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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/17/2025 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-10, 12, & 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 9 of copending Application No. 17/798,371 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 8, and 9 of ‘371 suggesting the claimed structures similarly to the current claimed application.
Both the current claimed application and ‘371 claims the following:
-First and second feeding means;
-forming station;
-superposing zone;
-gluing device;
-wrapping station;
-forming elements.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-5, 7-10, 12, & 18-19 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.
The filed specification has no proper support to the amended claims 1, 7, 8, and 19 referring to the forming station “including at least one forming die”! No support found in the original filed specification referring to any “die”. It is noted though that the filed specification is only referring to forming rollers 21/22.
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 1-5, 7-10, 12, & 18-19 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.
Amended claims 1, 7, 8, and 19 as mended on 04/7/2025 is referring to the forming station “including at least one forming die”, it is vague and indefinite as it is not clear what “die” is applicant is referring to! There is only forming rollers 21/22 disclosed by the filed invention, not sure which “die” is applicant referring to.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 9, 10, & 18-19 the best understood is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sexstone (U.S. Patent No. 3,482,488).
Regarding claims 1 & 19: Sexstone discloses a machine for making a continuous tubular element with filling having a spacer and/or filter function, comprising:
- a first feed mechanism (Fig. 17; via 26’) for feeding at least a first continuous web (via 24’) and configured to feed the at least a first continuous web along at least a first feed path;
- a second feed mechanism (Fig. 17; via 40’) for feeding at least a second continuous web (via 38’) and configured to feed the at least one second continuous web along a respective second feed path, said first and second feed paths converging towards a superposing zone (Figs. 16 & 17; via 66’, “66’ which fuses”);
- a forming station (Figs. 17; via folder 36) positioned on the first feed path and including at least one forming “die” shaped and configured to engage the first continuous web to perform a folding and/or a deformation of the first continuous web in a shaped configuration wherein said first continuous web has a non-circular shape that is three-dimensional and/or curved, in section transversal to the first feed path, said non-circular shape not completely overlapping a circular outline, see for example (Fig. 12; note those limitations as amended are more of intended use limitations of the claimed “forming station”, not given much patentable weight)
- downstream of said superposing zone, a wrapping station wherein said second continuous web is wrapped in a tubular shape around said first shaped web (Figs. 13-17; via wrapping 38 around 24), obtaining a continuous tubular element (Fig. 4; via final formed tubular elements), wherein at least one between said forming and wrapping stations comprises at least one guide bar, extending longitudinally along said first feed path and/or about which said first continuous web is at least partly formed and/or guided, see for example (Fig. 17; via bar 34 and guiding mechanism 28’).
Regarding claim 2: wherein said guide bar extends for an entire longitudinal extension of the wrapping station, until the complete wrapping of the second continuous web in a tubular shape about the first web (via 28; appears to be extending through the wrapping station).
Regarding claim 3: wherein said guide bar extends in the forming station, longitudinally along said first feed path, and in the wrapping station (via 28 extending through forming station 36).
Regarding claim 4: wherein the guide bar is fixed to a frame of the machine at, or close to, the forming station (via fixed bar 34).
Regarding claim 5: wherein said guide bar has a constant transversal cross-section and has a solid section (via the shown upper constant cross section of bar 34).
Regarding claim 9: wherein said wrapping station comprises a forming beam configured for making a progressive wrapping of the second continuous web around the first continuous web in the shaped configuration, using a guide and folding belt for the second continuous web, and wherein said at least one guide bar extends along at least one stretch of the wrapping station, for an entire extension of the wrapping station, for supporting a corresponding configuration of the first continuous web in the shaped configuration during the wrapping of the second continuous web, see for example (Fig. 17; via the extended shape of 64’ and 66’; while guided and folded via belt 74).
Regarding claim 10: wherein said wrapping station also comprises a fixed shaped body interposed, at least for a stretch of said wrapping station, between said at least one guide bar and the forming beam for defining a folding reference surface of the second continuous web around the first continuous web in the shaped configuration, in particular said fixed shaped body being configured to be positioned around said at least one guide bar for a predetermined overlapping angle, greater than 180 degrees, see for example (Figs. 12-17; via the shown relationship and position of guides 28’, 74’ 34, and 64’ in respect to folded and rounded webs 24’ & 38’).
Regarding claim 18: wherein the predetermined overlapping angle is greater than 270 degrees, see for example (Figs. 12-17; via the shown relationship and position of guides 28’, 74’ 34, and 64’ in respect to folded and rounded webs 24’ & 38’; appears to be greater than 270 degrees).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sexstone (U.S. Patent No. 3,482,488) in view of Scott et al. (U.S. Patent No. 6,723,033).
Regarding claim 7: Sexstone does not suggest the claimed forming station comprises a pair of pre-forming rollers. However, Scott discloses similar machine using pair of forming rollers (Figs. 5 & 6 and/or Fig. 18; via rollers 33 or 567; feeding and shaping elements 22).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of Applicant’s claimed invention, to have modified Sexstone’s forming mechanism by using a further a pair of forming rollers, as suggested by Scott, in order to come up with more accurate and strong folds to speed up the process (column 2, lines 4-8).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sexstone (U.S. Patent No. 3,482,488) in view of Scott et al. (U.S. Patent No. 6,723,033) and further in view of Straight (U.S. Pub. No. 2009/0032033).
Regarding claim 8: Sexstone in view of Scott do not suggest the claimed forming station with a pair of forming elements opposite each other and acting in conjunction with said guide bar for performing a second permanent shaping of said first continuous web whilst said first continuous web is at least partly wrapped around the guide bar, preferably and having respective folding edges which are convergent and configured for moving towards each other and permanently deforming respective longitudinal portions of the first continuous web. However, Straight discloses similar mechanism with the use of pair of forming elements opposite each other and folding edges moving towards each other, see for example (Figs. 10-11; via 62/63).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of Applicant’s claimed invention, to have modified Sexstone in view of Scott’s forming mechanism by further using a pair of forming elements moving toward each other to complete the folding, as suggested by Straight, in order to provide a novel on forming a complete sharp rounded tube (column 1, paragraph 0005).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sexstone (U.S. Patent No. 3,482,488) in view of Pryor (U.S. Patent No. 4,770,193).
Regarding claim 12: Sexstone does not suggest the use of a compression device having a first and a second compression roller mutually facing each other and having respective shaped profiles to define a gap for the passage of the continuous tubular element, and wherein said compression rollers are adjustable towards/away from each other for adjusting the gap for passage of said continuous tubular element in such a way as to model a transversal cross-section of said continuous tubular element according to a desired shape, in particular circular. However, Pryor discloses similar mechanism with using pressing rollers (Fig. 1; via rollers 58/59).
Therefore, it would have been obvious to one with ordinary skill in the art, before the effective filing date of Applicant’s claimed invention, to have modified Sexstone device by using a compression roller, as suggested by Pryor, in order to assure complete and perfect final formation of the folded tube (pressing and/or pulling rollers at an end of a device is very old and well known).
Further, in respect to having the pressing rollers adjustable in respect to each other’s. It would have been obvious to one having ordinary skill in the art before the effective filing date of applicant’s claimed invention to have made Pryor’s pressing rollers adjustable, since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5, 7-10, 12, & 18-19 have been considered but are moot because the new ground of rejection adjusted and modified in light of the latest filed amendments.
Applicant argues that the applied art of Sextone ‘488 does not disclose the amended claim referring to the “forming station” including at least one forming die shaped and configured to engage the first continuous web to perform a folding and/or a deformation of the first continuous web into a shaped configured wherein said first continuous web has a non-circular shape that is three-dimensional and/or curved…”wherein at least a portion of the first continuous web in the section does not have a circular profile”. It is noted that the argued upon points are more related to an intended use of the actual claimed “forming station” and/or “forming die”, which are not given much patentable weight. The actual formed web is not given much patentable weight in the apparatus claims.
It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Further, applicant seems to argue regarding the newly added limitations related to the “forming die”. As set forth above it is something not fully supported by the originally filed specification. It is not clear which “die” applicant is referring to, as it appears that invention is only calling on “forming rollers” via 21/22 (Figs. 1-3; via rollers 21/22).
Conclusion
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/SAMEH TAWFIK/Primary Examiner, Art Unit 3731