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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 4, 8-11, and 17 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 6-9, and 13, respectively, of prior U.S. Patent No. 11,933,586 (“the ‘586 Patent”). This is a statutory double patenting rejection. Claim 4 recites identical subject matter to independent claim 1 of the ‘586 Patent. Claim 8 recites identical subject matter to independent claim 6 of the ‘586 Patent. Claim 9 recites identical subject matter to dependent claim 7 of the ‘586 Patent. Claim 10 recites identical subject matter to dependent claim 8 of the ‘586 Patent. Claim 11 recites identical subject matter to dependent claim 9 of the ‘586 Patent. Finally, Claim 17 recites identical subject matter to independent claim 13 of the ‘586 Patent.
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 1-3, 5-7, 12-16, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of the ‘586 Patent. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of these claims contain similar subject matter and are broader in scope to the claims of the ‘586 Patent.
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, 4-7, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2010/0112316 to Cincotti et al. (“Cincotti”) in view of U.S. Patent No. 2015/0027771 to Kagawa (“Kagawa”), and further in view of U.S. Patent Application Publication No. 2008/0227901 to Lefevre et al. (“Lefevre”).
With regard to Claim 1, Cincotti discloses a visual camouflage system providing thermal and/or radar suppression comprising a vinyl layer, a camouflage pattern, and a laminate layer. See, e.g., Abstract, entire document. Cincotti discloses that the visual camouflage system can be applied to a number of different substrates, including a fabric substrate. Paragraph [0117]. Cincotti discloses the presence of a multi-spectrum signature mitigation layer comprising at least one radar absorption material because Cincotti discloses the use of “[t]hermal and radar signature suppression counter-measures … embedded into or between layers of this ultra-thin, lightweight system in the form of nano-scale, air or gas-filled microspheres or micro-balloons that can also be metallic coated, such as cenospheres, and pulverized aerogels that consist of over 90% air in nano-scale pores that inhibit heat transfer with low density. These materials in combination with one another provide the mechanism for simultaneous visual camouflage and thermal and radar signature suppression.” Paragraph [0039]. Cincotti discloses that the vinyl layer can comprise thermoplastic polymer, such as polyvinyl chloride. Paragraph [0067]. However, Cincotti does not disclose that the vinyl layer comprises vinyl acetate polymer. Kagawa is related to a composite electromagnetic-wave absorbing sheet comprising a first film and a second film. See, e.g., Abstract, entire document. Kagawa teaches that suitable resins for such films include polyvinyl chloride, paragraph [0120], and that suitable rubber resins for such films include ethylene-vinyl acetate copolymer. Paragraph [0121]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize ethylene-vinyl acetate copolymer resin in the suppression system disclosed by Cincotti in order to provide a more flexible and rubbery resin layer compared to polyvinyl chloride, as shown to be known in the suppression film art by Kagawa. The combination of Cincotti with Kagawa does not disclose including an anti-reflective layer comprising a plurality of nanoparticles comprising one or more of calcium carbonate or barium sulfate. Lefevre relates to the “[u]se of nanoparticles of barium sulfate or of calcium carbonate, with a particle size of less than or equal to 150 nm and greater than or equal to 0.5 nm, as filler in transparent polymer compositions.” Abstract. Lefevre teaches that “when barium sulfate or calcium carbonate nanoparticles are added as filler to a transparent polymer composition, good scratch resistance, good impact strength, good tensile strength, good heat stability and high visible and UV radiation stability are simultaneously obtained, while at the same time maintaining excellent transparency for the supplemented polymer composition.” Paragraph [0006]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to include an anti-reflective layer comprising a plurality of nanoparticles comprising one or more of calcium carbonate or barium sulfate within the visual camouflage system taught by the combination of Cincotti with Kagawa in order to provide improved strength, visibility, and radiation stability, as shown to be known in the art by Lefevre. With regard to Claim 4, Kagawa discloses that non-magnetic conductive particles, such as graphite particles, can be used to provide conductivity to the polymer. Paragraph [0116]. It would have been obvious to a person having ordinary skill in the art at the time of the invention to include conductive graphite in the polymer resin disclosed by Cincotti in order to provide a conductive property to the resin, as shown to be known by Kagawa. With regard to Claims 5 and 14, Cincotti discloses that the substrate can comprise a mesh configuration. Paragraph [0117]. The person having ordinary skill in the art would readily understand that mesh size of a fabric is easily modified without any undue burden, and that providing smaller mesh sizing would allow for the coating to have a better chance at holding onto the fabric while limiting the potential for delamination. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide mesh openings less than 1.5 mm in order to provide the fabric with improved probability of holding onto the coating. With regard to Claim 6, Cincotti discloses using metal particles, ceramics, and alumina in the polymer resin. Paragraphs [0042], [0043], and [0047]. With regard to Claim 7, Cincotti discloses that the materials forming the visual camouflage system can be formed using a layered structure of can be mixed to form a composition. Paragraph [0051].
Claims 2, 3, 8-13, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cincotti in view of Kagawa and Lefevre as applied to Claims 1, 4, 6, and 7 above, and further in view of U.S. Patent Application Publication No. 2019/0100870 to Ortega (“Ortega”).
With regard to Claims 2, 12, and 15, the combination of Cincotti with Kagawa and Lefevre does not disclose using a fabric having a spunbond configuration. Ortega is related to fabrics for electromagnetic interference (EMI) and/or radio frequency (RF) shielding. See, e.g., Abstract, entire document. Ortega teaches that nylon spunbond fabrics are suitable for use as substrates to provide emission suppression properties. Paragraph [0004]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a nylon spunbond fabric as the substrate in the invention disclosed by the combination of Cincotti with Kagawa and Lefevre because Ortega teaches that such fabrics are well known to be suitable in the similar field of endeavor, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claims 3, 13, 16, and 20, spunbond fabrics provide a configuration of continuous filaments that are randomly deposited and arranged in a web. With regard to Claims 8 and 9, the combination of Cincotti with Kagawa and Lefevre does not disclose providing a coating with a plurality of random or ordered apertures, such as in a Faraday cage. Ortega teaches that it is well known and recognized to provide suppressive coatings discontinuously in a Faraday cages. Paragraph [0001]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the visual camouflage system disclosed by Cincotti with ordered apertures, such as in a Faraday cage, since Ortega teaches that such a configuration is well known to be implemented in the art with predictability, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). With regard to Claims 10 and 11, the size of the apertures and separation distance of the apertures are generally recognized to be changes in size or shape of the discontinuous coating, which are considered obvious modifications unless they product an unexpected result or solve a particular problem. See M.P.E.P. 2144.04(IV). With regard to Claim 17, Kagawa discloses that non-magnetic conductive particles, such as graphite particles, can be used to provide conductivity to the polymer. Paragraph [0116]. It would have been obvious to a person having ordinary skill in the art at the time of the invention to include conductive graphite in the polymer resin disclosed by Cincotti in order to provide a conductive property to the resin, as shown to be known by Kagawa. With regard to Claim 18, Cincotti discloses using metal particles, ceramics, and alumina in the polymer resin. Paragraphs [0042], [0043], and [0047]. With regard to Claim 19, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the coated fabric taught by the combination of Cincotti, Kagawa, Lefevre, and Ortega as a wearable garment in order to present a suitable use for the product, as the person having ordinary skill in the art would readily understand that a base use for fabric materials is as clothing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 pm.
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, Marla D. McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789