Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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 1-8 and 14-18 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 terms “make” and “size” in claims 1-8 and 14-18 are relative terms which render the claims indefinite. The term “make” and “size” are 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. Claims are confusing as to intent because the “make” and “size” are utilized to identify two different components with each being identified as being a “coat”. However, the claims do not set forth any definition of these referred to identifiers in order for it to be definitively ascertained what coat materials may or may not be “make” and/or “size” coat materials. Further, it can not be definitively ascertained how or if these separately recited “coat” materials are intended and/or required to be different.
Appropriate correction is required.
For purposes of examination, the terms “make” and “size” as connected to “coat” have been treated as adding no further definition and/or limitation to the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 4-8 and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-4353634 in view of KR-101860998.
JP-4353634 discloses foam products comprising a foam main body that includes grains/particles that are affixed to the foam through an adhesive “make” coat with further coating of the particles through a “size” coat {see abstract and paras [0012]-[0031]}.
JP-4353634 differs from applicants’ claims in that a thermoplastic polyurethane material is not particularly required in order to affix its particles to its foam. However, thermoplastic adhesives are allowed for by JP-4353634 {para [0023]} and KR-101860998 discloses thermoplastic polyurethanes to be known adhesive materials for bonding and affixing particles to substrate surfaces{see pages 3 & 8 of translation}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the thermoplastic polyurethane adhesive material of KR-101860998 as the allowed for thermoplastic adhesive material in forming the foam products of JP-4353634 for the purpose of achieving acceptable particle attachment and/or incorporation in articles formed in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Regarding claim 4, JP-4353634 discloses adhesives for its “coats” that are sufficient to meet the adhesives of this claim {see paras [0023]-[0031]}.
Regarding claims 5-8 & 15-18, though specific surface weights, hardness, tensile and elongation effects are not particularly expressed by JP-4353634 in their described “size coat” materials, in that the “coat” materials, which include “size coat” materials, disclosed by JP-4353634 are sufficient in meeting the “size coat” materials in constitutional make-up to the degree as defined by applicants’ claims {see paras [0012]-[0031]}, it is held that it would necessarily follow that the “coat”, including “size coat” materials, materials of JP-4353634 would possess the surface weights, hardness, tensile and elongation effects as set forth by these claims. Further, it is noted that case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990).
Regarding claim 14, JP-4353634 discloses that its foam material may be polyurethane foam {see para [0020]}.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-4353634 in view of KR-101860998 as applied to claims 1, 4-8 and 14-18 above, and further in view of Martin et al.(5,618,904).
Claim 2 differs from JP-4353634 combined with KR-101860998 in that reactive one-component adhesive as claimed is not required to be included. However, Martin et al. discloses one-part, reactive, hot melt adhesives meeting the reactive one-component adhesive requirements of applicants’ claim to be known adhesive materials for bonding and affixing particles to substrate surfaces{see abstract, Summary of the Invention and column 5 lines 28-45}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the one-part, reactive, hot melt adhesive material of Martin et al. as an adhesive coat material in forming the foam products of the combination of JP-4353634 and KR-101860998 for the purpose of achieving acceptable adhesion and coating effects in articles formed in order to arrive at the products of applicants’ claim with the expectation of success in the absence of a showing of new or unexpected results.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-4353634 in view of KR-101860998 as applied to claims 1, 4-8 and 14-18 above, and further in view of WO 2016/204978.
Claim 3 differs from JP-4353634 combined with KR-101860998 in that two-component adhesive as claimed is not required to be included. However, WO 2016/204978 discloses two-component adhesives meeting the requirements of applicants’ claim to be known adhesive materials for bonding and affixing materials to substrate surfaces{see abstract, page 1 and Examples, as well as the entire document}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the two-component adhesive material of WO 2016/204978 as an adhesive coat material in forming the foam products of the combination of JP-4353634 and KR-101860998 for the purpose of achieving acceptable adhesion and coating effects in articles formed in order to arrive at the products of applicants’ claim with the expectation of success in the absence of a showing of new or unexpected results.
Response to Arguments
Applicants’ arguments have been considered. However, rejections as set forth again above are maintained.
Regarding the rejection under 35USC112, though these expressions may have utility for practicality in certain fields to express something regarding different characterizations of coatings in certain applications, from the standpoint of patentability, including the instant case, “make” and “size” do not have such readily understood meaning to the ordinary practitioner in the art of making foams that the “coat”/”coating” elements set forth by the claims have definitively determinable meanings through the accompanying terms “make” and “size”, respectively, in order for it to be definitively ascertained what coat materials may or may not be “make” and/or “size” coat materials, and/or if, from the standpoint of patentability, these separately recited “coat” materials are intended and/or required to be different.
Further, the pointed to patent does not remedy the indefiniteness pointed to here and in the rejection above in that it does not serve, from the standpoint of patentability, to address the indefiniteness identified in the rejection above. Moreover, merely showing the terms to have been used in the language of patents in the past does not serve to address the issues of indefiniteness pointed to in the rejection above based on the current facts of the instant case.
Regarding the rejection under 35USC103, it is held that 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). Rejection is based on the combination of the two references taken in totality for what they offer. KR-101860998 is looked to in order to remedy the deficiency of JP-4353634 regarding the use of thermoplastic polyurethanes in affixing particles to its foam. It is held and maintained that KR-101860998 is sufficient in remedying this deficiency of JP-4353634 as indicated in the rejection above.
There is nothing seen through the combination and/or other evidence of record that utilizing the thermoplastic polyurethane of KR-101860998 for its particle affixing effects in the preparations of JP-4353634 would fail and/or render JP-4353634 unsatisfactory for its intended purpose. JP-4353634 does not particularly exclude or indicate that additional inclusion of the thermoplastic polyurethane of KR-101860998 would render it unsatisfactory for its intended purpose, nor is it seen that such is evident in fact. Further, applicants’ claims do not differentiate between utilization of curable and uncurable thermoplastic polyurethanes, nor do they exclude the utilization of both curable thermoplastics along with the thermoplastic polyurethanes of KR-101860998.
Moreover, beyond the above, it does additionally stand to be noted that that there is no evidence of record that sufficiently establishes that the thermoplastic polyurethanes of KR-101860998 are specifically not “curable”. It would stand to reason that given the right conditions the thermoplastic polyurethanes of KR-101860998 would be “curable” from the standpoint of patentability, and burden is rightly shifted to applicants to demonstrate any difference that may be evident, in fact, based on “curability” versus the alleged “uncurability” of materials of the prior art. However, it is to be held and reiterated that any such demonstrations in this regard would only serve to address issues concerning substitution of parts provided for through the combination of JP-4353634 and KR-101860998.
Finally, it is maintained that KR-101860998 is sufficient in its disclosure of thermoplastic polyurethanes to be known adhesive materials for bonding and affixing particles to substrate surfaces{see pages 3 & 8 of translation}. That its disclosures involving the bonding and affixing particles are concerned particularly with two-sided tape adhesive applications does not negate its applicability in the combination as set forth, and it is reiterated in this regard that 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 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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