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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/25/2026 has been entered.
Withdrawn Rejections
Any rejections/objections made in the previous Final Office Action mailed 1/8/2026 and not repeated below are hereby withdrawn due to Applicant's amendment filed on 2/25/2026.
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 1-15 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 1 recites the limitation "the free end faces" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the functional parts (2, 6, 26, 28)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which claim 4 depends from, recites functional parts (2, 6) not (26, 28).
Claim 5 recites the limitation "the functional parts (2, 61, 26, 28)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which claim 5 depends from, recites functional parts (2, 6) not (61, 26, 28).
Claim 6 recites the limitation "the extension of the film" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 further recites the limitation "the functional parts (2, 6, 26, 28)" in line 6. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which claim 6 depends from, recites functional parts (2, 6) not (26, 28).
Claim 8 recites the limitation "the functional parts (2, 6, 26, 28)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which claim 8 depends from, recites functional parts (2, 6) not (26, 28).
Claim 9 recites the limitation "the respective functional part (2, 6, 26, 28)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which claim 9 depends from, recites functional parts (2, 6) not (26, 28).
Claim 10 recites “Al” which renders the claim indefinite because it is not clear what is meant by “Al”. Appropriate correction is required.
Claim 11 recites the limitation "the functional parts (2, 6, 26, 28)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which claim 11 depends from, recites functional parts (2, 6) not (26, 28).
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “configured to” in claims 1 and 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim limitation “configured to” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Applicant’s specification discusses a fastening system, but fails to show how it would be applied repeatedly to third components having smooth surfaces and how it would be designed as rolled or wound material. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claims 1-5 and 8-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Poulakis (US 2017/0066181).
Regarding claim 1, Poulakis discloses a fastening system (Figs. 1 and 5) which is configured to be applied repeatedly to third components having smooth surfaces for the purpose of detachable fastening to the same (paragraph [0025]), comprising at least two interconnected functional parts of planar shape (12, 18 and/or 20), of which at least one functional part has the form of a film (film 18) and at least one further functional part (12) has a plurality of individual elements (14), the free end faces (16) of which adhere to the smooth surface of the respective third component by means of Van der Waals forces (paragraph [0025]), and wherein the individual elements (14) are each formed from stem or stalk parts having free ends (16) that widen in diameter to form a broadening (Figs. 1 and 5).
Regarding the limitation “bears information” in claim 1, it is to be pointed out that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. MPEP 2112.01(III).
Regarding claim 2, Poulakis discloses a connecting means in the form of a glue is introduced between the two functional parts for keeping the two functional parts together (paragraph [0027]).
Regarding claim 3, Poulakis discloses a third functional part is arranged between the two functional parts, wherein the third functional part is designed as a support part and has the connecting means to at least one of the adjacent functional parts on at least one side (Fig. 1; paragraph [0027]).
Regarding claim 4, Poulakis discloses all the functional parts, including any connecting means, being provided as layers and, at least in an initial state prior to use, are in contact with one another in a plane-parallel and full-contact manner and without any protrusions (Figs. 1 and 5).
Regarding claim 5, Poulakis discloses at least some of the functional parts themselves having a multilayer structure (Figs. 1 and 5; paragraphs [0027] and [0041]).
Regarding claim 8, Poulakis discloses the functional parts arranged adjacent to one another, are connected to each other without glue by means of coating or lamination process (paragraph [0027]).
Regarding claim 9, Poulakis discloses the respective functional part consisting of a plastic material, and wherein the further functional part, at least to the extent of its individual elements, has adhesion properties of the class of poly(organo)siloxane (paragraph [0026]).
Regarding claim 10, Poulakis discloses the one functional part being colored (paragraphs [0027] and [0029]). Regarding the limitations “bearing information” and “symbols”, it is to be pointed out that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. MPEP 2112.01(III).
Regarding claim 11, Poulakis discloses wherein at least one of the functional parts is equipped with a flame retardant (paragraphs [0042] and [0050]).
Claim 12 defines the product by how the product was made. The limitation “the individual elements is produceable using a forming screen in a chill-roll process" is deemed a process limitation. Thus, claim 12 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited step implies forming individual elements capable of adhesion. As shown above, Poulakis suggests such a product. The method of forming the product is not germane to the issue of patentability of the product itself. MPEP 2113.
Regarding claim 13, Poulakis discloses the fastening system, configured to be designed as rolled or wound material, such that in the unrolled or unwound state and divided into predeterminable lengths can fulfill respective purposes (paragraph [0035]). Claim 13 recites a recitation of the intended use of the claimed invention. It has been held that a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. 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. As shown above, Poulakis clearly teaches all the structural limitations of the claimed fastening system. Accordingly, the fastening system of Poulakis is capable of performing the intended use recited in claim 13.
Regarding claim 14, Poulakis discloses a tradable merchandise item consisting of a plurality of fastening systems combined on a carrier strip, as small parts that can be separated from one another, and after detachment from the carrier strip, are provided for detachable adhesion to the third component (Fig. 5; paragraph [0025]).The limitation “tradable merchandise item” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “tradable merchandise item” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Claim 15 recites a recitation of the intended use of the claimed invention. It has been held that a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. 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. As shown above, Poulakis clearly teaches all the structural limitations of the claimed fastening system. Accordingly, the fastening system of Poulakis is capable of performing the intended use recited in claim 15.
Claim Rejections - 35 USC § 103
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.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Poulakis as applied to claim 1 above.
Poulakis discloses the claimed fastening system as shown above, but fails to teach the further functional part as a whole together with the individual elements being subdivided into groups which at least in a longitudinal and/or transverse direction to the extension of the film of the one functional part, have a predeterminable distance from one another, with a gap size that is smaller than a film thickness of each of the functional parts, and wherein a group member of the groups is formed of a single segment which in conjunction with further segments forms the further functional part. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the further functional part as a whole together with the individual elements in Poulakis to be subdivided into groups which at least in a longitudinal and/or transverse direction to the extension of the film of the one functional part, have a predeterminable distance from one another, with a gap size that is smaller than a film thickness of each of the functional parts, and wherein a group member of the groups is formed of a single segment which in conjunction with further segments forms the further functional part, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. See MPEP 2144.04 (V) C.
Response to Arguments
Applicant’s arguments, filed 2/25/2026, with respect to claims 1-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781