paulson et al., US 2001/0032703 A1, previously-cited.
Regarding Claim 10, Carey discloses the limitations of Claim 1 and further discloses: wherein the reflective strip is coupled to the front-upward angled surface (reflective tape / reflective portion [e.g., 108, 208, 408, 508, 608] is coupled to the front-facing or front-upward-facing surface of the stand [e.g., 104, 204, 404, 504, 604]; paragraphs [0024], [0025] and see FIGS. 1-7, 11 of Carey, but see especially FIG. 11 of Carey). Carey does not appear to explicitly disclose the use of laser welding.
Paulson is related to Carey with respect to retroreflective articles.
Paulson teaches the use of laser welding (joining of retroreflective articles at a joining line 44; paragraphs [0055], [0080] and FIGS. 6-10 of Paulson).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the laser welding of Paulson as a coupling method for Carey because such method provides satisfactory strength, as taught in paragraphs [0055]-[0061], [0071] of Paulson.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Miyake in view of Lindstrom, US Pat. No. 3,802,878, previously-cited.
Regarding Claim 17, Miyake discloses the limitations of Claim 16, but does not appear to explicitly disclose: wherein the manufacturing the pavement marking form comprises: profile extruding a plastic or metal to form an extruded profile; and cutting the extruded profile to form the pavement marking form.
Lindstrom is related to Miyake with respect to battery manufacture.
Lindstrom teaches: wherein the manufacturing the pavement marking form comprises: profile extruding a plastic or metal to form an extruded profile; and cutting the extruded profile to form the pavement marking form (electrode production via extrusion followed by cutting; column 6, lines 49-65 of Lindstrom).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the extrusion and cutting method of Lindstrom for the electrode of Miyake because such method enables “continuous production” [higher throughput], as taught in column 6, lines 49-65 of Lindstrom.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Takata.
Regarding Claim 25, Takata discloses the limitations of Claim 21 but does not appear to explicitly disclose: wherein the device has a height of no more than 0.2 inches [5.08 millimeters].
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP § 2144.05, Section II, Subsection A, citing In re Aller, 220 F.2d 454, 456; 105 USPQ 233, 235 (CCPA 1955).
In the present case, the general conditions of a claim are disclosed in the prior art because Takata discloses that optical element 20 may form part of smart glasses, head mounted display [HMD], or goggles in which miniaturization is a desirable feature [at least for the reasons of reduced bulk and weight on a person’s face and head to support such wearable device]. See, e.g., paragraphs [0006], [0088], [0151], [0208], [0239]-[0243] and FIGS. 8A, 8B of Takata. Takada discloses that several dimensions of the device are ideally provided at low-millimeter scale (see, e.g., paragraphs [0109], [0114], [0161]-[0163], [0177], [0178] of Takata). Takata further discloses a desirability of miniaturization in both Z direction (width in FIGS. 8A, 8B) and Y direction (height in FIGS. 8A, 8B) through different configurations (see, e.g., paragraphs [0088]-[0091] and FIGS. 2A-2D, 8A, 8B of Takata).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a maximum height of 0.2 inches [5.08 millimeters] for the device of Takata in accordance with miniaturization of the device for suitable use in smart glasses, head mounted display [HMD], or goggles, as evidenced by the cited text and figures of Takata.
Examiner Note – Consider Entirety of References
Although various text and figures of the cited references have been specifically cited in this Office Action to show disclosures and teachings which correspond to specific claim language, Applicant is advised to consider the complete disclosure of each reference, including portions which have not been specifically cited by the Examiner.
Conclusion
Applicant’s amendments necessitated the new grounds 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 RYAN S DUNNING whose telephone number is 571-272-4879. The examiner can normally be reached Monday thru Thursday 11:30AM to 4:00PM Eastern Time Zone. 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
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/RYAN S DUNNING/Primary Examiner, Art Unit 2872
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