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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/03/2025 has been entered.
The status of the 03/03/2025 claims, is as follows: Claims 2, and 5-8 have been amended; Claims 9-20 have been withdrawn; Claims 1, and 21-22 have been canceled; and Claims 2-20 and 23 are pending.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
In claim 6:
The limitation “a feeding device” in line 8
“device” is the generic placeholder.
“feeding” is the functional language.
The limitation “a softening device” in lines 8-9
“device” is the generic placeholder.
“softening” is the functional language.
The limitation “an attachment device” in lines 11-12
“device” is the generic placeholder.
“attachment” is the functional language.
In claim 7:
The limitation “a sewing device” in line 3
“device” is the generic placeholder.
“sewing” is the functional language.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that, the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112, sixth paragraph limitation:
The limitation “a softening device" in lines 8-9 of claim 6 has been described in the published specification in para. 0041 as the softening device 200; fig. 1 that is configured to heat the heating element. The softening device 200 comprises the body 210 that receives hot air from the heat source 220 and the heating element 121 from the conveying device 120.
The limitation “a sewing device" in line 3 of claim 7 has been described in the published specification para. 0039 as the sewing head 130; fig. 1.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 2-8, and 23 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(s) 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 6:
The corresponding structure of “a feeding device” in line 8 is not supported in the original disclosure as interpreted under 35 U.S.C 112(f). Therefore, since the Specification does not clearly identify what the corresponding structure of the “a feeding device” is, there is a presumption that the applicant didn’t possess the invention at the time of filing, i.e. lack of written description.
The corresponding structure of “an attachment device” in lines 11-12 is not supported in the original disclosure as interpreted under 35 U.S.C 112(f). Therefore, since the Specification does not clearly identify what the corresponding structure of the “an attachment device” is, there is a presumption that the applicant didn’t possess the invention at the time of filing, i.e. lack of written description.
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 2-8, and 23 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 pre-AIA the applicant regards as the invention.
In claim 6:
The claim limitation “a feeding device” in line 8 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, as noted above. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
In the original specification, “a feeding device” in line 8 is not disclosed structurally. The proper structure must be disclosed in a way that one of ordinary skill in the art will understand what the inventor has identified to perform the recited function.
The claim limitation “an attachment device” in lines 11-12 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, as noted above. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
In the original specification, “an attachment device” in lines 11-12 is not disclosed structurally. The proper structure must be disclosed in a way that one of ordinary skill in the art will understand what the inventor has identified to perform the recited function.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 4, 6, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roberts (US 20160095369)
Regarding claim 6, Roberts discloses an electrical heating device (heating apparel item 110; figs. 9 and 1) for a vehicle seat cushion (it is noted the limitation “for a vehicle seat cushion” is an intended use statement), the electrical heating device (heating apparel item 110) comprising:
a carrier (support layer 148; fig. 9) (para. 0054); and
an electrical heating element (heating element 125, and protective layer 145) secured on said carrier (“support layer 148 can be applied to the inside surface of the substrate, opposite the heating element application pattern 126, and either before or after application of the liquid protectant material 144 that covers the application pattern”, para. 0054; fig. 9), the electrical heating element comprising a heating wire (heating element 125) and an outer insulating layer (protective layer 145) (para. 0053), the electrical heating element is configured to operate at an operating temperature to generate heat (para. 0002);
wherein the electrical heating element (heating element 125, and protective layer 145) is secured to the carrier of the vehicle seat (support layer 148) (it is noted the limitation “for a vehicle seat cushion” is an intended use statement) (“the support layer 148 can be applied to the outside surface of the substrate after the application and curing of the liquid protectant material 144 to form the insulation layer 145”, para. 0054) in a manner to form one or more bends in the electrical heating element (fig. 1), the one or more bends are not able to be bent into a straight line at a temperature below the operating temperature of the electrical heating element without damaging the heating wire and the outer insulating layer (it is noted the heating element having the zig zag pattern as shown in fig. 1 maintains its shape during normal operation without any external force. Para. 0053 of Roberts discloses the substrate 124 having the heating elements with zig zag patterns is impregnated with liquid protect tant material 144 and goes through the curing process. Therefore, the heating element maintains its shape after the curing process. According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. In this case, Roberts discloses the heating element having the zig zag shape as shown in fig. 1 and it maintains the shape at its normal operating temperature and without any external force).
Regarding the limitation “wherein before the electrical heating element is secured on the carrier of the vehicle seat cushion, the electrical heating element is conveyed from a feeding device through a softening device where the electrical heating element is subjected to hot air at a temperature greater than the operating temperature of the electrical heating element to warm the electrical heating element, the warmed electrical heating element is then continuously conveyed from the softening device to an attachment device where the warmed electrical heating element is secured to the carrier of the vehicle seat”, the limitation is directed to a product-by-process limitation, i.e. the electrical heating element is produced by conveying from the feeding device through the softening device where the electrical heating element is subjected to hot air, and the warmed electrical heating element is then continuously conveyed from the softening device to an attachment device where the warmed heating element is secured to the carrier. Based on the based on MPEP 2113, the claim is not to be limited by the manipulation of the recited step(s) i.e. conveying from the feeding device through the softening device…the warmed electrical heating element is then continuously conveyed from the softening device to an attachment device where the warmed heating element is secured to the carrier. It is the Examiner’s position that Roberts discloses the resulting structure (i.e. heating element having the one or more bends secured to the carrier as shown in fig. 1) implied by the claimed process.
Regarding claim 4, Roberts discloses the electrical heating element (heating apparel item 110), wherein the outer insulating layer (insulation layer 145; fig. 9) is made of a polymeric material (polymers) (“protective materials including various polymers, plastics, a liquid silicone, or the like”, para. 0052).
Regarding claim 23, Roberts discloses the electrical heating element (heating apparel item 110), wherein the electrical heating element is shape cured at room temperature (para. 0009 and 0053-0054) (para. 0053 of Roberts discloses the substrate 124 having the heating elements with zig zag patterns is impregnated with liquid protect tant material 144 and goes through the curing process. Therefore, the heating element maintains its shape at room temperature after the curing process).
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.
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 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Roberts (US 20160095369)
Regarding Claim 2, Roberts discloses the electrical heating element (heating apparel item 110), wherein the bending has a bending radius (“looped heating element application pattern similar to those depicted in Figs. 1-2”, para. 0053).
Roberts does not disclose the bending radius of not greater than 6 mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize the bending radius of not greater than 6 mm is merely design choice. The specification of the instant application does not explain why having the bending radius of not greater than 6 mm is critical or solve any problem in the art. The hooped heating element of Roberts having the bending radius would work equally well, in order to achieve heating output according to desired heating application. The motivation for modifying the bending radius of not greater than 6 is to improve the heating capabilities of the heating element i.e. it would have created denser or more densified heating pattern for higher or more heat distribution.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Roberts (US 20160095369) in view of LaFontaine (US 8133264)
Regarding Claim 3, Roberts discloses substantially all of the claimed features as set forth above, except the electrical heating element has an outer diameter of less than 1.5 mm.
However, LaFontaine discloses a heating wire 28 having an outer diameter of less than 1.5 mm (diameter from 0.008 to 0.010) (col. 3, lines 12-16).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heating wire of Roberts such that it has the outer diameter of less than 1.5 mm as taught by LaFontaine because the heating wire having the outer diameter of less than 1.5 mm is better or more suited for its intended application over some wire having larger diameter i.e. it could be easier to bend to form the heating pattern.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Roberts (US 20160095369) in view of Augustine (US 20150366367)
Regarding Claim 5, Roberts discloses substantially all of the claimed features as set forth above, except the electrical heating element has an operating temperature of not greater than 150 °C and the one or more bends not able to be bent into a straight line at said operating temperature without damaging the outer insulating layer or the electrical heating wire.
However, Augustine discloses a heating wire (heating element 310) has an operating temperature of not greater than 150 °C (approximately 43 °C) (para. 0109).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heating wire of Roberts to have the operating temperature of not greater than 150 °C as taught by Augustine, in order to provide optimal heat to the user without excessive heat that can be bothersome to the user (para. 0109 of Augustine).
Regarding the limitation “the one or more bends are not able to be bent into a straight line at said operating temperature without damaging said outer insulating layer or said electrical heating wire.”, it is noted that it is a functional limitation. The heating elements of Roberts having the looped pattern as shown in figs. 1-2 maintain such pattern under normal operation of the heating element. They can not be unbent or bent into the straight line at the operating temperature i.e. approximately 43 °C without an outside force. According to MPEP 2114, “[A]pparatus claims cover what a device is, not what a device does.” A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. In this case, Roberts discloses the heating element having the zig zag shape as shown in fig. 1 and it maintains the shape at its normal operating temperature and without any external force).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Roberts (US 20160095369) in view of Bajic (US 20170071031)
Regarding Claim 7, Roberts discloses substantially all of the claimed features as set forth above, wherein the one or more bends of the electrical heating element (heating element 125, and protective layer 145) are secured on the carrier (support layer 148; fig. 9) (para. 0054) (it is noted heating element 125 and layer 145 are attached to the support layer 148).
Roberts does not disclose the one or more bends of the electrical heating element are secured on the carrier by sewing with threads via a sewing device.
However, Bajic discloses the one or more bends of the electrical heating element (formed heating wire 112) are secured on the carrier (substrate 114) by sewing with threads (sewing thread 116) via a sewing device (sewing head 130) (para. 0025-0026; fig. 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the heating device of Roberts such that the electrical heating element is secured on the carrier by sewing with threads as taught by Bajic, in order to secure the heating element on the carrier that is made of fabric by means of stitching because stitching is well-known to attach the heating element to the fabric via stitching.
Regarding claim 8, the modification discloses the electrical heating device (fig. 9 of Roberts), wherein said threads (threads of Bajic) for securing the one or more bends of the electrical heating element (heating element 125 of Roberts) have a stitch length.
The modification does not disclose the threads have a stitch length of not greater than 2 mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to recognize the threads having the stitch length of not greater than 2 mm is merely design choice. The specification of the instant application does not explain why having the stitch length of not greater than 2 mm is critical or solve any problem in the art. The modification of Roberts and Bajic that results in the heating element of Roberts is secured onto the carrier by means of stitching of Bajic would work equally well as the claimed invention, in order to secure the heating elements onto the carrier or substrate.
Response to Amendment
With respect to 112b rejections: since amendment made to claim 6, therefore the 112b rejections are withdrawn.
Response to Argument
Applicant's arguments filed on 03/03/2025 have been fully considered but they are respectfully considered moot in view of new ground of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONITA KHLOK whose telephone number is (571)270-7313. The examiner can normally be reached on M-F: 9:00am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached on (571)272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BONITA KHLOK/ Examiner, Art Unit 3761
/SANG Y PAIK/ Primary Examiner, Art Unit 3761