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 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 which is 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 8-9 and 14-15, claim 17, lines 8-9 and 14-15, and claim 20, lines 7 and 12, “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).
Applicant has not pointed out the support in the original disclosure for each of the newly presented limitations to the claims (MPEP §§ 714.02 and 2163.06), and because of the procedure for interpreting such claims as set forth in MPEP § 2163.06, prior art may be applicable to any subsequently amended claims.
Response to Arguments
Applicant’s remarks have been considered but are deemed moot in view of the new grounds of rejection.
Conclusion
Applicant’s amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL (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 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 Thomas Barrett can be reached at telephone number 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID H WILLSE/ Primary Examiner, Art Unit 3774