Detailed Office Action
The communication dated 7/7/2025 has been entered and fully considered. Claims 1-23 are cancelled. Claims 43-45 are withdrawn from examination. Claims 24-46 remain pending.
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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 24-42 and 46) in the reply filed on 7/7/2025 is acknowledged. Claims 43-45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention II, there being no allowable generic or linking claim.
Claim Objections
Claims 36 and 37 are objected to because of the following informalities:
Claim 36, line 3: replace “enchasing” with “encasing”.
Claim 37, line 1, replace “the first electrodes are positioned” with “the first electrode is positioned”. Only one first electrode is recited in the independent claim 24. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 28-32 and 36 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.
Claims 28-32 and 36 recite the limitation "the dielectric". There is insufficient antecedent basis for this limitation in the claims. Claim 32 depends on claim 31 and is rejected as well. To provide proper antecedency for this limitation, the Examiner replaces the dependency of claims 28-31 and 35 from claim 24 to claim 26.
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 46 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP78 (JP-57101078-A – of record, English translation provided by the Examiner), hereinafter JP78. Note that the italicized text below are the instant claims.
Regarding claim 46, JP discloses A method of manufacturing an artificial turf {[claim 1], [FIG. 1]}, comprising:
moving a carrier through an air gap formed between a first electrode and a second electrode of a dielectric barrier discharge device {[FIG. 1] electrodes 1 and 2, A is the air gap, 10 is the carrier, [claim 3]};
applying a dielectric barrier discharge to one side of the carrier for plasma- activating the side; and using the plasma-activated carrier for manufacturing the artificial turf {[claim 3] note the non-conductive resin layer is the dielectric, [FIG. 1] note side 12 is exposed to the discharge and since JP78 method is similar to the instant invention, therefore it is a dielectric barrier discharge and the side is plasma activated, note 20 is the artificial turf product}.
Claim Rejections - 35 USC § 103
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 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 24-37, 39-40, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over JP78 (JP-57101078-A – of record, English translation provided by the Examiner), hereinafter JP78, in view of SICK (US-2019/0017206), hereinafter SICK. Note that the italicized text below are the instant claims.
Regarding claim 24, JP78 discloses A method of manufacturing an artificial turf {[claim 1], [FIG. 1]}, comprising:
moving a carrier mesh through an air gap formed between a first electrode and a second electrode of a dielectric barrier discharge device {[FIG. 1] electrodes 1 and 2, A is the air gap, 10 is the carrier mesh, [claim 3]},
wherein the carrier mesh includes a backside, and wherein the carrier mesh includes fibers integrated {[FIG. 1] 12 is the backside and 11 are the fibers}.
Regarding the next limitation of claim 24 “such that a portion of the fibers are exposed on the backside”, JP78, illustratively shows this limitation {[FIG. 1] note 11 is exposed from 12}.
In the alternative, and if it can be argued that JP78 does not discuss this limitation in the text of its invention and JP78 only generally talks about tufting the fibers {[P6, 4th ¶]}, then JP78 is silent on the fibers being exposed on the backside.
In the same field of endeavor that is related to manufacturing artificial turf, SICK discloses such that a portion of the fibers are exposed on the backside {[abstract], [FIG. 2] note fibers 104 are exposed from back of 102}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of SICK in the method of JP78 and have tufted the fiber with exposure from backside.
As discussed, JP78 only generally talks about tufting and is silent on the details of this system, One would have been motivated to have looked to prior art to determine an appropriate method for tufting. Such art is SICK. Furthermore, and as shown by SICK such method of tufting that is used for making artificial turf, creates a carrier mesh with fibers exposed.
Regarding the next limitation of claim 24, modified JP78 discloses applying a dielectric barrier discharge to the backside of the carrier mesh for plasma- activating the backside {[claim 3] note the non-conductive resin layer is the dielectric, [FIG. 1] note back side 12 is exposed to the discharge and since JP78 method is similar to the instant invention, therefore it is a dielectric barrier discharge and the backside is plasma activated};
and applying a backing layer to the plasma-activated backside of the carrier mesh for providing the artificial turf {[FIG. 1] 16/17/18 applies backing layer 19}.
Regarding claim 25, JP78 discloses wherein the first and second electrodes are elongated in a first direction, and wherein the carrier mesh is moved in a second direction that is perpendicular to the first direction {[FIG. 1] note electrodes 1/2 are elongated going into the page and carrier mesh 10 moves from left to right or in a perpendicular direction}.
Regarding claim 26, JP78 discloses wherein the carrier mesh includes a frontside, wherein the first electrode is adjacent to the backside, wherein the second electrode is adjacent to the frontside, and wherein the second electrode is at least partially encased in a dielectric, the dielectric extending at least in a direction towards the first electrode {[FIG. 1] first electrode 1 is adjacent to 12 or backside and second electrode 2 is adjacent to the frontside 11, note 6 is the dielectric of the second electrode and is extended toward the first electrode }.
Regarding claim 27, JP78 discloses wherein the second electrode is a metal cylinder which is at least partially encased in a dielectric {[FIG. 1] note 2 is a cylinder and encased in dielectric 6, [claim 3] note metal core or bar or rod}.
Regarding claim 28, JP78 discloses wherein the dielectric comprises a plastic material {[claim 3] note use of resin}.
JP78, however, is explicitly silent on the resin being a plastic. However, JP78 discusses using plastic throught its invention like styrene-butadiene synthetic rubber {[claim 6]}, and JP78 disclose that the resin of the dielectric can be rubber {[P5, 1st ¶] note rubber}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have chosen the thermoplastic rubber that JP78 discloses as the rubber for the dielectric of JP78, since as taught by JP78 these are known plastics and electrically non-conductive {[P5, 1st ¶]}.
Regarding claim 29, JP78 discloses wherein the dielectric has a thickness of at least 0.2 cm {[P6, 5th ¶] note (20-20.40/2=0.2 cm that is the thickness of the resin layer or dielectric}.
Regarding claims 30, JP78 discloses wherein the dielectric is shaped as a hollow cylinder with circular or ellipsoid cross section, wherein the second electrode is elongated along a major axis of the dielectric, and wherein the dielectric is in contact with the frontside of the carrier mesh {[FIG. 1] note 11 is in contact with 2; and 6 is a hollow cylinder since 4 is inside the cylinder}.
Regarding claim 31, JP78 discloses wherein the second electrode is at least partially encased in the dielectric and is configured to be rotatable about its longitudinal axis {[FIG. 1] note the arrows on second electrode 2 that is enclosed by 6}.
Regarding claim 32 , JP78 discloses wherein rotating the second electrode with the dielectric moves the carrier mesh through the air gap formed between the first electrode and the second electrode {[FIG. 1] note contact of 2 with 11/12 and its rotation moves of helps further moves 11/12 due to the tension between rollers}.
Regarding claim 33, JP78 discloses wherein the moving of the carrier mesh through the air gap comprises moving the carrier mesh through the air gap at at least one of a manually- adjustable and automatically-adjustable speed {[P5, 1st ¶] note the range of speed of 2 to 10 m/min, thus requiring adjustment and there are only two options for such adjusting: manual or controller}.
Regarding claim 34, JP78 discloses wherein the applying the dielectric barrier discharge comprises applying the dielectric barrier discharge at an energy density of at least 0.1 J/cm2 {[claim 5] note 0.1 J/cm2 is 16.7 w/m2/min or ranges almost overlap that is prima facie obvious}.
Regarding claim 35, JP78 discloses further comprising manually or automatically adjusting a gap between the first electrode and second electrode {[claim 4] note the range of 30 mm or less for gap or distance of the electrodes, thus requiring adjustment and there are only two options for such adjusting: manual or controller}.
Regarding claim 36, JP78 discloses wherein the gap is adjusted such that a distance between the first electrode and the outer surface of the dielectric at least partially enchasing the second electrode is greater than 0 mm {[claim 4]}.
Regarding claim 37, JP78 discloses wherein the first electrodes are positioned such that a distance between the first electrode and a surface of the backside of the carrier mesh and the fiber portions protruding therefrom is below 10 mm {[claim 4]}.
The Examiner notes that JP78 teaches a range of less than 30 mm that encompasses the claimed range of less than 10 mm. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range {see MPEP 2144.05 (I)}.
Regarding claims 39-40, JP78 discloses wherein the first electrode is a single wire or a set of two or more wires (claim 39), wherein the first electrode is a conductive profile or a set of two or more of said profiles (claim 40) {[claim 3] note metal core or bar or rod, and that metal is conductive}.
Regarding claim 42 limitation of “wherein the method is part of a continuously executed, inline roll-to-roll production process comprising: unrolling a carrier mesh roll; tufting the fibers into the unrolled carrier mesh; performing the method according to claim 24 for providing the artificial turf; and forming an artificial turf roll from the provided artificial turf” it was shown under claim 24, that JP78 discloses this method. JP78 discloses that the process is in-line and done continuously {[FIG. 1], [P4, last ¶]}. JP78 also discloses rolling the formed artificial turf {[FIG. 1] 24}.
Although not shown in FIG. 1, The Examiner submits that the carrier mesh is also provided in the form of a roll. In the alternative, and at the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to also have provided the carrier mesh in the form of a roll, since JP79 teaches this practice as shown above. One would have been motivated to do so since this form of providing material results in saving space.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over JP78 and SICK as applied to claim 24 above, and further in view of DE VRIES (US-2011/0049491), hereinafter DE VRIES.
Regarding claim 38, combination of JP78 and DE VRIES discloses all the limitation of claim 24 as discussed above. JP78 further discloses wherein the applying of the dielectric barrier discharge further comprises continuously apply the dielectric barrier discharge for plasma-activating the backside {[FIG. 1], [P4, last ¶]}.
The combination above, however, is silent on controlling the device during this application or the limitation “controlling the dielectric barrier discharge device”.
In the same filed of endeavor that is related to manufacturing multi-layer stack using two electrodes, DE VRIES disclose controlling the dielectric barrier discharge device {[0003], [0036]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of DE VRIES in the combination system of JP78 and SICK and have included a controller configured to control the dielectric barrier discharge of JP78.
As disclosed by DE VRIES, the advantage of this controller is the uniform activation of the surface. Furthermore, it has been held that broadly providing a mechanical or automatic means to replace manual activity which accomplishes the same result involves only routine skill in the art {see {MPEP 2144.04 (B)(III)}. One would have been motivated to automate the barrier discharge in order to better control the parameters as compared to manual operation.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over JP78 and SICK as applied to claim 24 above, and further in view of POLAK (US-2023/0165624), hereinafter POLAK.
Regarding claim 41, combination of JP78 and DE VRIES discloses all the limitation of claim 24 as discussed above. JP78 only discloses one conductive wire or bar in the first electrode {[FIG. 1] wire or core 3}. Therefore, JP78 is silent on two or more wires that are galvanically decoupled.
In the same filed of endeavor that is related to plasma applicator, POLAK discloses wherein the first electrode is a set of two or more conductive wires or profiles galvanically decoupled from each other {[0148], [0438], [FIG. 5A] note that 10 and 10’ can be considered a set of two conductive wires or electrodes that are galvanically decoupled}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of POLAK in the combination system of JP78, SICK, and DE VRIES and have replaced the single wire of JP78 with a set of two galvanically decoupled wires of POLAK.
As disclosed by POLAK the advantage of this set of two wires are that this provided offset are advantageous for plasma formation and a substantially homogenously distributed plasma is created {[0438]}.
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 24-31, 33-42, and 46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23-29, 31-40, and 42 of copending Application No. 18/489,393 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the above mentioned claims 23-29, 31-40, and 42 of copending Application No. 18/489,393 claim the instant claims 24-31, 33-42, and 46.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 24-27 and 30-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/939,903 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the above mentioned claims 1-8 of copending Application No. 18/939,903 claim the instant claims 24-27 and 30-31.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 24-30 and 41 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 15-20 of copending Application No. 18/862,062 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the above mentioned claims 1 and 15-20 of copending Application No. 18/862,062 claim the instant claims 24-30 and 41.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 24, 26-27, 30-31, and 39-41 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 15 of copending Application No. 18/940,327 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the above mentioned claims 1-5 and 15 of copending Application No. 18/940,327 claim the instant claims 24, 26-27, 30-31, and 39-41.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748