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 .
Specification
The disclosure is objected to because of the following informalities: In paragraph 0024, line 1, “along” is not understood. In paragraph 0053, last line, “about of below about” lacks proper grammatical syntax. In paragraph 0093, second line, “thickness” should apparently be --thicknesses--. Appropriate correction is required.
Claim Objections
Claims 48 and 55 are objected to because of the following informalities: In claim 48, line 2, --in-- should be inserted after “is”. In claim 55, last line, “about of below about” lacks proper grammatical syntax. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 47-50 and 52-55 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which is 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, at the time the application was filed, had possession of the claimed invention. In claim 47, line 12, “a range from about 195 °F to about 230 °F” is not supported in the original disclosure of parent application 16/897,425, nor is there any indication that all of the materials listed in claim 49 innately possess formable values within this temperature range. Regarding claim 52, the “range from about 205 °F to about 220 °F” is likewise unsupported in said original disclosure. Regarding claim 55 at line 12, “about 200 °F” is presented as a lower limit of a fairly broad range (paragraph 00116 of the parent specification), and “225 °F” is also described as a lower limit (paragraph 0042; original claims 8 and 40), so one of ordinary skill in the art would not have inferred the claimed range with 225 °F as an upper limit, particularly in the absence of any supposed criticality for such a confined range, and an allegedly patentable portion may not be “carved out” from a more broadly disclosed range (MPEP § 2163.05 III).
Applicant has not pointed out the support in the original disclosure for each of the newly presented limitations to the claims (MPEP §§ 714.02 and 2163.06), and because of the procedure for interpreting such claims as set forth in MPEP § 2163.06, prior art may be applicable to any subsequently amended claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 47-50 and 53-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 12, and 17 of U.S. Patent No. 11,890,209 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the instant limitations are clearly set forth in said patent claims.
Response to Arguments
Applicant’s remarks have been considered and are adequately addressed in the grounds of rejection presented above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David H. Willse, whose telephone number is 571-272-4762. The examiner can normally be reached on Monday through Thursday. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Thomas Barrett can be reached at telephone number 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID H WILLSE/ Primary Examiner, Art Unit 3774