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(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 17, and 19, these claims were amended to include “a thermal conductive medium” – but the specification does not seem to provide explicit, implicit, or inherent support for this claim limitation.
Claims 2-16, 18, and 20 are also rejected due to their dependence upon claims 1, 17, or 19.
Claim Rejections - 35 USC § 112(b)
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 1-20 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.
Regarding claims 1, 17, and 19, the Claim limitation “thermal conductive medium for heating” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
The term “thermal conductive medium” is a generic placeholder, linked with a function “for heating”; and is not modified by any structure in the claims, and thus still is interpreted under 35 U.S.C. 112(f).
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Dependent claims are also rejected due to the same rationale as they include each and every limitation of the independent claim.
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) 1-6, 9-13, 15, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US 2017/0326859), hereinafter Wang.
Regarding claims 1, 13, and 19-20, Wang discloses a press plate for compressing at least one pressboard precursor, comprising:
(a) a rigid press layer (press plate 300), the rigid press layer comprising passages (302) for fluid transport (Figs. 3 and 7; par. 0039);
(b) at least one fluid/liquid permeable barrier layer (“permeable layer 804”; Fig. 9, par. 0060), wherein the at least one barrier layer prevents fibers to pass through the barrier layer (par. 0059 describes a porous material, as also claimed in dependent claims below, and as such, this structure is considered to be capable of performing the given function, without modification), and wherein the at least one barrier layer has a first surface arranged to face a pressboard precursor (panel 404) to be compressed (Figs. 4-5 and 9); and
(c) a thermal conductive medium (outer surface 318 of the press plate) for heating the at least one pressboard precursor (par. 0052 describes a “hot press” and heating by the outer surface 318 of the press plate 300); Fig. 11 describes applying heat to the panel via the press plate.
Regarding claim 2, Wang discloses the subject matter of claim 1, and further discloses that there are two barrier layers (see Figs 5, 7-8).
Regarding claims 3-6, Wang discloses the subject matter of claim 1, and further discloses that the barrier layer (“permeable layer 804” – par. 0059) is a barrier sheet or fabric (these would be identical in scope under BRI) made of porous metal or polymeric fibers (par. 0059) which would have pores going through the barrier layer.
Regarding claim 9, Wang discloses the subject matter of claim 1, and further discloses that the rigid press layer comprises a porous material (par. 0041).
Regarding claims 10-12, Wang discloses the subject matter of claim 9, and these claims are drafted such that a porous material (par. 0041) would meet all three claims as the open cells would provide a lattice between the openings.
Regarding claims 15 and 17, Wang discloses the subject matter of claim 1, and further discloses a method for compressing at least one pressboard precursor comprising: (a) arranging at least one pressboard precursor (panel 404) between two press plates (Fig. 5 – the press plate limitations are described above in claim 1; this arrangement also meets claim 15);
(b) forcing the press plates closer to each other, thereby compressing the at least one pressboard precursor (par. 0051-0052); and
(c) heating the pressboard precursor using the thermal conductive medium (outer surface 318) to heat the at least one pressboard precursor by conduction (par. 0052 describes heating by the outer surface 318 of the press plate 300 – heat transfer by touching two surfaces together is known in the art to be heating by thermal conduction). The compression of the material would be read as having the result of removing liquid from the pressboard precursor as it would be forced out via the squeezing/compression of the material.
Regarding claim 18, Wang discloses the subject matter of claim 17, and further discloses sealing outer edge portions of the plates and applying suction via vacuum (Figs. 10-12 show a step of applying a vacuum to remove gas and vapor from the panel which requires the use of a pump).
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.
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.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2017/0326859).
Regarding claims 7-8, Wang discloses the subject matter of claim 1, but does not explicitly disclose the barrier layer or press layers thermal diffusivities.
However, it has been held that the selection of a material based on its suitability for an intended purpose or use supports a case of prima facie obviousness. In this case, one of ordinary skill in the art would have found it obvious to have optimized the thermal diffusivities of the layers to be as is claimed as a manner of providing heat to the material being pressed while not allowing heat to be transferred to where it is not desired by placing insulators where needed.
Claim(s) 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2017/0326859) in view of Vilo (US 2006/0233905).
Regarding claims 14 and 16, Wang discloses the subject matter of claim 1/15 as described above, but does not appear to explicitly disclose that the press plate has sealing means as to seal the press plate, even if broadly describing the application of a vacuum.
However, Vilo describes a press for pressing of panel material (6, Fig. 1) with a sealing means (lip seal 1, 1’) (Vilo, par. 0012-0013 and 0015) at the edges, and outlets (qv2) as shown in Fig. 1.
One of ordinary skill in the art would have recognized that the seals from Vilo would have been useful in the system of Wang above, as to have sealed the environment from the vacuum being applied in Wang above, as to have fully removed gas or vapor from the panel in accordance with the above. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have specified that the system of Wang above includes seals and an outlet from the created enclosure as to have created an environment free from gas or vapor, as is required in the claims.
Response to Arguments
Applicant's arguments filed 4/2/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed below.
Examiner points out that apparatus/system claims are interpreted under MPEP 2114 and MPEP 2115. These sections provide that certain elements are not limiting, namely intended use of the claimed structure. Accordingly, the amendment to claim 1 does not appreciably change its scope since “removing liquid from” the at least one pressboard precursor is not actually required to be performed in claim 1.
Even in the context of method claim 17, this concept is expressed as the intended result of the claimed step of forcing the press plates closer to each other and is also dependent upon the operating temperature of the press since the Wang reference repeatedly refers to “vapor” which is known in the art to be a liquid in its gaseous form/above its boiling point at a given vapor pressure. Accordingly, the rejections are maintained as updated above.
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 ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
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