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 .
Examiner Notes
Claims 1-12 are currently pending of which claims 5-11 are withdrawn.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Wald et al. (US 2003/0211378).
Regarding claim 1, Wald discloses a gasket (10, 11) comprising an elastomeric gasket material (0033) having a pair of main opposing surfaces (Fig. 1-2), the gasket has a maximum height (thickness) no more than 250 µm (0039), overlapping the claimed thickness of 40 µm or more and 450 µm or less (0025).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
The gasket having a region (12/13) in which a pattern (i.e., instant plurality of coherent pattern lines) visible when viewed from a direction facing each of the pair of main surfaces. The pattern being arranged at intervals in a direction in which one edge portion and another edge portion opposing the one edge portion oppose each other and do not intersect (Fig. 1-2)
Regarding claim 2, as can be seen from Fig. 1-2, the pattern (instant plurality of coherent pattern lines) comprise 50% or more of the total area of the pair of main surfaces (as it extends across the whole surface).
Regarding claim 3, Wald teaches the gasket formed of thermoplastic material (0037). However, Wald does not teach that the sheet is formed by injection of the thermoplastic resin, however, the recitation of “formed by” is product by process language. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Claims 1-4 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US 2014/0077462) with evidentiary reference Solef® PVDF Design and processing guide (accessed 6/11/2025).
Regarding claims 1-3, Hong discloses resin gasket manufactured by injection molding (0003), the resin may include a thermoplastic (0048-0049). The gasket comprising a pair of main surfaces opposing each other (Fig. 3B) and having a thickness of 750 µm or less (0058), overlapping the claimed thickness of 40 µm or more and 450 µm or less.
Hong does not expressly teach the gasket comprising a region comprising a plurality of coherent pattern lines, wherein the plurality of coherent pattern lines are visible when viewed form a direction facing each of the pair of main surfaces, the plurality of coherent patten lines being arranged at intervals in a direction in which one edge portion and another edge portion opposing the one edge portion oppose each other, and a pair in the plurality of coherent pattern lines adjacent to each other do not intersect or that the region is 50% or more of the total area as claimed in claim 2. However, applicant teaches in their specification that the coherent pattern lines are attributed to the manufacture by injection molding (see specification 0045). As Hong teaches a gasket manufactured by injection molding, the claimed region and region area would be expected from the prior art product.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Regarding claim 4, Hong teaches that the gasket manufactured by injection molding (0050) and the fluoroelastomer may include vinylidene fluoride which as evidenced by Solef® PVDF VDF is a thermoplastic having an overlapping range for melt flow rate and heat of fusion (Table 6 and Table 7).
Regarding the overlapping ranges discussed in claims 1 and 4, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 12, Hong teaches the resin member is a flat thin resin sheet (Fig. 3B).
Response to Arguments
Applicant’s arguments filed 12/12/20205 have been fully considered but they are not persuasive.
Applicant argues over Wald that the “coherent pattern” is a term of the art and refers to a regular and continuous pattern appear on the surface of an injection-molded article. Applicant argues that the ridges of Wald are not a not coherent pattern lines.
During patent examination, claims are "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (see MPEP 2111). The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification). The specification does not appear to define a “coherent pattern” as argued nor has applicant provided any evidence that the terms are known in the art to only apply to injection-molded articles. Thus, the ridges of Wald are a coherent pattern as they provide a pattern that is consistent.
Applicant argues over Hong just because Hong teaches a gasket manufactured by injection molding does not necessarily mean the gasket will exhibit coherent pattern lines. Applicant argues that for a visible result of resin flow behavior specific molding conditions, mold design and material characteristic are required.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., specific injection molding conditions) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, the cited portions of the specification do not appear to provide any data that specific molding conditions are required. If the coherent pattern lines are structural and require a thickness difference, and not just a result from injection molding, the thickness difference should be recited in the claims. As noted above, coherent pattern lines are given their broadest reasonable interpretation in light of the specification however, limitations such as the argue thickness difference, are not read into the claims.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781