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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/9/2025 and 10/22/2025 have been entered.
Response to Amendments/arguments
Claims 1-14 are pending. Claims 8-14 are amended. Claims 1-7 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
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 Izumo et al. (U.S. Patent Application Publication No. 2009/0315218 A1) have been fully considered, but are moot in view of new grounds of rejection based on newly discovered reference Widgery (US 5,263,663).
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and/or objections, made in the previous Office Action, and not repeated in the present Office Action, are hereby withdrawn.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 Widgery (US 5,263,663).
Regarding independent claim 8, Widgery teaches a one-piece, seamless, generally toroidal or donut-shaped molded article with a hollow interior (col. 3, lines 65-67, see Fig. 12 and Fig. 13 below, Widgery teaches as in one of its embodiments, a band 10 that is a one-piece, seamless band that is of generally toroidal shape and has a hollow interior, see Fig. 13, also, the band of Widgery is a molded band/article as Widgery teaches its band is formed by a molding process), meeting the instantly claimed limitations.
PNG
media_image1.png
346
560
media_image1.png
Greyscale
PNG
media_image2.png
272
608
media_image2.png
Greyscale
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. 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
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YAN LAN/Primary Examiner, Art Unit 1782
Prosecution Insights