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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claims 55-69, in the reply filed on 4/3/26 is acknowledged. The traversal is on the ground(s) that Groups I, II and III fall under the category "(1) A product and a process specially adapted for the manufacture of said product." This is not found persuasive for several reasons. First a process is “specially adapted for” manufacturing the product only if the claimed process and product share a special technical feature. See MPEP 1893.03. The applicant asserts the “welded together” limitation constitutes a special technical feature because it makes a contribution over the prior art. This is not correct. Because claim 55 is a product claim, it does not require a welding step, as method steps do not further limit product claims - the “patentability of a product does not depend on its method of production”. MPEP 2113. Only the “structure implied by the process steps should be considered”. MPEP 2113. Thus, claim 55 only requires a connection capable of being formed by welding. At least para 17 and 23 of Falkin satisfy this because any of the connection means are capable of being formed with a weld. The applicant’s argument is flawed because the disclosure of an “adhesive, sewing, stitching, rivets or other connecting mechanism” in no way excludes a joint formed by welding.
Nonetheless, the technical features shared between the groups do not qualify as special technical features because said shared technical features do not make a contribution over the prior art at least for the reasons detailed in the body of the rejection below.
Claims 71-74 are withdrawn with traverse.
The requirement is still deemed proper and is therefore made FINAL.
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 56-65 and 69 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 56 recites “the contacting surface contacts against and welds to the contacting portion”. Is the weld recited in this limitation the same or different than the previously claimed weld.
In claim 57, it’s not clear to which of previously recited welds “the weld” refers.
Claim 58 recites “wherein the contacting surface and the contacting portion are welded together”. Both “the contacting surface” and “the contacting portion” lack proper antecedent basis.
Claim 64 recites “the end component body comprises more than one end component body layer; and at least one end component body layer is arranged over the end component body layer”. It is unclear as to which of the previously recited end component body or bodies this limitation refers. A possible amendment is a follows:
“the one or more end component body layers comprise[[s]] more than one end component body layer; and at least one of the end component body layers is arranged over another one of the end component body layers”.
Claim 65 recites: “the end component body comprises more than one end component body layer”. It is unclear as to which of the previously recited end component body or bodies this limitation refers.
In claim 65, it’s not clear if “by welding” refers to the same weld previously recited.
Claim 69 recites “the surfing tether end component does not comprise adhesives, additional cross-link polymers or any other additional affixing means”. This limitation is unclear because the scope of “additional cross-link polymers” and “additional affixing means” is unclear and subjective. The specification does not define what consttitues “cross-link polymers”; nor does the specification give guidance as to what “cross-link polymers” could be considered “additional”. The limitation is subjective. Furthermore, the specification does it define the scope of “affixing means”, let alone what fixing means could be considered not “additional”.
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 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.
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) 56-69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kerckhoff (US 6471560) in view of May (US 5735234).
**The claims recite several method limitations. As discussed above, method limitations do not impart patentability to the claims. The method limitations will be evaluated as dictated by MPEP 2113. See MPEP 2113 and above discussion.**
As to claim 55, Kerckhoff discloses a surfing tether end component comprising: an end component body (50, fig 9-12) having one or more end component body layers (layers of 60 and/or layer 60/70, fig 9-12); a tether connector 68 for connecting the surfing tether end component to a surfing device tether (tubing, C3, L67) and a fastening means 70/74/72; wherein at least one adjacent pair of the end component body, the one or more layers of the end component body, the tether connector and the fastening means are at least partially affixed to one another at an affixed region (long edges of 60 folded over and attached, figs 9-11, and/or 70 attached to 60, figs 9-12). Also see C1, L31 – C2, L26; C4, L32 – C5, L25).
While Kerckhoff discloses that an affixing means, such as sewing material (C5, L7; C4, 8) is used to form the affixed portion, Kerckhoff does not expressly disclose said affixed region comprises a weld.
May discloses that body layers (layers that form region 20, bonded area 24) of a tether used to secure a person (C1, L18-25) have an affixed region 24. The affixed region can be a weld, a melt bond, a tie or a sewed region (C3, L60-67). As taught by May and generally understood in the art, there are only a finite number of affixing means for the affixed portion. Two of these, as disclosed by May, are a sown region and a weld. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the affixed portion of Kerckhoff such that it comprises a weld as taught by May above as a weld is one of a finite number of affixing means and thus one of ordinary skill would have understood using a weld has a reasonable expectation of success. Further, May’s disclosure that either a weld or a sown region could be used is strong evidence that one of ordinary skill would have a reasonable expectation of success.
As to claims 56 and 61, Kerckhoff as modified by May above discloses at least a portion of at least one of the one or more end component body layers 60 comprises at least one polymer selected from a single polymer class (Kerckhoff neoprene, C1, L60-65) (note neoprene is a thermoset material), being a contacting portion thereof (upper layer of 60 to which 70 is attached, see 11-12), at least one of the fastening means 70 and the tether connector comprise a contacting surface (bottom surface of 70 which is attached to 60, fig 11-12) comprised of at least one polymer selected from the single polymer class (C1, L60-65); and the contacting surface contacts against and welds to the contacting portion (C1, L65-65, C3, L14-40; C4, L30 – C5, 17).
As to claim 57, Kerckhoff as modified by May above discloses the weld is a molecular or intermolecular bond (May C3, L60-67, welding to attach two polymer layers).
As to claim 58, the limitation is a method limitation which implies a thermal bond. The weld is a thermal bond because heat is used to form the weld (May C3, L60-67).
Claims 59 recites: the weld is at least partially formed via internal heat welding process; and the internal heat welding process is either an electromagnetic welding process or a mechanical welding process, or both the electromagnetic welding process and the mechanical welding process, are used.
Claim 60 recites: the weld is at least partially formed via external heat welding process; and the external heat welding process is a thermal welding process.
The limitations of these claims are directed to method steps.
The structure implied by these method limitations is a weld that is a thermal bond. Kerckhoff as modified by May meets this for the reasons discussed in claim 58 above.
As to claim 62, Kerckhoff as modified by May discloses the contacting portion is substantially formed from a single polymer (Kerckhoff C3, L14-30), or wherein the contacting surface is substantially formed from the same single polymer as the contacting portion (C4, L42-50).
As to claim 63 Kerckhoff as modified by May discloses the end component body comprises more than one end component body layer 60/70; and the contacting portion is provided by an outermost end component body layer 60 (Kerckhoff, fig 9-12, C4, L32 – C5, L17).
As to claim 64, Kerckhoff as modified by May discloses the end component body comprises more than one end component body layer; and at least one end component body layer 70 is arranged over the end component body layer 60 providing the contacting portion so as to enclose, within the end component body, at least a portion of the at least one of the fastening means and the tether connector having the contacting surface welded to the contacting portion (figs 9-12, specifically fig 8, 11, (C4, L32 – C5, L17).
As to claim 65, Kerckhoff as modified by May discloses the end component body comprises more than one end component body layer, each end component body layer extending for at least a portion of a length of the end component body; and at least two adjacent end component body layers are formed of at least one polymer selected from the single polymer class and are at least partially affixed to one another (Kerckhoff figs 9-12, C4, L32 – C5, L17). by welding (May C3, L60-67).
As to claim 66, Kerckhoff discloses a secondary element (loop at end of 50, fig 12) attached onto or into the one or more end component body layers. While Kerckhoff does not expressly disclose the secondary element is attached via a weld, it would have obvious to a weld as taught by May for the reasons discussed above.
As to claim 67, Kerckhoff as modified by May discloses the tether end component body is configured to encircle the user's limb; and the fastening means comprises a first fastening structure 74 and a second fastening structure 72 arranged to releasably engage with one another when the user's limb is encircled by the tether end component body (Kerckhoff figs 9-12, C4, L32 – C5, L17).
As to claim 68, Kerckhoff as modified by May discloses at least one of the at least two adjacent end component body layers comprises a cushioning layer 62 or an expanded polymer foam layer, or wherein at least one of the at least two adjacent end component body layers comprises the cushioning layer and the expanded polymer foam layer (Kerckhoff figs 9-12, C4, L32 – C5, L17).
As to claim 69, Kerckhoff as modified by May discloses the surfing tether end component does not comprise adhesives, additional cross-link polymers or any other additional affixing means between the adjacent two of the one or more end component body layers, the tether connector and the fastening means that are affixed to one another by being welded together. Since the in the modified tether end component, the weld is chosen instead of attaching means such as stitching, the modified tether end will be free of any other additional affixing means between the adjacent two of the one or more end component body layers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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