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/Restrictions
Applicant’s election without traverse of Group I, Claims 1-2 and 4-13 in the reply filed on September 3, 2025 is acknowledged. The election has been treated as an election without traverse because no statement was made indicating whether the election was made with or without traverse.
Claims 3 and 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 3, 2025.
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 1-2 and 4-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 11865789. Although the claims at issue are not identical, they are not patentably distinct from each other because US Pat. 11865789 teaches all the instantly claimed limitations.
Claim Objections
Claims 5, 8, and 12 are objected to because of the following informalities:
In Claim 5, Line 3, “secured to the generally planar member” should read “secured to one of the generally planar members”.
In Claim 5, Line 4, “to open and close the jaw” should read “to open and close the jaws” (jaws should be plural as previously recited).
In Claim 8, Line 4, “the holes and/or channels” should read “the at least one hole and/or channel”.
In Claim 12, Line 2-3, “the contacts surface” should read “the contact surfaces”(contact should be singular and surfaces should be plural).
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 11 and 13 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 11 and 13, the terms "preferably" and “most preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 4-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacobs (WO2020243773 cited in IDS with references to related PGPub 2022/0219404 for ease of reference).
Regarding Claim 1, Jacobs teaches a material welder for welding portions of a material together (Abstract), including:
elongate top and bottom bar assemblies (Fig. 5) extending in a longitudinal direction and configured in overlying arrangement to define a welding zone between them (Fig. 1 and 5 showing each assembly extending in a longitudinal direction),
each of the top and bottom bar assemblies including a first and second heating element [0038] substantially in the same plane [0034],
the first and second heating elements being substantially adjacent one another (Fig. 1 and 5) such that when all the heating elements are heated, the welding process results in a weld that is substantially continuous in a transverse direction [0019]; and
an actuator device adapted to move the top bar assembly towards the bottom bar assembly and/or the bottom bar assembly towards the top bar assembly such that the first heating element of the top bar assembly aligns with the first heating element of the bottom bar assembly and the second heating element of the top bar assembly aligns with the second heating element of the bottom bar assembly [0008];
wherein the top and bottom bar assemblies each include:
a mounting underlying each of the first and second heating elements [0038], the mounting of each of the first and second heating elements being generally adjacent each other (Fig. 5);
a first layer of non-stick material disposed between a respective heating element and the mounting on which it is mounted, the first layer extending to a location between the adjacent mountings ([0027]- the weld bars may comprise non-stick materials);
a second layer of non-stick material extending over a respective heating element and to a location between the adjacent mounting elements ([0040]- the heating elements may be embedded into the non-stick coating); and
a third layer of non-stick material forming a cover which extends over the second layers of the heating elements and over sides of the mountings, the third layer forming a contact surface for contacting the material during the welding process ([0021]- the contact surface may be coated with a non-stick material).
Regarding Claim 2, Jacobs further teaches generally planar members positioned closely adjacent to either side of the bottom bar assembly [0065], each planar member being height adjustable so that, in use, an edge of each generally planar member which is proximal to the bottom bar assembly can be used to position respective portions of material [0065]; and
a clamp under one of the generally planar members, the clamp releasably engaging an end of a first portion of material to be welded to a second portion of material [0065].
Regarding Claim 4, Jacobs further teaches a height of the clamp is variable to allow the height of the first portion of material to be raised and sit generally parallel with the second portion of material ([0065]- discussing the clamp).
Regarding Claim 5, Jacobs further teaches the clamp includes upper and lower members forming jaws, the upper member being secured to the generally planar member and the lower member pivotable relative to the upper member to open and close the jaw ([0065]- discussing the clamp).
Regarding Claim 6, Jacobs further teaches the clamp is configured to accept a zip [0018] or a portion of material having a generally circular profile, formed by an internal core around which the material is wrapped [0065].
Regarding Claim 7, Jacobs further teaches the heating elements can be selectively activated to heat either the first heating elements or all the first and second heating elements [0053].
Regarding Claim 8, Jacobs further teaches at least one of the top and bottom bar assemblies further includes at least one hole and/or channel adapted such that fluid or air is circulated through the holes and/or channels and through a cooling device to cool the heating elements [0058].
Regarding Claim 9, Jacobs further teaches at least one tensioning mechanism is attached to each end of each of the heating elements and is adapted to pull the heating elements into a state of tension [0045].
Regarding Claim 10, Jacobs further teaches the actuator device is adapted to move the top bar assembly towards the bottom bar assembly [0028].
Regarding Claim 11, Jacobs further teaches the first and second heating elements are between about 5 to 20mm wide, preferably between about 8 to 16mm wide, most preferably about 10mm wide [0041].
Regarding Claim 12, Jacobs further teaches the contact surfaces of the top bar assembly and/or the contacts surface of the bottom bar assembly are substantially flat [0021].
Regarding Claim 13, Jacobs further teaches the contact surfaces of the top bar assembly and/or the contact surfaces of the bottom bar assembly are coated with a non-stick material, preferably polytetrafluoroethylene (Teflon), fluorinated ethylene propylene, or similar non-stick materials [0027].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrianna Konves whose telephone number is (571)272-3958. The examiner can normally be reached Monday-Friday 8:00-4:00 MST (Arizona).
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, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K./Examiner, Art Unit 1748 1/28/26
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748