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 .
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.
Status of Claims
In response to the correspondence received 2/19/26:
Claims 49 – 53, 55 – 59 and 71 – 75 are pending in the application.
Claims 49 – 51, 53 and 58 – 59 have been amended.
Claims 71 – 75 are new.
Claims 49 – 53, 55 – 59 and 71 – 75 are withdrawn as directed to non-elected inventions.
No claims are currently under examination.
Claims 1 – 48, 54 and 60 – 70 are cancelled.
The rejection of claims 50 – 51, 54 and 70 under 35 U.S.C. 112 (b) is withdrawn due to amendment and/or cancelation.
The rejection under 35 U.S.C. 102 and 103 (a) are upheld.
Election/Restrictions
Newly submitted claims 49 – 53, 55 – 59 and 71 – 75 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The original invention was directed to synthetic bone. The amended claims are directed to a two layer synthetic bone. The new invention is distinct from the invention already claimed as the original search did not include or consider a two layer material.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 49 – 53, 55 – 59 and 71 – 75 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 58 - 59 contain the trademark/trade names Smooth-CastTm 300 and TaskTm 2. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe resins and hardness altering additives and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 49 – 52, 54 – 57 and 70, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Indian publication number 15/2007 (application number 253/DEL/2003, IN 222013) to Navin, Chand hereinafter “Navin”.
Navin is directed to fly ash based compositions useful for making wood substitutes.
Regarding claims 49 – 52, 54 – 57 and 70, Navin teaches a composition at Example 1 comprising jute fiber (fiber), wood flour (hardness altering additive), fly ash (pore inducing additive) and polyurethane resin (Part A + Part B, plastic casting resin).
A preamble as intended use does not carry any patentable weight, See MPEP 2111.02. Additionally, since the composition reads on the presently claimed one, it would possess the required properties. In re Best, 195 USPQ 430 (CCPA 1977).
Claim(s) 49, 53 and 59, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20090123671 A1 to Huang et al. hereinafter “Huang”.
Huang is directed to fir plank structures [0002].
Regarding claims 53 and 59, Huang teaches a composition at Example 6 comprising wood powder (hardness altering additive), polyurethane adhesive (plastic casting resin) and calcium carbonate.
A preamble as intended use does not carry any patentable weight, See MPEP 2111.02. Additionally, since the composition reads on the presently claimed one, it would possess the required properties. In re Best, 195 USPQ 430 (CCPA 1977).
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 PETER A. SALAMON whose telephone number is 571-270-3018. The examiner can normally be reached M-F: 9AM - 6PM.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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PAS 4/14/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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