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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6 and 10 -15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim 1 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicants amended limitation of the solid particles in the non-settling slurry are sufficiently small to remain in suspension is new matter. Applicants’ original specification does not include any discussion or mention of particle size or any mention of being “sufficiently small”.
Claims 2-6 and 10-15 are rejected for dependence from rejected claim 1.
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 1-6 and 10-15 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.
The term “sufficiently small” in claim 1 is a relative term which renders the claim indefinite. The term “sufficiently small” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. One skilled in the art would not be appraised of what size is required by the claim.
Claims 2-6 and 10-15 are rejected for dependence from rejected claim 1.
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, 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.
Claims 1, 3, 4, 6, 10, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) in view of Applicant affidavit by Klaus Sedlbauer of submitted 7/24/21.
Regarding claim 1, Kolowich teaches a container (element 10) comprising an inner container wall (element 16) and an outer container wall (element 18) wherein an intermediate space (element 20) is between the container walls, wherein the intermediate space is filled with a mixture (Para. 0080) that comprises a phase-change material and graphite powder (para. 0080), wherein the graphite powder comprises a plurality of solid particles of graphite (inherent in the “graphite powder as a powder is inherently a solid and is made of graphite).
Kolowich does not expressly teach the mixture is a non-settling slurry at a temperature at which the phase-change material is liquid. It would be inherent feature that the mixture would be a non-settling slurry at a temperature at which the phase change material is liquid as the graphite powder would have a different melting point, which is a known inherent characteristic of the powder, from the phase change material which is taught in Para. 0052 thus creating slurry.
Kolowich does not expressly teach that the liquid phase change material does not separate from the graphite power and collect due to the force of gravity in a bottom region of the container because the solid particles in the non-settling slurry are sufficiently small to remain in suspension, thus is a non-settling slurry. Applicant affidavit by Klaus Sedlbauer of submitted 7/24/21 applicant admits that:
3. One skilled in the art at the time of the invention would have known that phrase "a mixture comprising a phase-change material and a graphite powder, wherein the mixture is a slurry at a temperature at which the phase-change material is liquid and the liquid phase change material does not separate from the graphite power and collect due to the force of gravity in a bottom region of the container" refers to what is known in the art as a "non-settling slurry."
It would have been obvious to one skilled in the art at the time of invention to incorporate this known technology into the mixture of Kolowich, the motivation to do so would be to Kolowich’s teachings and goals of maintaining the powder dispersed in the phase change material (para. 0080,) and it also teaches this is to be reusable (para. 0009), the size of the particles having a size that does not separate out would be inherent feature of the non-separation as would all physical aspects that would lead to such non-separation (size, density, etc.).
Regarding claim 3, Kolowich teaches the phase-change material comprises a fatty acid (Para. 0052).
Regarding claim 4, Kolowich teaches the phase-change temperature of the phase-change material lies in a range of about 60 degrees Celsius to about 70 degrees Celsius (Para. 0052 teaches an overlap with this range).
Regarding claim 6, Kolowich teaches the inner container wall has a thermal conductivity of at least 10 W/mK (Para. 0050 teaches it having a thermal conductivity of 237 W/mK).
Regarding claim 10, Kolowich teaches the container is a beverage container (Fig. 1).
Regarding claim 12, Kolowich teaches the phase-change material consists of stearic acid (para. 0052).
Regarding claim 13, Kolowich teaches the inner container wall has a thermal conductivity of at least 20 W/mK (Para. 0050 teaches it having a thermal conductivity of 237 W/mK).
Claims 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) in view of Applicant affidavit by Klaus Sedlbauer of submitted 7/24/21, and in further view of Bernardi (U.S. Patent 4,151,923).
Regarding claim 2, Kolowich does not expressly teach the ratio of a useful container volume to mixture volume amounts to 10:1 to 10:10. Bernardi teaches the ratio of a useful container volume to mixture volume amounts to 10:1 to 10:10 (example 2, Col. 6, ln 14-27; useful container volume 82.5 cu. cm. and mixture volume 53 cu. cm.). It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use the ratio of container volume to mixture volume taught by Bernardi, the motivation to do so would be to have a predetermined cooling effect on an amount of drinking fluid (Col. 3, ln 6-10).
Regarding claim 11, Kolowich does not expressly teach the ratio of a useful container volume to mixture volume amounts to 10:5 to 10:7. Bernardi teaches the ratio of a useful container volume to mixture volume amounts to 10:5 to 10:7 (example 2, Col. 6, ln 14-27; useful container volume 82.5 cu. cm. and mixture volume 53 cu. cm.). It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use the ratio of container volume to mixture volume taught by Bernardi, the motivation to do so would be to have a predetermined cooling effect on an amount of drinking fluid (Col. 3, ln 6-10).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) in view of Applicant affidavit by Klaus Sedlbauer of submitted 7/24/21, and in further view of Sedlbauer et al. (U.S. PGPub 2010/0108694).
Regarding claim 5, Kolowich does not expressly teach a structure is present in the intermediate space which contributes to mechanical stability, wherein the structure can be a constituent of the inner and/or the outer container wall. Sedlbauer teaches a structure (element 7) is present in the intermediate space which contributes to mechanical stability (abstract). Examiner notes that the claim language “wherein the structure can be a constituent of the inner and/or the outer container wall” is not a positive limitation as the language “can be” makes it optional and not required. It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use support structure of Sedlbauer, the motivation to do so would be to support the structure (Para. 0008).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) in view of Applicant affidavit by Klaus Sedlbauer of submitted 7/24/21, and in further view of Kennedy et al. (U.S. Patent 3,120,570) and Casey (U.S. patent 8,950,154).
Regarding claim 14, Kolowich does not expressly teach the outer container wall has a thermal resistance of at least 0.01 m2K/W. Kennedy teaches the container wall has a thermal resistance of at least 0.01 m2K/W (as it teaches a container wall filled with 1/8" of foaming plastic, which is greater than applicants taught "normal plastic" of 2mm; further by calculation (it is known that polyurethane has a thermal conductivity of .02 see Casey-U.S. Patent 8,950,154) thus a thermal resistance of 0.155 m2K/W It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use the insulating container elements of Kennedy, the motivation to do so would be insulate the wall form the surrounding environment (Col. 3, ln 29-31).
Regarding claim 15, Kolowich does not expressly teach the outer container wall has a thermal resistance of at least 0.1 m2K/W. Kennedy teaches the container wall has a thermal resistance of at least 0.1 m2K/W (as it teaches a container wall filled with 1/8" of foaming plastic, which is greater than applicants taught "normal plastic" of 2mm; further by calculation (it is known that polyurethane has a thermal conductivity of .02 see Casey-U.S. Patent 8,950,154) thus a thermal resistance of 0.155 m2K/W It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use the insulating container elements of Kennedy, the motivation to do so would be insulate the wall form the surrounding environment (Col. 3, ln 29-31).
Claims 1, 3, 4, 6, 10, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) and Mehta et al. (U.S. PGPub 2015/0274928).
Regarding claim 1, Kolowich teaches a container (element 10) comprising an inner container wall (element 16) and an outer container wall (element 18) wherein an intermediate space (element 20) is between the container walls, wherein the intermediate space is filled with a mixture (Para. 0080) that comprises a phase-change material and graphite powder (para. 0080), wherein the graphite powder comprises a plurality of solid particles of graphite (inherent in the “graphite powder as a powder is inherently a solid and is made of graphite).
Kolowich does not expressly teach the mixture is a non-settling slurry at a temperature at which the phase-change material is liquid and the liquid phase change material does not separate from the graphite powder and collect due to the force of gravity in a bottom region of the container because the solid particles in the non-settling slurry are sufficiently small to remain in suspension. It would be obvious that the mixture taught would be a non-settling slurry at a temperature at which the phase change material is liquid as the graphite powder would have a different melting point, which is a known inherent characteristic of the powder, from the phase change material which is taught in Para. 0052 thus creating slurry.
Mehta teaches a phase change material that includes a graphite powder (Para. 0040), and that this mixture does not separate from the graphite powder and collect (Para. 0041-0042). It would have been obvious to one having ordinary skill in the art at the time of filing that the pcm mixture of Kolowich could be modified use the teachings of Mehta such that the liquid phase change material does not separate from the graphite powder and collect due to the force of gravity in a bottom region of the container, the motivation to do so would be to prevent non-uniform heating in phase change material (para. 0041). Note the size of the particles having a size that does not separate out would be inherent feature of the non-separation as would all physical aspects that would lead to such non-separation (size, density, etc.) teaching of the prior art.
Further the claimed mixture would have been obvious to one having ordinary skill in the art at the time the invention was made to determine the optimum mixture claimed in claim 1 for the claimed effect of non-settling slurry consistency that does not separate, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. MPEP 2144.05(II).
Examiner notes that the rejection based on Kolowich and Mehta is done for the purposes of compact prosecution and does not counter the 103 rejection based solely on Kolowich but is done on the expectation of arguments against the rejection (with no expectations of the detail or form of such arguments), and in the interest of compact prosecution provide alternative rejections in a timely manner to applicant.
Regarding claim 3, Kolowich teaches the phase-change material comprises a fatty acid (Para. 0052).
Regarding claim 4, Kolowich teaches the phase-change temperature of the phase-change material lies in a range of about 60 degrees Celsius to about 70 degrees Celsius (Para. 0052 teaches an overlap with this range).
Regarding claim 6, Kolowich teaches the inner container wall has a thermal conductivity of at least 10 W/mK (Para. 0050 teaches it having a thermal conductivity of 237 W/mK).
Regarding claim 10, Kolowich teaches the container is a beverage container (Fig. 1).
Regarding claim 12, Kolowich teaches the phase-change material consists of stearic acid (para. 0052).
Regarding claim 13, Kolowich teaches the inner container wall has a thermal conductivity of at least 20 W/mK (Para. 0050 teaches it having a thermal conductivity of 237 W/mK).
Claims 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) and Mehta et al. (U.S. PGPub 2015/0274928), and in further view of Bernardi (U.S. Patent 4,151,923).
Regarding claim 2, Kolowich does not expressly teach the ratio of a useful container volume to mixture volume amounts to 10:1 to 10:10. Bernardi teaches the ratio of a useful container volume to mixture volume amounts to 10:1 to 10:10 (example 2, Col. 6, ln 14-27; useful container volume 82.5 cu. cm. and mixture volume 53 cu. cm.). It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use the ratio of container volume to mixture volume taught by Bernardi, the motivation to do so would be to have a predetermined cooling effect on an amount of drinking fluid (Col. 3, ln 6-10).
Regarding claim 11, Kolowich does not expressly teach the ratio of a useful container volume to mixture volume amounts to 10:5 to 10:7. Bernardi teaches the ratio of a useful container volume to mixture volume amounts to 10:5 to 10:7 (example 2, Col. 6, ln 14-27; useful container volume 82.5 cu. cm. and mixture volume 53 cu. cm.). It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use the ratio of container volume to mixture volume taught by Bernardi, the motivation to do so would be to have a predetermined cooling effect on an amount of drinking fluid (Col. 3, ln 6-10).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) and Mehta et al. (U.S. PGPub 2015/0274928), and in further view of Sedlbauer et al. (U.S. PGPub 2010/0108694).
Regarding claim 5, Kolowich does not expressly teach a structure is present in the intermediate space which contributes to mechanical stability, wherein the structure can be a constituent of the inner and/or the outer container wall. Sedlbauer teaches a structure (element 7) is present in the intermediate space which contributes to mechanical stability (abstract). Examiner notes that the claim language “wherein the structure can be a constituent of the inner and/or the outer container wall” is not a positive limitation as the language “can be” makes it optional and not required. It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use support structure of Sedlbauer, the motivation to do so would be to support the structure (Para. 0008).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) and Mehta et al. (U.S. PGPub 2015/0274928), and in further view of Kennedy et al. (U.S. Patent 3,120,570) and Casey (U.S. patent 8,950,154).
Regarding claim 14, Kolowich does not expressly teach the outer container wall has a thermal resistance of at least 0.01 m2K/W. Kennedy teaches the container wall has a thermal resistance of at least 0.01 m2K/W (as it teaches a container wall filled with 1/8" of foaming plastic, which is greater than applicants taught "normal plastic" of 2mm; further by calculation (it is known that polyurethane has a thermal conductivity of .02 see Casey-U.S. Patent 8,950,154) thus a thermal resistance of 0.155 m2K/W It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use the insulating container elements of Kennedy, the motivation to do so would be insulate the wall form the surrounding environment (Col. 3, ln 29-31).
Regarding claim 15, Kolowich does not expressly teach the outer container wall has a thermal resistance of at least 0.1 m2K/W. Kennedy teaches the container wall has a thermal resistance of at least 0.1 m2K/W (as it teaches a container wall filled with 1/8" of foaming plastic, which is greater than applicants taught "normal plastic" of 2mm; further by calculation (it is known that polyurethane has a thermal conductivity of .02 see Casey-U.S. Patent 8,950,154) thus a thermal resistance of 0.155 m2K/W It would have been obvious to one having ordinary skill in the art at the time of filing that the container of Kolowich could be modified to use the insulating container elements of Kennedy, the motivation to do so would be insulate the wall form the surrounding environment (Col. 3, ln 29-31).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) in view of Applicant affidavit by Klaus Sedlbauer of submitted 7/24/21, and Bacher et al. (U.S. PGPub 2005/0258394).
Regarding claim 16, Kolowich teaches a container (element 10) comprising an inner container wall (element 16) and an outer container wall (element 18) wherein an intermediate space (element 20) is between the container walls, wherein the intermediate space is filled with a mixture (Para. 0080) that comprises a phase-change material and graphite powder (para. 0080).
Kolowich does not expressly teach the mixture is a non-settling slurry at a temperature at which the phase-change material is liquid. It would be inherent feature that the mixture would be a slurry at a temperature at which the phase change material is liquid as the graphite powder would have a different melting point, which is a known inherent characteristic of the powder, from the phase change material which is taught in Para. 0052 thus creating a slurry.
Kolowich does not expressly teach that the liquid phase change material does not separate from the graphite power and collect due to the force of gravity in a bottom region of the container, thus is a non-settling slurry. Applicant affidavit by Klaus Sedlbauer of submitted 7/24/21 applicant admits that:
3. One skilled in the art at the time of the invention would have known that phrase "a mixture comprising a phase-change material and a graphite powder, wherein the mixture is a slurry at a temperature at which the phase-change material is liquid and the liquid phase change material does not separate from the graphite power and collect due to the force of gravity in a bottom region of the container" refers to what is known in the art as a "non-settling slurry."
It would have been obvious to one skilled in the art at the time of invention to incorporate this known technology into the mixture of Kolowich, the motivation to do so would be to Kolowich’s teachings and goals of maintaining the powder dispersed in the phase change material (para. 0080,) and it also teaches this is to be reusable (para. 0009).
Kolowich does not expressly teach wherein the mixture is moldable at a temperature at which the phase- change material is solidified. Bacher teaches heat storage material including graphite is mouldable (para. 0013). It would be obvious to one skilled in the art at the time of filing to make the phase change material of Kolowich to include this capability taught by Bacher, the motivation shape the material as needed.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kolowich et al. (U.S. PGPub 2013/0221013) and Mehta et al. (U.S. PGPub 2015/0274928).
Regarding claim 16, Kolowich teaches a container (element 10) comprising an inner container wall (element 16) and an outer container wall (element 18) wherein an intermediate space (element 20) is between the container walls, wherein the intermediate space is filled with a mixture (Para. 0080) that comprises a phase-change material and graphite powder (para. 0080),
Kolowich does not expressly teach the mixture is a non-settling slurry at a temperature at which the phase-change material is liquid and the liquid phase change material does not separate from the graphite powder and collect due to the force of gravity in a bottom region of the container. It would be obvious that the mixture taught would be a slurry at a temperature at which the phase change material is liquid as the graphite powder would have a different melting point, which is a known inherent characteristic of the powder, from the phase change material which is taught in Para. 0052 thus creating slurry.
Mehta teaches a phase change material that includes a graphite powder (Para. 0040), and that this mixture does not separate from the graphite powder and collect (Para. 0041-0042). It would have been obvious to one having ordinary skill in the art at the time of filing that the pcm mixture of Kolowich could be modified use the teachings of Mehta such that the liquid phase change material does not separate, thus being a non-settling slurry, from the graphite powder and collect due to the force of gravity in a bottom region of the container, the motivation to do so would be to prevent non-uniform heating in phase change material (para. 0041).
Further the claimed mixture would have been obvious to one having ordinary skill in the art at the time the invention was made to determine the optimum mixture claimed in claim 1 for the claimed effect of a non-settling slurry consistency that does not separate, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. MPEP 2144.05(II).
Examiner notes that the rejection based on Kolowich and Mehta is done for the purposes of compact prosecution and does not counter the 103 rejection based solely on Kolowich but is done on the expectation of arguments against the rejection (with no expectations of the detail or form of such arguments), and in the interest of compact prosecution provide alternative rejections in a timely manner to applicant.
Kolowich does not expressly teach wherein the mixture is moldable at a temperature at which the phase- change material is solidified. Bacher teaches heat storage material including graphite is moldable (para. 0013). It would be obvious to one skilled in the art at the time of filing to make the phase change material of Kolowich to include this capability taught by Bacher, the motivation shape the material as needed.
Response to Arguments
Applicant's arguments filed 11/17/25 have been fully considered but they are not persuasive. Specific arguments are addressed below.
In response to applicants arguemtn regarding the 112(A) of “sufficiently small” not meeting the written description requirement that first the written description may be supported by the specification through implicit and/or inherent disclosure that the written description. Is unsupported applicant does not cite anything here or provide any evidence that such occurs. Applicant may be mixing this with the second part of the argument that one skilled in the art would have understood the description in the instant application where they cite various teaching of the specification regarding the sludgy constancy of the phase change material, but such is not made clear in the argument and as stated appears to be a different argument. If applicant means to mix with the second argument the response is the same as to the second argument, see below.
With regards to the second argument that a person skilled in the art would have understood the description in the instant application to disclose the claimed invention, this is not persuasive. Applicant cited to several section of their specification discussing the sludgy consistency and the phase change material and the singular statement of a “non-settling slurry”. Applicant then cites to the Sedlbauer Declaration including a statement of “ A “non-settling slurry” refers to a mixture of liquid and solid particles in which the particles are sufficiently small so that the particles remain suspended. This affidavit was arguing the term “non-settling slurry” and not the particle size. Even taken at its face, the affidavit provides no clear evidence for it being disclosed in the original specification. Applicant may be misconstruing this rejection as a matter of support instead of the NEW MATTER rejection that it is (not the MPEP form paragraph for such was used in the rejection as required). The specification has NO mention or teaching of particle size, this first appears in applicant arguments. Thus it is new matter introduced to the specification. Applicant arguemtn appears to argue somehow such teaching being mentioned in their affidavit becomes part of the original specification. The affidavit merely states the term but does not show or prove it is part of the original specification. Applicants affidavit was applied as it was intended for the term “non-settling slurry”, the affidavit provides no arguments for the term “sufficiently small” nor does the affidavit become part of the original specification.
With regards to applicant argument that the examiner has not provided a counter affidavit, such is not required in evaluating the evidence provided by applicant or responding to the applicants’ arguments.
Applicant next argues the 112(b) rejection of “sufficiently small”. Applicant argues that such is well known and supported in case law. Examiner respectfully disagrees as the term is reviewed “ in view of the general guidelines contained in the specification” MPEP 2173.05(b)(III)(D). The term is never used in the application and thus has no point of reference in the specification. Applicant is effectively arguing that it is supported by their affidavit NOT the specification as required. This goes back to the term being new matter (see above) and thus there is nothing supporting or clarifying it in the specification.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Further applicants own statements about knowledge in the art , such as their affidavit may be used in a rejection of their claims. Firstly this is not improper hindsight as it is stated by applicant to be known in the art (applicants’ own cited paragraph starts with “one skilled in the art at the time of the invention”, secondly this is not gleaned from the application but applicants’ statement during prosecution thus it is NOT improper hindsight. Applicant’s affidavit is not part of disclosure but evidence of record submitted by applicant. This was submitted as evidence of known knowledge at the time of filing (as stated by applicants’ own affidavit “one skilled in the art at the time of the invention”). Such an admission is not a matter of hindsight but an admission by applicant.
Further this argument fails due to In response to applicant's arguments against the references individually, specially Kolowich and not the combination, and one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). This is also not relevant to the hindsight argument as the motivation is not based on it alone.
Applicants’ argument against the combination with Mehta appears to incorrectly claim it is an issue of hindsight reasoning and is an argument of bodily incorporation. In response to applicant's argument the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The rejection with Mehta and the binding agent is not contrary to applicants claims as the claims are open ended “comprising” thus allowing for additional materials. The use of a binding agent to achieve the claimed result of a non-settling slurry (i.e. smaller particles not sinking) is still an applicable rejection of the claim as written.
Applicants’ argument that Kolowich’s motivation is hindsight is respectfully disagreed with. Kolowich as cited specifically wants a reusable beverage container, separation would result in not maintaining the thermal property Kolowich aspires to, thus this motivation is supported by the prior art, applicants’ assertion that the container would be reusable without such ignores the fact that the motivation as cited would be to make it reusable while maintaining the full thermal affect sought by the prior art.
Applicants argument regarding the results affective variable are further not persuasive, applicant themselves have stated that particle size is a known factor in separation (the affidavit) and as Mehta is focused on the particles not separating the known factors of such would be known results effective variables.
Examiner cannot respond to applicants’ arguments against the boards previous finding in the case, such should be raised appropriately to the board. Any argument of such should see previous examiners upheld reasonings and arguments regarding such.
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.
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 extension fee 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 JOEL M ATTEY whose telephone number is (571)272-7936. The examiner can normally be reached on Monday-Thursday 8-5 and Friday 8-10 and 2-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson be reached on (571) 270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOEL M ATTEY/Primary Examiner, Art Unit 3763