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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, drawn to an apparatus, classified in B29C 48/919.
II. Claims 9-19, drawn to a method, classified in B29C 48/03.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different process, for example in a process with different temperature relationships.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter; or
the inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Joseph Leone on 19 May 2025 a provisional election was made with traverse to prosecute the invention of Group II, claims 9-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-8 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: METHOD OF EXTRUDING AND CONTROLLING COOLING RATE TO AVOID THERMAL WELDING OF SHEATH AND DUCT AT HIGHER SPEED.
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 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Thompson (US 6,645,410 B2) in view of Oka et al. (US 6,905,646 B1).
Regarding claim 9, Thompson discloses a method of making a product 100 comprising a plurality of microducts 102 bundled within a sheath 101 (title/abstract, 4:6+; FIG. 3-4), the method comprising:
(a) extruding a roughly cylindrical sheath material 101 having an inner surface around a plurality of microducts 102 each having an outer surface in such a fashion that the inner surface of the sheath material does not contact outer surface of the microducts, wherein the sheath material is extruded at a temperature T1;
(b) passing the sheath material and microducts through an air gap for a distance, a time, and at an air temperature T2; and then
(c) passing the sheath material and microducts through a cooling medium, for a distance, and time, and at a cooling medium temperature T3 that is lower than T2; wherein welding is inhibited between the inner surface of the sheath material and the outer surfaces of the microducts (FIG. 5; 4:28+).
Thompson does not appear to expressly disclose the temperature relationship between the extruded temperature T1, the air temperature T2, and the cooling medium temperature T3.
However, Oka discloses a method for cooling a extrudate at 180° C. to below the softening point by air cooling in an air gap at 20-30° C. followed by final cooling in a water bath at 20-30° C. (Examples 1-7; 6:1+).
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the process of Thompson to include the cooling temperatures of Oka, in order to quickly and adequately cool the extruded material in a manner known in the art and prevent leaks and surface irregularities (Oka 2:6+).
Regarding claim 10-12, Oka discloses the air gap is 3-4.8 meters (Example 1-2) which overlaps the claimed range (MPEP § 2144.05).
Regarding claim 13, Thompson and Oka discloses the cooling medium comprises water (Oka Examples 1-7: Thompson 5:26+).
Regarding claim 14, Oka discloses the extruder at 180° C. and the air gap at 20-30° C. (Examples 1-7; 6:1+) which overlaps the claimed range (MPEP § 2144.05).
Regarding claim 15-16, Oka discloses the water bath at 20-30° C. (Examples 1-7; 6:1+). which overlaps the claimed range (MPEP § 2144.05).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Li; Kang et al.
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Lukubira; Sam et al.
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Hackl; Leopold et al.
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Ganatra; Amit et al.
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Dando; Jeremy D. et al.
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Wegmaier; Rudolf et al.
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Zikeli; Stefan et al.
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Gord; Herbert et al.
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St. Pierre; Ernest J. et al.
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Kajiwara; Edward Makoto et al.
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Williams; Mark Griffith et al.
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Byun; Moo-Won
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin A Schiffman whose telephone number is (571)270-7626. The examiner can normally be reached M-F 9a-530p EST.
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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/BENJAMIN A SCHIFFMAN/ Primary Examiner, Art Unit 1742