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
The fee set forth in 37 CFR 1.17(e) has not been paid.
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.
Claims 1-10, 13-20, and 41 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter 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, at the time the application was filed, had possession of the claimed invention. In claim 1, lines 8 and 13, claim 17, lines 8 and 12, and claim 20, lines 7 and 11, “a range from about 305 °F to about 350 °F” is not supported in the original disclosure, nor is there any indication that all of the materials listed in claims 16 and 18 innately possess formable values within this temperature range. Regarding claim 41 at line 3, “about 80” is described as an upper limit (original claim 25), so one of ordinary skill in the art would not have inferred the claimed range with “about 80” as a lower limit, particularly in the absence of any supposed criticality for such a confined range, and an allegedly patentable portion may not be “carved out” from a more broadly disclosed range (MPEP § 2163.05 III).
Response to Arguments
Applicant’s remarks are not commensurate with the claims, which set forth a lower limit of “about 305 °F” (e.g., claim 1 at lines 8 and 13), whereas Applicant instead focuses on 300 °F or about 300 °F (Applicant’s Reply of May 29, 2026: paragraph bridging pages 9 and 10). Applicant’s arguments do not offer any evidence or explanation as to how one of ordinary skill in the art would allegedly have inferred respective lower range limits of “about 305 °F” and “about 80” Shore A durometer (claim 41, lines 2-3) from Applicant’s original disclosure. Applicant also does not provide support for each of the listed materials (claims 16 and 18) supposedly possessing values within the claimed ranges.
Inherency may not be established by probabilities or possibilities (MPEP § 2163.07(a)); when an explicit limitation in a claim “is not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation” (Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998); emphasis added).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (i.e., restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114 (MPEP § 706.07(b)). 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 David H. Willse, whose telephone number is 571-272-4762. The examiner can normally be reached on Monday through Thursday. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Melanie Tyson can be reached at telephone number 571-272-9062. 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://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). 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.
/DAVID H WILLSE/ Primary Examiner, Art Unit 3774
Prosecution Insights