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 .
Examiner’s Note
Examiner notes the priority information provided in the ADS to Australian Patent Application No. 2021902042 and PCT/AU2021/050959 appears to have been incorrectly processed by the Office and was not properly reflected in the file wrapper. The priority data has now been corrected on the Bibliographic Data Sheet to reflect the correct priority information.
Election/Restrictions
Claims 1-2 and 4-13 are allowable. Claims 3 and 14-17, previously withdrawn from consideration as a result of a restriction requirement, require all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement between Inventions I-III, as set forth in the Office action mailed on July 10, 2025, is hereby withdrawn and Claims 3 and 14-17 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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 1-17 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.
Allowable Subject Matter
Claims 1-17 would be allowable if rewritten or amended to overcome the rejection(s) under the doctrine of double patenting, set forth in this and the previous Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest art to independent Claim 1 is Jacobs (WO2020243773 cited in IDS with references to related PGPub 2022/0219404 for ease of reference) as set forth in the previous action. However, Jacobs is not available as prior art as indicated by the corrected priority data provided with the office action.
The closest prior art to independent Claim 1 is Savicki (US Pat. 4658433) in view of Claybaker (US Pat. 6422986).
Savicki teaches a material welder for welding portions of a material together (apparatus 100), including:
elongate top (Figs. 4-6- upper clamp bars 102) and bottom bar (Figs. 4-6- lower clamp bars 108) extending in a longitudinal direction and configured in overlying arrangement to define a welding zone between them (Figs. 4-6),
each of the top and bottom bar assemblies including a first and second heating element (Fig. 4-6- working faces 106, 110) substantially in the same plane (Figs. 4-6); 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 (Col. 6, Lines 48-55);
wherein the top and bottom bar assemblies each include:
a mounting underlying each of the first and second heating elements, the mounting of each of the first and second heating elements being generally adjacent each other (Col. 7, Lines 9-15- supplied heaters are necessarily mounted or integral to the clamp bars).
Savicki does not teach the first and second heating elements being substantially adjacent one another such that when all the heating elements are heated, the welding process results in a weld that is substantially continuous in a transverse direction or 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; a second layer of non-stick material extending over a respective heating element and to a location between the adjacent mounting elements; 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.
Claybaker teaches an alternative welding device wherein the heating elements are coated in Teflon (Col. 8, Lines 24-31) to prevent molten plastic from adhering to the bar during the sealing process (Col. 8, Lines 24-31).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the welder of Savicki to include a Teflon coating as taught by Claybaker with reasonable expectation of success to prevent molten plastic from adhering to the bar during the sealing process (Col. 8, Lines 24-31).
While Claybaker also does not specify three distinct layers of non-stick material, the court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, see MPEP 2144.04(VI)(B). Since no new and unexpected result has been demonstrated, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cover various components of the welder in non-stick material in order to prevent molten plastic from adhering to any part of the bar during sealing (Col. 8, Lines 24-31).
However, Claybaker also fails to teach or suggest the first and second heating elements being substantially adjacent one another such that when all the heating elements are heated, the welding process results in a weld that is substantially continuous in a transverse direction. Further, there is no teaching or suggestion to modify the combination of Savicki and Claybaker to include the first and second heating elements being substantially adjacent one another such that when all the heating elements are heated, the welding process results in a weld that is substantially continuous in a transverse direction. Thus, the prior art does not teach or suggest the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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).
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/A.K./Examiner, Art Unit 1748 8/31/26/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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