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 .
Response to Amendments/arguments
Claims 8-14 are pending. Claims 8 and 14 are amended.
Applicant's amendments and arguments with respect to the rejection of present claims 8-14 under 35 U.S.C. 102(a)(1) as being anticipated by Widgery (US 5,263,663) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly discovered reference Hardigg (US 3,690,540).
Any rejections and/or objections, made in the previous Office Action, and not repeated in the present Office Action, are hereby withdrawn.
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.
Claim(s) 8-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hardigg (US 3,690,540).
Regarding independent claim 8, Hardigg teaches a one-piece, seamless, generally toroidal or donut-shaped molded article (12) with a hollow interior (col. 4, lines 38-45, see Fig. 1-2 below, also, see col. 5, lines 1-5, the seamless toroidal-like shape shock isolator element 12 of Hardigg is a molded article, as Hardigg teaches its element is formed by a molding process, meeting the instantly claimed limitations) comprising: a one-piece seamless, generally toroidal body (col. 4, lines 38-45, see Fig. 1-2), wherein the seamless, generally toroidal body includes a single aperture (the aperture 22, Fig. 2) in a peripheral surface of the body (see Fig. 2, col. 4, lines 38-45, Hardigg teaches as in one of its embodiments, a shock isolator element 12 that is a one-piece, seamless element that is of generally toroidal shape and has a hollow interior, having a hole/aperture 22 in the peripheral surface), meeting the instantly claimed limitations.
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Claim 8 contains process limitations with regards to the process of making the one-piece, seamless, generally toroidal or donut-shaped molded article with a hollow interior and the single aperture having a shape identical to a cross-sectional shape of a gap-filling member that extends from a mold cavity to fill a gap in an annular hollow-interior forming member of the mold when an injection molding apparatus is closed, and to vacate the gap when the injection molding apparatus is opened, the gap-filling member forming a means for enabling separation and removal of the generally toroidal body from the hollow-interior forming structure upon completion of injection and opening of the injection molding apparatus. It is the examiner’s position that the recited process does not result in a patentably distinctive structural difference in the resultant one-piece, seamless, generally toroidal or donut-shaped molded article with a hollow interior. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Regarding claims 9-14, those claims contain further process limitations with regards to the process of making the one-piece, seamless, generally toroidal or donut-shaped molded article with a hollow interior. It is the examiner’s position that the recited process does not result in a patentably distinctive structural difference in the resultant one-piece, seamless, generally toroidal or donut-shaped molded article with a hollow interior. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. See MPEP 2113. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached on Monday - Friday 7AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached on 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAN LAN/Primary Examiner, Art Unit 1782
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