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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a knit sleeve, classified in D10B 2401/04.
II. Claims 11-20, drawn to a method of constructing a sleeve, classified in D04B 1/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process. For example, the product as claimed can be made by knitting a continuous material, wrapping one end to the center of the continuous material and knitting them together to form an inner wall, wherein the leftover material forms the outer wall that is wrappable around the inner wall.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
- the inventions have acquired a separate status in the art in view of their different classification
- the inventions have acquired a separate status in the art due to their recognized divergent subject matter
- the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Group I would require a search in at least CPC D10B 2401/04 along with a unique text search.
Group II would not be searched as above and would require a search in at least CPC D04B 1/00 along with a unique text search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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.
During a telephone conversation with John Wright on 11 February 2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 1-10 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 outer wall" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. It is thus unclear to what the outer wall refers. For purposes of examination, claim 1 is interpreted as instead reciting “the a knit outer wall” as supported by the instant specification Par. 0004.
Claim 3 is indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h). For the purposes of examination claim 3 will be interpreted as reciting “consists of at least one selected from the group consisting of polyester, nylon, polypropylene, polyethylene, acrylic, cotton, and rayon.” Correction is required.
Claim 3 contains the trademark/trade name nylon. 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 polyamide and, accordingly, the identification/description is indefinite. For purposes of examination, claim 3 is interpreted such that “nylon” instead recites “polyamide”.
Claim 5 is indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h). For the purposes of examination claim 3 will be interpreted as reciting “consists of at least one selected from the group consisting of silica, fiberglass, ceramic, basalt, slag, aramid, and carbon.” Correction is required.
Claims 2, 4, and 6-10 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
Claim Rejections - 35 USC § 102
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 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 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (US 20180023222 A1).
Regarding claim 1, Zhang teaches a knit sleeve for providing thermal protection about an elongate member, comprising: a circumferentially continuous, tubular knit inner wall of yarns fixed to a knit outer wall, said circumferentially continuous inner wall having opposite inner edges extending lengthwise between opposite inner ends (Zhang, Par. 0004, 0028-0031, and Fig. 2A). Zhang teaches the knit sleeve comprises the knit outer wall which has opposite side edges extending lengthwise between the opposite open ends, with one of the opposite edges of the knit outer wall being integrally knit to the inner wall, with the other of the opposite edges of the outer wall being wrappable about the inner wall into fixed relation about the inner wall (Zhang, Par. 0004, 0028-0031, and Fig. 2A).
Regarding claim 2, Zhang teaches the yarn forming the knit outer wall has greater impact resistance relative to the yarn forming said inner wall (Zhang, Par. 0005, 0013, and 0028-0030).
Regarding claim 3, Zhang teaches the knit outer wall consists of at least one of polyester, nylon, polypropylene, polyethylene, acrylic, cotton, or rayon (Zhang, Par. 0031).
Regarding claims 4-5, Zhang teaches the yarn forming the circumferentially continuous tubular knit inner wall is a multifilament mineral fiber consisting of at least one selected from the group consisting of silica, fiberglass, ceramic, basalt, slate, slag, aramid, and carbon (Zhang, Par. 0030).
Regarding claims 6-7, Zhang teaches an impact resistant layer stitched to said outer wall, wherein the impact resistant layer forms a circumferentially continuous layer about said inner wall upon wrapping said outer wall about said inner wall (Zhang, Par. 0006-0007, 0014-0015, 0028, 0031, and Fig. 2A).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 6-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. as applied to claim 1 above, further in view of Itoh et al. (US 20190308385 A1).
To note, the rejections to claims 6-7 are given as an alternative to the rejections to claims 6-7 in view of Zhang above.
Regarding claims 6-7 and 9, Zhang teaches all of the elements of the claimed invention as stated above for claim 1. Zhang is silent regarding an impact resistant layer covering said outer wall as required by claim 6, wherein the impact resistant layer forms a circumferentially continuous layer about said inner wall upon wrapping said outer wall about said inner wall as required by claim 7, and wherein the impact resistant layer is stitched to the outer wall as required by claim 9.
Itoh teaches a sleeve for protecting an elongate member comprising a first layer that wraps around the elongated member (textile layer) and an impact resistant layer (non-woven layer) that is stitched (see needle punching) to and covers the first layer, wherein the impact resistant layer forms a circumferentially continuous layer when wrapped around the elongated member (Itoh, Abstract, Par. 0004-0010, 0015, 0034, and Fig. 1).
Zhang and Itoh are analogous art as they both teach sleeves for protecting an elongate member comprising a layer that wraps around the elongated member. It would have been obvious to one of ordinary skill in the art to include the impact resistant layer of Itoh on the outer layer of Zhang. This would allow for improved abrasion resistance (Itoh, Par. 0034). This would further result in the impact resistant layer that is stitched to and covers the outer wall of Zhang such that the impact resistant layer forms a circumferentially continuous layer about said inner wall upon wrapping said outer wall about said inner wall.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. as applied to claims 1 and 6-7 above, further in view of Rodrigues et al. (US 20110123759 A1).
Regarding claim 8, Zhang teaches all of the elements of the claimed invention as stated above for claims 1 and 6-7. Zhang is silent regarding a plurality of fasteners fixed to said impact resistant layer, wherein pairs of said plurality of fasteners are fixable to one another to maintain said outer wall in wrapped relation about said inner wall.
Rodrigues teaches a sleeve that can wrap around a tubular object (Rodrigues, Abstract, Par. 0007, and Fig. 1). Rodrigues further teaches a plurality of fasteners (Hook and loop) fixed to the wrappable portion of the sleeve such that pairs of the fasteners are fixable to one another (Rodrigues, Par. 0025-0026 and Figs. 4-5).
Zhang and Rodrigues are analogous art as they both teach sleeves comprising a wrapping section. It would have been obvious to one of ordinary skill in the art to include the fasteners of Rodrigues on the impact resistant layer of Zhang. This would allow for the outer all to attach to the inner wall when wrapped around said inner wall (Rodrigues, Par. 0025-0026 and Figs. 4-5).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. in view of Itoh et al. as applied to claims 1 and 6-7 above, further in view of Rodrigues et al.
To note, the following rejection to claim 8 is given as an alternative to the rejection to claim 8 in view of Zhang and Rodrigues above.
Regarding claim 8, Zhang teaches all of the elements of the claimed invention as stated above for claims 1 and 6-7. Zhang is silent regarding a plurality of fasteners fixed to said impact resistant layer, wherein pairs of said plurality of fasteners are fixable to one another to maintain said outer wall in wrapped relation about said inner wall.
Rodrigues teaches a sleeve that can wrap around a tubular object (Rodrigues, Abstract, Par. 0007, and Fig. 1). Rodrigues further teaches a plurality of fasteners (Hook and loop) fixed to the wrappable portion of the sleeve such that pairs of the fasteners are fixable to one another (Rodrigues, Par. 0025-0026 and Figs. 4-5).
Zhang and Rodrigues are analogous art as they both teach sleeves comprising a wrapping section. It would have been obvious to one of ordinary skill in the art to include the fasteners of Rodrigues on the impact resistant layer of Zhang. This would allow for the outer all to attach to the inner wall when wrapped around said inner wall (Rodrigues, Par. 0025-0026 and Figs. 4-5).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. as applied to claim 1 above, further in view of Malloy et al. (EP 2185848 B1).
Regarding claim 10, Zhang teaches all of the elements of the claimed invention as stated above for claim 1. Zhang is silent regarding the inner wall being knit with 2X2 rib knit stitches.
Malloy teaches a thermally resistant sleeve comprising an inner wall formed of yarns that is knit with 2X2 rib knit stitches for increased heat retention capacity (Malloy, Abstract, Par. 0001, 0002, 0014, and 0017).
Zhang and Malloy are analogous art as they both teach thermally resistant sleeves comprising an inner wall that is knit. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a 2X2 rib knit stitching for the inner wall of Zhang. This would allow for increased heat retention capacity (Malloy, Par. 0017).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782