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 .
Specification
The abstract of the disclosure is objected to because it lacks a period at the end. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
i. Claims 1 and 21, “bonding station”, which has been interpreted as heated rollers, an oven, a spot welder, a stitching machine, a sprayer combined with a heater, or equivalents thereof. See Applicant’s published application (Figures 8 and 10; paragraphs 52, 65 and 70).
ii. Claims 1 and 21, “another station for further processing”, which has been interpreted as a further bonding station as interpreted above or a cutter or equivalents thereof. See Applicant’s published application (Figures 9 and 11; paragraphs 66-68 and 78).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 10-13, 17-19 and 21 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 10, it is reasonably clear that “further comprising the step of applying” is introducing a further step of applying. Accordingly, there is no issue of insufficient antecedent basis for “the step of applying” even though such a step is not previously recited. However, the examiner suggests using --a step-- instead of “the step” to improve the claim readability since this is the introduction of a further step.
Regarding claims 17-19, as above, the examiner suggests --a step-- instead of “the step”.
Regarding claims 17-18 and 21, “together” should be deleted to correct the grammar. In particular if the first sheet is stitch bonded to the one or more additional sheets, it is redundant to indicate the sheets are stitch bonded together.
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 1-21 and 23 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 claim 1, line 14, “said product” lacks sufficient antecedent basis because a product is not previously recited or clearly defined.
Regarding claim 4, a first sheet and one or more additional sheets are previously recited. A second sheet is not explicitly recited. Accordingly, to the extent that “said second sheet” is attempting to reference a previously recited second sheet, this term lacks sufficient antecedent basis. Alternatively, if the second sheet is referencing one of the one or more additional sheets, it is not clear which of the one or more additional sheets is being referenced.
Claim 4 contains the trademark/trade names Kevlar and Dyneema. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the respective materials poly-para-phenylene terephthalamide fiber and ultra high molecular weight polyethylene fiber and, accordingly, the identification/description is indefinite.
Regarding claim 5, it is confusing to recite “a plurality of said one or more additional sheets”. If “a plurality” is being indicated then there must be more than one. Accordingly, claim 5 should more clearly indicate the one or more additional sheets comprise a plurality of additional sheets.
Regarding claims 8-9, as above in claim 4, these claims improperly use the trademark/trade names Kevlar and Dyneema.
Regarding claim 10, a first sheet and one or more additional sheets are previously recited. It is unclear which of these are being referenced by “said sheets”.
Regarding claim 15, it is unclear how the phrase “some type” modifies “ballistic resistant material”. There is no clarification in the specification for this phrase. Accordingly the scope of “some type of ballistic resistant material” is unclear.
Regarding claim 16, it is unclear if “including said ballistic resistant material as fibers” should be interpreted as fibers made of the ballistic resistant material or if this phrase simply indicates the ballistic resistant material comprises fibers. The examiner suggests changing this phrase to --comprising fibers of said ballistic resistant material--.
Regarding claim 18, while “said sheet of flexible ballistic resistant laminate” might have implicit antecedent basis from forming the continuous length of flexible ballistic resistant laminate by bonding sheets, this term is not previously recited. The examiner suggests referencing the previously recited continuous length of flexible ballistic resistant laminate to avoid any potential issue of insufficient antecedent basis for the above noted limitation, and also to more clearly reference the previously recited continuous length of flexible ballistic resistant laminate.
Regarding claim 21, it is unclear why the limitation of feeding a continuous length of a first sheet of material in lines 3-4 is repeated in lines 5-6. It is also unclear if the ballistic resistant material and bonding stations recited in these limitations are referring to the same respective claim elements. In line 8, another instance of “a ballistic resistant material” is recited, raising the same issue.
Regarding claim 23, parent claim 22 recites first, second and third sheets and one or more additional sheets. It is unclear which of these are being referenced by “said sheets”.
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.
Claims 1-3, 5-8, 10, 12-14, 17 and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Adrain (US 2019/0113312 A1) in view of Choi (US 2015/0314558 A1).
Regarding claim 1, Adrain teaches a method of producing a flexible ballistic resistant laminate wherein said flexible ballistic resistant laminate is sufficiently flexible to be rolled (Figures 6; Abstract; paragraphs 6, 15, 39, 62, 75, 96-101, 104 and 107). The flexible ballistic resistant laminate comprises a first sheet of material including a ballistic resistant material bonded to one or more additional sheets of material (paragraphs 96-101). The flexible ballistic resistant laminate is configured as part of a product to prevent a ballistic object from penetrating the flexible ballistic resistant laminate (Figure 6; paragraph 96-101, 104 and 107).
Adrain differs from claim 1 in that:
i. Adrain does not teach forming a continuous length of the flexible ballistic resistant laminate by feeding a continuous length of the first sheet of material into a bonding process at a bonding station; feeding a continuous length of the one or more additional sheets of material into the bonding process; and using said bonding process to bond said first sheet of material to said one or more additional sheets of material to form said continuous length of flexible ballistic resistant laminate; outputting said continuous length of flexible ballistic resistant laminate from said bonding process for transfer to another station for further processing, wherein said continuous length of flexible ballistic resistant laminate is sufficiently flexible to be rolled and/or folded.
(i) The essential difference between Adrain and the claimed method is that the claimed method provides a process of using continuous materials to produce a continuous flexible ballistic resistant laminate which can be converted into a product of the type taught by Adrain. Adrain does not teach the use of continuous materials.
In one aspect, Adrain is drawn to making a flexible laminate of high performance fibrous materials (Abstract; paragraphs 15, 62, 75, 96-101 and 104; Figure 6). Adrain suggests forming products by first forming large sheets of material and then cutting (paragraph 107), but does not teach continuous materials as noted above. In the related art of laminating high performance fibrous materials to produce a flexible laminate which can be rolled, Choi teaches a continuous process of forming a continuous length of the flexible laminate by feeding a continuous length of a first sheet of material into a bonding process at a bonding station; feeding a continuous length of one or more additional sheets of material into the bonding process; and using said bonding process to bond said first sheet of material to said one or more additional sheets of material to form a continuous length of flexible laminate; wherein said continuous length of flexible laminate is sufficiently flexible to be rolled (Figures 2-3 and 5; paragraphs 7, 14-16; 38, 43, 45, 50, 57-59, 73, 76-83 and 119-127). Aside from illustrating an efficient manner of producing a large sheet of continuous laminated material which can be rolled, Choi also suggests that forming different laminates and then combining the laminates in a desired stacking order allows for great flexibility in producing flexible continuous laminates (paragraphs 125-127). As to outputting the continuous length of flexible laminate from said bonding process for transfer to another station for further processing, the rolled material suggested by Adrain in view of Choi would naturally be outputted to another station, for example a cutting station as suggested by Adrain for forming products from the large sheet material. See Adrain (paragraph 107). Alternatively, Choi suggests the another bonding station for combining laminates with other layers in a desired stacking order to form a desired flexible laminate (paragraphs 119-127; Figure 5).
It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in Adrain involving manufacture of continuous flexible ballistic resistant laminate and outputting such continuous material to another station for further processing because one having ordinary skill in the art would have been motivated to suitably form large sheets of the flexible ballistic resistant laminate desired by Adrain as suggested by the teachings of Choi; to allow for producing large sheets of the flexible ballistic resistant laminate in a flexible manner with respect to stacking order as suggested by the teachings of Choi and/or to perform the cutting suggested by Adrian for forming products from the large sheet laminate.
Regarding claim 2, Adrain suggests laminating a plurality of ballistic resistant sheets, for examples as many as 18 to provide suitable ballistic resistance (paragraphs 99-100). It is clear from Choi that a desired number sheets may be fed to the bonding station (paragraphs 45, 50, 103).
Regarding claim 3, Adrain suggests a plurality of sheets having combinations of ballistic materials (paragraph 75). Such satisfies claim 3.
Claim 5 is satisfied for the reasons provided above.
Regarding claim 6, Adrain suggests a further decorative sheet of material bonded to form a decorative outer surface (paragraphs 40 and 97-99). Choi is applied as above for suggesting a continuous manufacturing process with a bonding station. Naturally, such decorative sheet would be feed in a continuous length in the continuous manufacturing process suggested by Choi.
Regarding claim 7, Adrain suggests Kevlar sheets, Kevlar being an inherently fire resistant material (paragraph 75).
Claim 8 is satisfied for the reasons provided above. It is noted that Kevlar is a commercially available poly-para-phenylene terephthalamide fiber.
Regarding claim 10, this limitation is satisfied by an applied additional sheet, decorative layer or paint as suggested by Adrain (paragraphs 40 and 96-101).
Claim 12 is satisfied for the reasons provided above.
Regarding claim 13, Adrain suggests additional Kevlar sheets which may be placed on at least one of said sheets, Kevlar being an inherently fire resistant material (paragraph 75).
Regarding claim 14, Adrain clearly suggests this additional limitation (paragraphs 97 and 99-100).
Regarding claim 17, Adrain suggests the claimed stitch bonding (paragraph 98).
Regarding claims 19-20, these additional limitations are satisfied by the gluing and thermal welding bonding methods suggested by Adrain for joining the sheets of the laminate (paragraph 98).
Claims 21-23 are satisfied for the reasons provided above.
Claims 3-4, 9-11, 15-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Adrain in view of Choi as applied to claims 1-3, 5-8, 10, 12-14, 17 and 19-23 above, and further in view of Bhatnagar (US 2016/0159034 A1).
Regarding claims 3-4, above it was noted that Adrain suggests a plurality of sheets having combinations of ballistic materials, which satisfies claim 3. Here Bhatnagar is applied to satisfy claims 3-4 for suggesting the combination of sheets which have different compositions of ballistic resistant materials. In a flexible ballistic resistant laminate product, Bhatnagar suggests combining fibrous sheet layers made from ultra high molecular weight polyethylene (UHMWPE) fibers with aramid fibers such as Kevlar, which is a commercially available poly-para-phenylene terephthalamide fiber (paragraphs 33-36, 50, 54, 65 and 76). Such allows high performance at reduced cost (paragraph 9). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these limitations in the modified method of Adrain because one having ordinary skill in the art would have been motivated to achieve the above noted advantage in accordance with the teachings of Bhatnagar.
Claim 9 is satisfied for the reasons provided above.
Regarding claims 10-11, while not recited by Adrain, Bhatnagar suggests application of adhesive to the sheets to integrate the layers (paragraph 69). Adrain also suggests gluing the layers together (paragraph 98), but does not recite applying adhesive. It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in the modified method of Adrain because one having ordinary skill in the art would have been motivated to suitably integrate the layers using adhesive, as suggested by Bhatnagar.
Regarding claims 15-16, while not recited by Adrain, Bhatnagar suggests combining woven sheets of ballistic resistant fibers with unwoven mat sheets of ballistic resistant fibers to provide a laminate with suitable ballistic resistance (paragraphs 33-36, 52, 56, 58 and 65). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in the modified method of Adrain because one having ordinary skill in the art would have been motivated to use known combinations of sheets for providing flexible ballistic resistant laminates with suitable ballistic resistance, as suggested by Bhatnagar.
Claim 19 is satisfied for the reasons provided above. Bhatnagar was applied for suggesting application of adhesive to the sheets to integrate the layers.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Adrain in view of Choi as applied to claims 1-3, 5-8, 10, 12-14, 17 and 19-23 above, and further in view of Carbajal (US 2009/0282596 A1).
Regarding claim 18, Adrain teaches stitching the sheets together but does not recite these additional limitations. In a flexible ballistic resistant laminate, Carbajal suggests stich bonding the sheets of the laminate together in a regular patten of transverse stitch spaced apart along a longitudinal length of the sheet of flexible ballistic resistant laminate to suitably integrate the layers (paragraphs 4 and 63). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide these additional limitations in the modified method of Adrain because one having ordinary skill in the art would have been motivated to use known suitable stitching techniques to perform the taught by Adrain, as suggested by the above noted teachings of Carbajal.
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 1-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-21, 26 and 30-31 of U.S. Patent No. US 11,920,905 (the ’905 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons detailed below.
Regarding claim 1, claim 1 of the ’905 Patent teaches the claimed feeding, bonding sufficiently flexible ballistic resistant limitations of current claim 1. It is noted that stich bonding suggests the use of a stitching machine, which satisfies the claimed bonding station. The ‘905 Patent does not recite outputting for transfer to another station for further processing. However, such is known for cutting to form a product. See Adrain (paragraph 107). It would have been obvious to one having ordinary skill in the art at the time the application was filed to provide this additional step in claim 1 of the ‘905 Patent because one having ordinary skill in the art would have been motivated to form a product by cutting at a cutting station as suggested by Adrain.
Regarding claims 2-23, claims 2-6, 8-21, 26 and 30-31 of the ‘905 Patent clearly respectively satisfy the additional limitations of these claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745