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 .
Response to Amendment
In view of the amendment filed 06/10/2025:
Claims 26-31 are pending.
Claims 1-25 are cancelled.
Claim Rejections - 35 USC § 112
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 30 and 31 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.
Claim 30 recites the limitation "the conditions" in line 6. It is unclear which conditions the liquids and/or solids are subjected to, since the conditions have not been previously recited for. While claim 26 recites the additive solidifies at temperatures greater than 0 degrees Celsius, the claim does not recite any steps that include the additive being subjected to conditions such as freezing, for example, to solidify the additive. Therefore, there is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, Examiner will interpret claim 30 as “liquids and/or solids that can be hardened or could be arranged and oriented to be stiffer by being subjected to conditions” to provide proper antecedent basis for the limitation. However, clarification and correction is required.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Olari et al. (US20040089963), and further in view of Okuda et al. (US20060141159).
Regarding claim 26, Olari teaches a method of shaping an elastic or viscoelastic material
having a plurality of interstices (Abstract: The invention relates to a process for machining a
flexible foam), the method including the steps of:
shaping an elastic or viscoelastic material ([0014]) incorporating a solid, hard, and/or stiff additive ([0012] the flexible foam is cooled by soaking the foam with a liquid and then freezing the liquid. Typically, the liquid used is water, although other liquids having freezing points within a practicable range can also be used. The flexible foam can be soaked with the liquid in any suitable manner, such as by pouring or spraying the liquid onto the foam until the foam is completely soaked, or by immersing the foam in a container of the liquid) using subtractive shaping methods so as to form a shaped elastic or viscoelastic material incorporating the additive ([0014]); and
removing at least a portion of the incorporated additive from the shaped elastic or viscoelastic material incorporating the additive ([0016]),
wherein: the subtractive shaping methods comprise at least computer numerical control contour machining ([0014] The foam is machined after it has been temporarily hardened. Any suitable machining equipment can be used, such as cutting, milling or drilling equipment. Preferably, the hardened foam is cut using automated cutting equipment, and more preferably using a CNC machine; Applicant’s disclosure recites “to be shaped using contour-shaping machining methods including computer numerical control (CNC) milling” on pg. 1 under “Field of Invention”. Therefore, a CNC machine is a form of contour-shaping, and CNC machines will be interpreted as a type of computer numerical control contour machining).
While Olari fails to teach wherein the additive is not water and solidifies at a
temperature of greater than 0°C, Olari does teach that other liquids having freezing points within a practical range can also be used ([0012]), prompting one of ordinary skill to look to liquids with freezing points within a practicable range.
In the same field of endeavor pertaining to shaping porous materials with additives,
Okuda teaches the additive is not water ([0040]-[0041]) and solidifies at a temperature of greater than 0°C ([0041] The perforating is carried out at a temperature that the soluble polymer or paraffin impregnated into the porous structure retains its solid state. When a substance that is solid at ordinary temperature (15 to 30.degree. C.)). A solidifying point that is too low would increase the cost for cooling means such that solidification becomes expensive ([0088] If the solidifying point or melting point is too low, the cost of a cooling means for solidification becomes expensive).
Therefore, it would have been obvious before the effective filing date of the claimed
invention to a person having ordinary skill in the art for the additive of Olari to not be water and to solidify at a temperature of greater than 0°C, as taught by Okuda, since one of ordinary
skill would be motivated to use liquids with freezing points within a practical range that do not
increase the cost of cooling means.
Regarding claim 27, Olari modified with Okuda teaches the method of claim 26. Further, Olari teaches wherein the plurality of interstices is a network of voids (Abstract: The invention
relates to a process for machining a flexible foam. The flexible foam is treated to temporarily
harden the foam).
Regarding claim 28, Olari modified with Okuda teaches the method of claim 26. Further, Olari teaches wherein the elastic or viscoelastic material is a foam (Abstract: The invention relates to a process for machining a flexible foam. The flexible foam is treated to temporarily harden the foam).
Regarding claim 29, Olari modified with Okuda teaches the method of claim 28. Further, Olari teaches wherein the elastic or viscoelastic material is a foam (Abstract: The invention relates to a process for machining a flexible foam. The flexible foam is treated to temporarily harden the foam).
Regarding claim 30, Olari modified with Okuda teaches the method of claim 26. While Olari fails to teach the additive is selected from: a wax or wax- like compounds and mixtures thereof; a crystalline solid; a supersaturated liquid; a liquid crystallising compound; a non-Newtonian compound that solidifies;granules/powders/other solids which can flow into the elastic or viscoelastic material;liquids and/or solids that can be hardened or could be arranged and oriented to be stiffer by being subjected to conditions, Olari does teach that additives with freezing points within a practical range can also be used ([0012]), prompting one of ordinary skill to look to additives with freezing points within a practicable range.
In the same field of endeavor pertaining to shaping porous materials with additives,
Okuda teaches the additive is a wax or wax- like compound ([0041] The soluble polymer or paraffin is impregnated as a liquid (melt) or solution into the interior of the porous structure including both surfaces of the porous resin base).
Therefore, it would have been obvious before the effective filing date of the claimed
invention to a person having ordinary skill in the art for the additive of Olari to be a wax or wax- like compound, as taught by Okuda, since one of ordinary skill would be motivated to use liquids with freezing points within a practical range that do not increase the cost of cooling means.
Regarding claim 31, Olari modified with Okuda teaches the method of claim 30. As noted in the rejection of claim 30 above, Okuda teaches wherein the additive is a wax or wax-like compound.
Therefore, it would have been obvious before the effective filing date of the claimed
invention to a person having ordinary skill in the art for the additive of Olari to be a wax or wax- like compound, as taught by Okuda, since one of ordinary skill would be motivated to use liquids with freezing points within a practical range that do not increase the cost of cooling means.
Response to Arguments
Applicant's arguments filed 06/10/2025 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that it would not be obvious to a person of ordinary skill in the art to modify or combine the teachings of Okuda with those of Olari (see top of pg. 3 of Remarks), Examiner respectfully disagrees.
In regards to Applicant’s argument that concerns related to cost associated with a low solidifying point is not enough of a motivation to modify the teachings of Olari with those of Okuda (see pg. 3 paragraph 2 of Remarks), Examiner respectfully disagrees. Applicant notes in the Remarks that Okuda’s concerns of costs associated with a low solidifying point in [0088] is not enough of a motivation for a person having ordinary skill in the art to modify the teachings of Olari with those Okuda, but does not provide any evidence as to why concerns of cost are not “enough” of a motivation for one of ordinary skill to look to the additives of Olari. An argument does not replace evidence where evidence is necessary. Further, a prima facie case of obviousness is established by “combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so” (see MPEP 2143.01). Therefore, only some motivation is required, and there is no threshold for a level of motivation for a person having ordinary skill in the art to combine or modify teachings. As noted in the rejection of claim 26 above and as established in the rejection of claim 1 in the Office Action mailed 03/14/2025, Olari teaches that additives other than water that have freezing points within a practical range can also be used in [0012], prompting one of ordinary skill to look to additives with freezing points within a practical range. Okuda, which is in the same field of endeavor as Olari, teaches using additives with freezing points at “ordinary temperatures” of 15 to 30 degrees Celsius in [0041], and provides a motivation for using additives with freezing points at “ordinary temperatures” in [0088].
Applicant also notes in pg. 3 paragraph 2 of Remarks that Olari teaches cooling to a temperature of 0 degrees Celsius or below such that a person of ordinary skill would be unmotivated to combine or modify the teachings of Olari with those of Okuda. However, Olari’s cooling to a temperature of 0 degrees Celsius or below is one mode of operation, and Olari further teaches in [0012] that additives other than water that have freezing points within a practical range can also be used, prompting one of ordinary skill to look to liquids within a practical range.
Regarding Applicant’s argument that any perceived cost benefit of avoiding cooling would immediately be negated by other unaddressed costs and technical challenges, as well as the cost of procuring bulk additives such as paraffin as opposed to readily available water (see pg. 3 paragraph 2 of Remarks), the fact that a "combination would not be made by businessmen for economic reasons" does not mean that a person of ordinary skill in the art would not make the combination because of some technological incompatibility (see MPEP 2145. VIII.)
Applicant further argues that it would not be obvious to modify the teachings of Olari with Okuda because Olari discloses a process to machine a flexible foam and Okuda teaches a process for forming a plurality of perforations in a porous resin base comprising of fluorocarbon resins, which is a material that cannot be compressed or stretched by hand. However, Examiner respectfully disagrees.
The rejection of claim 26 above and the rejection of claim 1 in the Office Action mailed 03/14/2025 is substituting the additive of Olari with the additive of Okuda, and there is no modification involving the foam of Olari with the porous resin base of Okuda.
However, Examiner does acknowledge that the alleged flexibility of Okuda’s porous resin base should be considered in establishing whether there would have been a reasonable expectation of success to substitute the additive of Okuda with the additive of Olari to achieve the result of machining a flexible foam. Okuda does teach that the porous resin base has some flexibility ([0011] The porous resin base has elasticity in a thickness-wise direction thereof. , [0015] This anisotropically conductive sheet preferably has elasticity in the thickness-wise direction thereof for the purpose of achieving the electrical connection between the electrodes to be inspected, [0029] A porous resin material having electrically insulating property, a low dielectric constant and elasticity is suitable for use as a resin base of materials for connection between circuits, [0132] A porous resin base rich in flexibility and elasticity, such as sponge, may be generally subjected to machine working with good precision at a temperature not higher than the first-order transition point of the resin or a temperature near to the first-order transition point like rubber materials, [0138] When the porous resin base is an expanded PTFE base having a microstructure comprising fibrils and nodes connected to each other by the fibrils, it is rich in flexibility and elasticity, low in dielectric constant and particularly excellent in electrically insulating property because the porous structure is retained).
Applicant cites [0132] to argue that a machining approach is ineffective for the PTFE porous resin base as the material becomes friable (see pg. 4 of Remarks). However, [0132] states the porous resin base is rich in flexibility and elasticity, and that it may be generally subjected to machine working. However, if a porous resin material contains a great number of porous structures (i.e. if porosity becomes too high), then the material experiences friability upon machine working.
Applicant argues that the machine shaping methods disclosed by Okuda impose different types of forces than the CNC shaping methods disclosed by Olari (see pg. 4 of Remarks). However, both Olari and Okuda teach machining methods involving drilling. Olari teaches machining equipment that includes cutting, milling or drilling ([0014] The foam is machined after it has been temporarily hardened. Any suitable machining equipment can be used, such as cutting, milling or drilling equipment) and Okuda teaches machine working methods including punching, blanking, or drilling ([0131] As the mechanically perforating method (machine-working method), is preferred punching, blanking or drill). It is unclear how the machining shaping methods disclosed by Okuda impose different types of forces than the CNC shaping methods of Olari, as Okuda and Olari are both directed to machining by drilling.
Therefore, it would have been obvious to a person of ordinary skill in the art to modify or combine the teachings of Okuda with those of Olari.
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 ARIELLA MACHNESS whose telephone number is (408)918-7587. The examiner can normally be reached Monday - Friday, 6:30-2:30 PT.
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/ARIELLA MACHNESS/Examiner, Art Unit 1743