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 .
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 9 and 19 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.
Claims 9 and 19 each recite “two or three distinct thermoplastic vulcanizates”. This limitation is indefinite as it is unclear whether it is inclusive or exclusive of the prior claimed at least one thermoplastic vulcanizate and unclear if they each must have the material compositions and properties of the at least one thermoplastic vulcanizate of the independent claims. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “the at least one thermoplastic vulcanizate and at least one additional thermoplastic vulcanizate”.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-19 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-19 of copending Application No. 18/256,939 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/256,939 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of copending Application No. 18/256,939 encompass the scope of instant claims 1-19 and 23.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-19 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gamble (US 2015/0240974) in view of Bhadane et al. (WO 2019/143420).
With regard to claim 1, Gamble discloses an extrusion molded gasket (10) comprising: one or more annular sections (i.e. one of the left or right axial side sections as seen in Figs. 3, etc.) configured to engage a door rim of a tub (i.e. by virtue of its shape and structure it is considered configured to do such (e.g. its projecting portions, resilient material, etc.)), one or more annular sections (i.e. the other one of the left or right axial side sections as seen in Fig. 3, etc.) configured to engage the tub (i.e. by virtue of its shape and structure it is considered configured to do such (e.g. its projecting portions, resilient material, etc.)), and one or more sealing sections disposed therebetween (i.e. as seen in Figs. 3, etc. there are a variety of portions therebetween), wherein the gasket comprises at least one thermoplastic vulcanizate (as disclosed in para. [0018]), and wherein the thermoplastic vulcanizate is extrusion molded into the gasket (as disclosed in para. [0018], additionally Examiner notes this is a product by process limitation).
Gamble is silent as to the exact composition of the TPV and thus fails to explicitly disclose the thermoplastic vulcanizate comprises at least 15 wt%, by weight of the thermoplastic vulcanizate, of a cross-linkable ethylene-based elastomer and within a range from 5 to 30 wt%, by weight of the thermoplastic vulcanizate, of at least one thermoplastic, the thermoplastic vulcanizate having a Shore Hardness within a range from 35A to 50D.
Bhadane discloses a thermoplastic vulcanizate (TPV) material comprises at least 15 wt%, by weight of the thermoplastic vulcanizate, of a cross-linkable ethylene-based elastomer and within a range from 5 to 30 wt%, by weight of the thermoplastic vulcanizate, of at least one thermoplastic (as disclosed in para. [0086], etc., table I, etc. in examples 1-6), the thermoplastic vulcanizate having a Shore Hardness within a range from 35A to 50D (as disclosed in table II in examples 1-6).
It would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Gamble such that the TPV has at least 15 wt%, by weight of the thermoplastic vulcanizate, of a cross-linkable ethylene-based elastomer and within a range from 5 to 30 wt%, by weight of the thermoplastic vulcanizate, of at least one thermoplastic, the thermoplastic vulcanizate having a Shore Hardness within a range from 35A to 50D as disclosed by Bhadane. Such a modification would provide the expected benefit of low coefficient of friction, good bonding capabilities, high material strength, etc. as disclosed in Bhadane para. [0008], etc.
With regard to claim 2, Gamble discloses that styrenic copolymers are absent from the gasket (as disclosed in para. [0086], etc., table I, etc.).
With regard to claim 3, Gamble discloses that the thermoplastic vulcanizate further comprises non-migratory polysiloxane (as disclosed in para. [0086], etc., table I, etc.).
With regard to claim 4, Gamble discloses that the at least one thermoplastic vulcanizate further comprises within a range from 10 wt% to 60 wt%, by weight of the thermoplastic vulcanizate, of an oil (as disclosed in para. [0086], etc., table I, etc.).
With regard to claim 5, Gamble discloses that the at least one thermoplastic vulcanizate consists essentially of the cross-linkable ethylene-based elastomer, thermoplastic, oil, resin, clay, carbon black, a non-migratory silicon-slip agent, and curatives (as disclosed in para. [0086], etc., table I, etc.).
With regard to claim 6, the combination (Gamble) discloses that the gasket forms a water-tight seal between an appliance tub containing water and a door rim that sealingly fits against the appliance tub, the gasket forming a seal between the appliance tub and door rim (Examiner notes that as Applicant has only claimed the gasket in claim 1, on which this claim relies, and the tub and door rim as an intended use limitation/capability, these limitations are considered a further narrowing of the intended use/capabilities of claim 1 and are given little patentable weight. As the seal of Gamble is capable of forming a water right seal due to its body and material in the claimed manner it anticipates this claim).
With regard to claim 7, the combination (Bhadane) discloses that the at least one thermoplastic vulcanizate has a 100% Modulus of at least 1 MPa (as disclosed in table 2, etc.).
With regard to claim 8, the combination (Bhadane) discloses that the at least one thermoplastic vulcanizate has a coefficient of friction of less than 2.2 (as disclosed in table 2, etc.).
With regard to claim 9, the combination fails to explicitly discloses that two or three distinct thermoplastic vulcanizates are co-extrusion molded to form a continuous gasket profile that is multi-hardness in profile. However Examiner it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have two or three distinct thermoplastic vulcanizates are co-extrusion molded to form a continuous gasket profile that is multi-hardness in profile as Examiner takes Official Notice that the art is replete with examples of gasket with co-coextruded portions of differing hardness. Such a modification provides the expected benefit of allowing for tailoring physical properties of the gasket in different areas of the gasket based on the anticipated forces and environment of different sections of such.
With regard to claim 10, the combination (Gamble) discloses that extrusion molded gasket is extruded into an annular shape, and wherein the ends are fused to one another to create a continuous annular gasket (as disclosed in para. [0018], etc.).
With regard to claim 11, Gamble discloses a method of making a gasket (as disclosed in para. [0018], etc. Gamble discloses a method of making gasket 10) comprising: extrusion molding (as disclosed in para. [0018]) at least one thermoplastic vulcanizate (as disclosed in para. [0086], Table 1, etc.) into an annular form (as discloses in para. [0018]) having one or more annular sections (i.e. one of the left or right axial side sections as seen in Figs. 3, etc.) configured to engage a door rim of a tub (i.e. by virtue of its shape and structure it is considered configured to do such (e.g. its projecting portions, resilient material, etc.)), one or more annular sections (i.e. the other one of the left or right axial side sections as seen in Fig. 3, etc.) configured to engage the tub (i.e. by virtue of its shape and structure it is considered configured to do such (e.g. its projecting portions, resilient material, etc.)), and one or more sealing sections disposed therebetween (i.e. as seen in Figs. 3, etc. there are a variety of portions therebetween), cutting the annular form to a desired length such that the annular form has two ends (as disclosed in para. [0018]), and fusing one end of the annular form to the other end to create a continuous annular gasket (as disclosed in para. [0018]);
Gamble is silent as to the exact composition of the TPV and thus fails to explicitly disclose the thermoplastic vulcanizate comprises at least 15 wt%, by weight of the thermoplastic vulcanizate, of a cross-linkable ethylene-based elastomer and within a range from 5 to 30 wt%, by weight of the thermoplastic vulcanizate, of at least one thermoplastic, the thermoplastic vulcanizate having a Shore Hardness within a range from 35A to 50D.
Bhadane discloses a thermoplastic vulcanizate (TPV) material comprises at least 15 wt%, by weight of the thermoplastic vulcanizate, of a cross-linkable ethylene-based elastomer and within a range from 5 to 30 wt%, by weight of the thermoplastic vulcanizate, of at least one thermoplastic (as disclosed in para. [0086], etc., table I, etc. in examples 1-6), the thermoplastic vulcanizate having a Shore Hardness within a range from 35A to 50D (as disclosed in table II in examples 1-6).
It would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Gamble such that the TPV has at least 15 wt%, by weight of the thermoplastic vulcanizate, of a cross-linkable ethylene-based elastomer and within a range from 5 to 30 wt%, by weight of the thermoplastic vulcanizate, of at least one thermoplastic, the thermoplastic vulcanizate having a Shore Hardness within a range from 35A to 50D as disclosed by Bhadane. Such a modification would provide the expected benefit of low coefficient of friction, good bonding capabilities, high material strength, etc. as disclosed in Bhadane para. [0008], etc.
With regard to claim 12, Gamble discloses that styrenic copolymers are absent from the gasket (as disclosed in para. [0086], etc., table I, etc.).
With regard to claim 13, Gamble discloses that the thermoplastic vulcanizate further comprises non-migratory polysiloxane (as disclosed in para. [0086], etc., table I, etc.).
With regard to claim 14, Gamble discloses that the at least one thermoplastic vulcanizate further comprises within a range from 10 wt% to 60 wt%, by weight of the thermoplastic vulcanizate, of an oil (as disclosed in para. [0086], etc., table I, etc.).
With regard to claim 15, Gamble discloses that the at least one thermoplastic vulcanizate consists essentially of the cross-linkable ethylene-based elastomer, thermoplastic, oil, resin, clay, carbon black, a non-migratory silicon-slip agent, and curatives (as disclosed in para. [0086], etc., table I, etc.).
With regard to claim 16, the combination (Gamble) discloses that the gasket forms a water-tight seal between an appliance tub containing water and a door rim that sealingly fits against the appliance tub, the gasket forming a seal between the appliance tub and door rim (Examiner notes that as Applicant has only claimed a method of manufacturing the gasket in claim 11, on which this claim relies, and the tub and door rim as an intended use limitation/capability of the gasket, these limitations are considered a further narrowing of the intended use/capabilities of claim 11 and are given little patentable weight. As the seal of Gamble is capable of forming a water right seal due to its body and material in the claimed manner it anticipates this claim).
With regard to claim 17, the combination (Bhadane) discloses that the at least one thermoplastic vulcanizate has a 100% Modulus of at least 1 MPa (as disclosed in table 2, etc.).
With regard to claim 18, the combination (Bhadane) discloses that the at least one thermoplastic vulcanizate has a coefficient of friction of less than 2.2 (as disclosed in table 2, etc.).
With regard to claim 19, the combination fails to explicitly discloses that two or three distinct thermoplastic vulcanizates are co-extrusion molded to form a continuous gasket profile that is multi-hardness in profile. However Examiner it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have two or three distinct thermoplastic vulcanizates are co-extrusion molded to form a continuous gasket profile that is multi-hardness in profile as Examiner takes Official Notice that the art is replete with examples of gasket with co-coextruded portions of differing hardness. Such a modification provides the expected benefit of allowing for tailoring physical properties of the gasket in different areas of the gasket based on the anticipated forces and environment of different sections of such.
With regard to claim 23, Bhadane discloses a cure system (paragraphs [0025 – 0037], [0067]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
August 26, 2025