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 .
Election/Restrictions
Newly submitted claim 69 is directed to an invention that lacks unity with the invention originally claimed for the following reasons:
The groups, including the group of claim 69 {i.e. Group IV.} and Groups I., II. and III., lack unity of invention because even though the inventions of these groups require the technical feature of a sealing element composed of a polymeric material, the polymer material is in the form of a foamed material, and (c) the foamed polymer material has a density, determined according to DIN EN ISO 1183-1, of no more than 0.950 g cm-3, this technical feature is not a special technical feature as it is either anticipated or obvious over Krist (US 2016/0177045 A1) {see abstract, paragraph [0009], as well as the entire document} and does not make a contribution over the prior art. As such, unity of invention is lacking and restriction is appropriate.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 69 withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
*Additional Notes: It should be additionally noted that applicants’ originally filed supporting disclosure is not supportive of the now claimed invention of claim 69 that does not require the inclusion of polyolefins in its compositional make-up {note: page 1 lines 3 & 4 of the originally filed supporting disclosure}.
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, 7, 9, 10, 12, 14, 16, 18, 23, 25-27 and 33 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 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’ originally filed supporting disclosure is not supportive of the formation of “flat” disk- and/or ring-shaped sealing elements to any degree that may now be defined by the claims. Though paragraph [0214]{note: PGPUB 20240209170} indicates that the formed articles of the originally filed supporting disclosure may be applied to a flat region of a support material, such placement of the articles of the instant concern is not supportive of the now claimed requirement that the sealing elements as now defined by the claims are “flat” to any degree that may now be defined by the claims.
This is a new matter rejection.
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, 7, 9, 10, 12, 14, 16, 18, 23, 25-27 and 33 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 “flat” in claim 1 is a relative term which renders the claim indefinite. The term “flat” 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. From the standpoint of patentability applicants’ claims are confusing as to intent because it can not be determined what degree of unsmoothness, unevenness, lumps and/or indentations are intended to be included or excluded by the recitation “flat” now set forth by the claims, and applicants’ supporting disclosure is not resolving of the ambiguity in the claims in that disclosure of locations for placement of the articles formed is not assistive in defining the flatness that is intended to be included and/or excluded by the term “flat” in defining the sealing elements that are now set forth by the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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 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.
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, 6, 7, 9, 10, 12, 14, 18, 23 and 68 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Fukushima et al.(4,146,562).
Fukushima et al. discloses polyolefin foams formed from polyolefins having densities as defined by the claims wherein the foams comprise polybutenes, polypropylenes, polyethylenes, copolymers thereof and/or mixtures thereof (see abstract and column 5 lines 34-39) to the degree defined by the claims, including claim 68. Distinction based on the selections defined by the claims is not seen. From the standpoint of patentability, by virtue of the articles being present in the form of a formed/shaped mass is sufficient to meet the “sealing element” requirements of the claims in that a shaped/formed mass will seal something to some extent. Further, from the standpoint of patentability, the formed articles are sufficiently considered to be flat and ring shaped to any degree required by the claims as they now stand defined {see Figure 2} at at least the terminal portion of the most readily envisioned deployments. Regarding claim 6, though melting temperatures are not specified, owing to the closeness of the material make-ups of the compositions involved it is held that the melting temperature requirements of the claims are inherently met by the teachings of Fukushima et al. Regarding claim 18, though copolymers are not indicated to be heterophasic, owing to the closeness of the material make-ups of the compositions involved it is held that such conditions are inherently met by the teachings of Fukushima et al.
Alternatively, regarding the flat disk/ring shape requirements to any degree that may be defined by claims 1, 6, 7, 9, 10, 12, 14, 18 and 23. If one were interested in e-cycling/repurposing formed articles of Fukushima et al., then it would have been obvious for one having ordinary skill in the art to have chopped the articles of Fukushima et al. into flat disks from the already formed tube structures and/or removed the readily releasable foamed coating material {column 3 lines 39-42} from the core and chopped/cut the released material into any shape, including flat disk/ring shapes to any degree required by the claims, for the purpose of forming acceptably developed additive materials for effective reuse 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.
Alternatively, regarding claims 68, to the degree that difference may be evident in selection of the three identified co-monomers, it would have been obvious for one having ordinary skill in the art to have utilized any combination of the co-monomers provided for by Fukushima et al. {column 5 lines 34-39}, including ethene, propene and butene involved copolymer for the purpose of forming acceptably developed fast adhering and readily releasable coatings 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.
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.
Claim(s) 16, 25-27 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al.(4,146,562) as applied to claims 1, 6, 7, 9, 10, 12, 14, 18, 23 and 68 above.
Fukushima et al. differs from these claims in that specific polymer and/or copolymer component inclusions as claimed are not specified (column 5 lines 34-39). However, it would have been obvious for one having ordinary skill in the art to have utilized any of the (co)polymers and/or combinations thereof provided for by Fukishima et al. in any amounts as is allowed for by Fukishima et al. for the purpose of effectively providing the sealing, adhering and releasing effects offered by the teachings of Fukishima et al. 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.
Response to Arguments
Applicants’ arguments have been considered. However, rejections are maintained for all of the reasons set forth above in address of the amendments to the claims. Applicants’ arguments on reply have been addressed in the bodies of the rejections above, and no further arguments are seen necessary here at this time.
Conclusion
Applicant's amendment necessitated the new ground(s) 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 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/JOHN M COONEY/Primary Examiner, Art Unit 1765
Prosecution Insights