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
1. This office action is in response to the filing of the application on 1/18/2024. Since the initial filing, no claims have been amended, added, or canceled. Therefore, claims 1-20 are pending in the application.
Specification Objections
2. The specification is objected to for the following informalities. Appropriate corrections are required. No new matter should be added.
“Thermal plastic vulcanite” - p. 8, l. 29; p. 9, ll. 14-16
The specification (and claim 4) recites “thermal plastic vulcanite.” The term “vulcanite” denotes a hard, fully vulcanized rubber (ebonite) and is not synonymous with a “thermoplastic vulcanizate,” which is the dynamically vulcanized elastomer/thermoplastic blend the disclosure appears to be intended. This reading is confirmed by the specification’s own example, which identifies the “thermal plastic vulcanite” as Santoprene 8211 (p. 9, ll. 14-15), a commercial thermoplastic vulcanizate. The specification should be amended to recite “thermoplastic vulcanizate.” A corresponding claim objection is set forth below.
Inconsistent reference numerals in the detailed description
Several reference numerals in the detailed description are internally inconsistent. By way of example and not limitation: page 15, line 27 refers to “the plurality of first color schemes 516A, 518B, 518C,” where “516A” should read “518A”; pages 16 and 17 each refer to “the at least one first second scheme 622” and “722,” which should read “second color scheme”; page 20, line 26 refers to the strap as “1016” where the embodiment of FIG. 5B is strap “1116”; and page 21, lines 11-12 refer to “the third color scheme 1224” and to strap “1216”/ “1016” inconsistently. Correction of these and like informalities is required.
Claim Interpretation- 35 USC § 112
3. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
At present, no claims are interpreted under 35 U.S.C. 112(f).
Claim Objections
4. Claims 4, 13, and 18 are objected to because of the following informalities:
Regarding claim 4, the phrase “thermal plastic vulcanite” (ln. 2) should read
“Thermoplastic vulcanizate”, consistent with the specification objection above.
Regarding claim 13, the phrase “the at least one first color scheme and the at least one second color scheme has a same width” should read “the at least one first color scheme and the at least one second color scheme have the same width”. The compound subject requires the verb have (not “has”), and “a same width” should read
“the same width”.
Regarding claim 18, the phrase “the at least one first color scheme, the at least one second color scheme, and the at least one third color scheme has the same width” should read “have the same width” for the same reasons given for claim 13.
Appropriate corrections are required.
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 regards as the invention.
Regarding the term “color scheme” (claims 1-20), the term is used inconsistently and without definition. The specification uses “first color scheme” to denote a single, solid-colored zone of the strap, yet also uses “color scheme” to denote a group of zones (e.g., “a pair of first color schemes” in claim 6). A person of ordinary skill cannot determine whether a single “color scheme” is one colored zone, a group of zones, or a multi-color pattern, and therefore cannot ascertain the metes and bounds of “at least one first color scheme,” “a pair of …color schemes,” or “a plurality of …color schemes.” For purposes of examination and giving the term its broadest reasonable interpretation consistent with the specification’s use of “first color scheme” to denote a single solidcolored zone, a “color scheme” is interpreted to require at least one color, such that a single solid-colored region of the strap satisfies a “color scheme” and no particular pattern is required.
Regarding the term “visibly different” (claims 1 and 15), the limitation is a term of degree for which neither the claims nor the specification supplies any objective standard no colorimetric threshold, viewing distance, illuminant, viewing geometry, or observer qualification. Whether two colors are “visibly different” is therefore a subjective determination that varies with the observer and viewing conditions, rendering the claims indefinite. For purposes of examination, “visibly different” is interpreted to be satisfied by any two colors that an ordinary observer would perceive as different under ordinary viewing conditions (e.g., blue versus white), without regard to any colorimetric threshold or viewing condition.
Regarding the limitation “about 99.9%” (claims 1-4), the specification defines
“about” as within +/- 5% for quantifiable properties. Applied to the upper endpoint, “about 99.9%” encompasses values up to approximately 104.9% by weight; because a single component cannot constitute more than 100% by weight of a composition, the upper bound of the recited range is physically unrealizable and the scope is indefinite. For purposes of examination, the upper endpoint of the recited range is interpreted as not exceeding 100 wt%.
Regarding claims 6 and 9 (and, likewise, claims 7 and 10, and claims 8 and 11), the specification states that the terms “first” and “second” can be interchanged throughout the embodiments. Given that express interchangeability, claim 6 (a pair of first color schemes with the second disposed between) and claim 9 (a pair of second color schemes with the first disposed between) recite the identical physical three-zone arrangement with only the labels transposed, and a person skilled in the art cannot ascertain any difference in scope between them. For purposes of examination, claims 6 and 9 (and, likewise, 7 and 10, and 8 and 11) are treated as commensurate in scope, each reading on the same three-zone widthwise arrangement.
Any remaining claims are rejected as being dependent upon a rejected base claim.
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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Regarding claim 1, the claim recites an elastomeric polyolefin content of “about 0.5% to about 99.9%” by weight, a limitation carried by each of claims 2-20 through their dependence on claim 1. The only formulations disclosed are the five working examples (Table 1), each of which recites the elastomeric polyolefin at “up to 99.9%.” The specification discloses no embodiment, data, or guidance directed to the lower portion of the claimed range, and in particular nothing establishing possession of a strap exhibiting the recited elastic properties at or near 0.5% elastomeric polyolefin, where the elastomer would be a minor constituent. Moreover, the disclosed formulations are internally inconsistent: the constituents of each example sum to more than 100% by weight (e.g., the first material: 99.9% polyolefin + 5% thermoplastic vulcanizate + 2% colorant = 106.9%; the third and fourth materials each = 121.9%). Because the only disclosed compositions cannot exist as written and are confined to the extreme upper end of the range, the specification does not reasonably convey to those skilled in the art that the inventor had possession of the full scope of the claimed range as of the filing date.
Any remaining claims are rejected as being dependent upon a rejected base claim.
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 negate by the manner in which the invention was made.
Claims 1-2 and 6-18 are rejected under 35 U.S.C. 103 as being unpatentable over
Nguyen et al. (US 10,653,901 B2; hereinafter “Nguyen”) in view of Ni et al. (US
10,808,112 B2; hereinafter “Ni”).
Regarding claim 1, Nguyen discloses a respirator (col. 1, ll. 49-52; FIGS. 49-50) comprising:
a mask body (col. 1, ll. 49-50; FIG. 49); and
a harness comprising one or more elastic straps, each strap joined to the mask body on opposing sides thereof (col. 1, ll. 49-52: “a respirator that includes a mask body and a harness that includes one or more elastic straps that are joined to the mask body on opposing sides of thereof”).
Nguyen further discloses that each elastic strap comprises an openwork netting having an array of polymeric strands periodically joined together at bond regions (col. 1, ll. 52-55), and that the strap includes a first array and a second array, “with each array being provided with a different color,” such that the strap exhibits at least one first color scheme that is visibly different from at least one second color scheme (col. 2, ll. 4-6). Nguyen teaches that the different colors on each side of the strap enable the wearer to readily detect if the strap is twisted (col. 2, ll. 6-7) and allow various aesthetic designs to be provided (col. 2, ll. 8-9).
Nguyen does not expressly disclose that each strap comprises at least about
0.5% to about 99.9% of an elastomeric polyolefin by weight.
Ni, however, teaches propylene-based elastomers (i.e., elastomeric polyolefins) prepared with a metallocene catalyst system (col. 10, ll. 3-5), commercially available as
ExxonMobil’s VistaMaxx™ grades (col. 10, ll. 7-9).
Ni further discloses the elastomeric polyolefin at a content falling within the claimed range: Ni’s composition comprises about 80 wt% to about 95 wt% of a polymer blend, which blend comprises about 3 wt% to about 25 wt% of a first propylene-based elastomer and about 75 wt% to about 97 wt% of a second propylene-based elastomer (col. 1, ll. 53-58; see also col. 10, ll. 11-16). The elastomeric polyolefin content of Ni’s composition therefore lies within the claimed range of about 0.5% to about 99.9% by weight, and forming the strand of Nguyen from Ni’s elastomeric polyolefin yields a strap satisfying the recited range.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the elastic straps of Nguyen from an elastomeric polyolefin as taught by Ni, in order to obtain a known, readily extrudable, highly elastic strap material, with a reasonable expectation of success.
Regarding claim 2, the modified respirator of Nguyen has the elastomeric polyolefin as a metallocene elastomer, as the propylene-based elastomer of Ni is prepared using a metallocene catalyst system (Ni, col. 10, ll. 3-5).
Regarding claim 6, Nguyen expressly teaches an array of “at least alternating first and second (optionally third, fourth, or more) polymeric strands” extending along the strap (col. 5, ll. 59-61), the strands of the first and second arrays being provided with different colors (col. 2, ll. 4-6). In such an alternating array, a color scheme is necessarily flanked on both sides by the other color scheme; providing the at least one first color scheme as a pair of first color schemes with the at least one second color scheme disposed between them is thus a first-second-first subset of the arrangement Nguyen discloses and would have been obvious over Nguyen with a reasonable expectation of success.
Regarding claim 7, in Nguyen each color scheme is defined by one or more adjacent polymeric strands of a given color (col. 2, ll. 4-6; col. 5, ll. 59-61), so that the transverse width of each color scheme is determined by the number of adjacent same colored strands assigned to it. Providing the pair of first color schemes with different widths is therefore a direct and predictable consequence of the strand-color assignment taught by Nguyen (assigning different numbers of adjacent strands to each) and would have been obvious over Nguyen with a reasonable expectation of success.
Regarding claim 8, and for the reasons given for claim 7, providing each of the pair of first color schemes with the same width is achieved by assigning the same number of adjacent same-colored strands to each (col. 2, ll. 4-6; col. 5, ll. 59-61), and is likewise a direct and predictable consequence of Nguyen’s strand-color assignment.
Claim 8 is therefore obvious over Nguyen.
Regarding claim 9, and as set forth for claim 6, providing the at least one second color scheme as a pair of second color schemes with the at least one first color scheme disposed between them is a second-first-second subset of Nguyen’s alternating differently colored array (col. 2, ll. 4-6; col. 5, ll. 59-61), and would have been obvious over Nguyen.
Regarding claim 10, and for the reasons given for claim 7, providing the pair of second color schemes with different widths is a direct and predictable consequence of Nguyen’s strand-color assignment (col. 2, ll. 4-6; col. 5, ll. 59-61), and is obvious over Nguyen.
Regarding claim 11, and for the reasons given for claim 8, providing each of the pair of second color schemes with the same width is a direct and predictable consequence of Nguyen’s strand-color assignment (col. 2, ll. 4-6; col. 5, ll. 59-61), and is obvious over Nguyen.
Regarding claim 12, Nguyen expressly discloses an array of “at least alternating first and second (optionally third, fourth, or more) polymeric strands” (col. 5, ll. 59-61), the arrays being provided with different colors (col. 2, ll. 4-6), such that the strap includes a plurality of first color schemes and a plurality of second color schemes alternating with one another. Claim 12 is therefore substantially disclosed by, and obvious over, Nguyen.
Regarding claim 13, and for the reasons given for claim 8, providing the at least one first color scheme and the at least one second color scheme with the same width (recited as “a same width”; see the claim objection above) is a direct and predictable consequence of Nguyen’s strand-color assignment (col. 2, ll. 4-6; col. 5, ll. 59-61), and is obvious over Nguyen.
Regarding claim 14, and for the reasons given for claim 7, providing the at least one first color scheme and the at least one second color scheme with different widths is a direct and predictable consequence of Nguyen’s strand-color assignment (col. 2, ll. 46; col. 5, ll. 59-61), and is obvious over Nguyen.
Regarding claim 15, Nguyen expressly teaches arrays of “at least alternating first and second (optionally third, fourth, or more) polymeric strands” (col. 5, ll. 59-61), each array being provided with a different color (col. 2, ll. 4-6), and further teaches that dual layers of the netting allow multiple colors to be displayed on the strap (col. 5, ll. 49-51). Providing a third color scheme visibly different from each of the first and second color schemes is therefore taught by Nguyen’s optional third differently colored strand and is obvious over Nguyen.
Regarding claim 16, disposing the third color scheme between the first and second color schemes is a first-third-second subset of Nguyen’s alternating three-color array (col. 2, ll. 4-6; col. 5, ll. 59-61), and would have been obvious over Nguyen.
Regarding claim 17, and for the reasons given for claim 7, providing the first, second, and third color schemes with different widths is a direct and predictable consequence of Nguyen’s strand-color assignment (col. 2, ll. 4-6; col. 5, ll. 59-61), and is obvious over Nguyen.
Regarding claim 18, and for the reasons given for claim 8, providing the first, second, and third color schemes with the same width (recited as “a same width”; see the claim objection above) is a direct and predictable consequence of Nguyen’s strand color assignment (col. 2, ll. 4-6; col. 5, ll. 59-61), and is obvious over Nguyen.
11. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen in view of Ni, as applied to claim 1 above, and further in view of Das (US 4,271,049; hereinafter “Das”).
Regarding claim 3, the modified respirator of Nguyen does not expressly disclose that each strap further comprises about 0.1% to about 30% of styrene butadiene rubber by weight.
However, Das teaches an elastoplastic composition comprising a blend of crystalline polypropylene (a polyolefin), in an amount sufficient to impart thermoplasticity, and a cured diene rubber that may be styrene-butadiene rubber comprising a copolymer of butadiene and up to about 25 weight percent styrene, the rubber being in an amount sufficient to impart rubber-like elasticity to the composition (col. 1, ll. 52-61). Styrene-butadiene rubber is thereby shown to be a known, polyolefin compatible rubber for elastic compositions.
Das further discloses that the compositions comprise blends of about 25-75 parts by weight thermoplastic crystalline polypropylene and correspondingly about 75-25
parts by weight of rubber per 100 total parts by weight of polypropylene and rubber (col. 2, ll. 12-16). Das’s disclosed rubber content of about 25 to 75 weight percent therefore overlaps the claimed range of about 0.1% to about 30% by weight at about 25-30 weight percent. Where the claimed range overlaps a range disclosed in the prior art, a prima facie case of obviousness exists. See MPEP § 2144.05(I).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the elastic straps of the modified respirator of Nguyen to include styrene butadiene rubber, as taught by Das, in order to impart rubber-like elasticity and to tune the modulus and elastic recovery of the strap, with a reasonable expectation of success.
12. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen in view of Ni, as applied to claim 1 above, and further in view of Coran et al. (US
4,130,535; hereinafter “Coran”).
Regarding claim 4, the modified respirator of Nguyen does not expressly disclose that each strap further comprises about 0.1% to about 30% of a thermoplastic vulcanizate by weight (recited as “thermal plastic vulcanite”; see the claim objection above).
However, Coran teaches thermoplastic compositions comprising blends of a polyolefin resin and completely cured monoolefin copolymer rubber (col. 1, ll. 7-11), i.e., thermoplastic vulcanizates. Coran discloses that such fully cured vulcanizates comprise blends of 25-75 percent by weight of thermoplastic polyolefin resin and about 75-25 percent by weight of monoolefin copolymer rubber, and that where the proportion of rubber is sufficiently high the thermoplastic vulcanizates are elastomers (col. 1, ll. 64-68; col. 2, ll. 1-8). Thermoplastic vulcanizates of this type are commercially exemplified by
Santoprene™, the very material identified in applicant’s specification as the recited
“Thermal plastic vulcanite.”
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the elastic straps of the modified respirator of Nguyen to include a thermoplastic vulcanizate, as taught by Coran, in order to impart the elastomeric character, set resistance, and thermoplastic processability that thermoplastic vulcanizates are known to provide (Coran, col. 1, ll. 6468; col. 2, ll. 1-9), with a reasonable expectation of success. The amount of about 0.1% to about 30% by weight would have been obvious as a matter of routine optimization of the amount of a known blend component to obtain the desired balance of elasticity and processability, absent from a showing of criticality. See MPEP § 2144.05(II).
13. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen in view of Ni, as applied to claim 1 above, and further in view of Xue et al. (US 11,033,763
B2; hereinafter “Xue”).
Regarding claim 5, the claim recites that each elastic strap “is a one-piece extruded component.” This limitation is a product-by-process limitation. 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. See MPEP § 2113. The process of “extrusion” is therefore not required by the claim; what is required is the end result that each elastic strap is a one-piece component.
Nguyen discloses that the netting of the strap is formed by extrusion, disclosing an extrusion die and the materials to be extruded (col. 3, ll. 32-36). To the extent Nguyen does not expressly recite that each strap is a one-piece component, Xue which applicant’s specification incorporates by reference teaches a respirator harness having one or more straps that include a polymeric netting (col. 3, ll. 7-10; col. 8, ll. 34-35), where the polymeric netting is prepared by an extrusion die (col. 14, ll. 23-26), thereby forming a unitary, one-piece extruded netting.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the strap of the modified respirator of Nguyen as a one-piece component as taught by Xue, in order to obtain the known manufacturing economy and dimensional consistency of a unitary extruded netting, with a reasonable expectation of success.
14. Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen in view of Ni, as applied to claim 1 above, and further in view of Joshi et al. (US 9,976,021 B2; hereinafter “Joshi”).
Regarding claim 19, Joshi teaches that a propylene-based elastomer (i.e., an elastomeric polyolefin of the type applied in claim 1) may have an elongation at break of less than about 2000%, less than about 1000%, or less than about 800%, as measured per ASTM D412 (col. 10, ll. 57-59). A tensile elongation at break of at least 500% therefore falls within the elongation range taught by Joshi for such elastomeric polyolefins and is consistent with applicant’s own Table 1 (reporting 717.87%-765.61%).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select, for the elastic straps of the modified respirator of Nguyen, an elastomeric polyolefin having a tensile elongation at break of at least 500% as taught by Joshi, in order to obtain a strap capable of the repeated stretching required of a respirator harness, with a reasonable expectation of success.
Regarding claim 20, and as set forth for claim 19, the elongation at break taught by Joshi for the propylene-based elastomer extends well above 700% (col. 10, ll. 5759), and applicant’s own Table 1 reports 717.87%-765.61%. Selecting an elastomeric polyolefin having a tensile elongation at break of at least 700% would therefore likewise have been obvious, with a reasonable expectation of success.
Conclusion
The references relied upon in this action are: Nguyen et al. (US 10,653,901 B2); Ni et al. (US 10,808,112 B2); Joshi et al. (US 9,976,021 B2); Xue et al. (US 11,033,763
B2); Coran et al. (US 4,130,535); and Das (US 4,271,049).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAVAUN L HARRIOTT whose email is jharriott@uspto.gov. The examiner can normally be reached on Mon - Fri 9:00-6:00.
If attempts to reach the examiner are unsuccessful, the examiner’s supervisor, TIMOTHY A STANIS, can be reached at (571)272-5139. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAVAUN L HARRIOTT/
Examiner, Art Unit 3785
/TIMOTHY A STANIS/Supervisory Patent Examiner, Art Unit 3785
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