DETAILED ACTION
The communication of 27 March 2024 has been entered and fully considered. Claims 1-12 are pending.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application Nos. 17/262,799, PCT/FI2019/050245, and 62/702,921 each fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
None of the prior filed applications contains a generic recitation of a cross-linked resin as in claim 11. The prior filed applications which do refer to a cross-linked resin contain the following:
The surface of a 3D-printed sleeve may receive a coating finish or sealant using high quality cross-linked resins such as cyanoacrylates, Dichtol products of the Diamant® company, Mönchengladbach, Germany or Nanoseal products of the medacom company, Butzbach, Germany.
Claim 11 being an original claim in this case provides 112(a) support for itself (In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976)) but fails to derive support from the prior filed applications. It does not appear Applicant was in possession of the breadth of claim 11 (any cross-linked resin) as the priority documents all refer to “high quality” cross-linked resins. Therefore, the effective filing date of claim 11 is 27 March 2024.
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.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11544488. Although the claims at issue are not identical, they are not patentably distinct from each other.
The 488 patent recites as claim 1 a nonwoven fiber web with a pattern. Instant claim 12 recites a nonwoven web with a hydro-embossed pattern produced using the sleave of claim 1. The patented case renders obvious the instant limitation because there does not appear to be any structure specifically associated with hydro-embossing using the sleave of claim 1.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12473673. Although the claims at issue are not identical, they are not patentably distinct from each other.
The 673 patent recites as claim 1 a nonwoven hydroentangled fiber web with a pattern. Instant claim 12 recites a nonwoven web with a hydro-embossed pattern produced using the sleave of claim 1. The patented case renders obvious the instant limitation because there does not appear to be any structure specifically associated with hydro-embossing using the sleave of claim 1.
Claims 1, 3, 4, and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 12, and 15 of copending Application No. 19/118,802. Although the claims at issue are not identical, they are not patentably distinct from each other.
The ‘802 case recites in claim 1 a sleeve for a drum for use in forming a fibrous web. This co-pending claim teaches each limitation of claim 1 except the that it is manufactured by AM.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Additionally, claim 11 of the copending case recites additive manufacturing.
Below is a table of how the double patenting issues in this case vs. the copending.
Instant Claim
Copending Claim
1
1
3
1
4
12
5
15
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blackwell (US 20210229345).
Blackwell discloses every limitation of claim 11 in claim 1 except the addition of a cross-linked resin on the surface. Blackwell discloses the use of a high-quality cross-linked resin to avoid sharp edge (¶32). It would have been obvious to apply a high-quality cross-linked resin to the sleeve for the purpose of avoiding sharp edges.
Claims 1, 3, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coyle (US 2007/0125248).
Regarding claims 1, 3, 4, 5, Coyle teaches an embossing drum with a mandrel and a cylindrical sleeve (abstract, Figures). The sleeve is disclosed as polymeric (¶24) and with a thickness of greater than 5 mm (¶23).
Although Coyle does not teach the sleeve made by AM (claim 1) or sterotlithography (claim 4) these are process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
The specification of the case at hand provides no distinct structure imparted to the sleeve by the use of AM or sterolithography as the method of manufacture.
Coyle anticipates claims 1, 3, 4, 5.
Claims 1, 3, 4, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mariaggi (US 2001/0020053).
Mariaggi teaches a preform in the form of a tube which has a water absorption of less than 4% by weight (see claim 1 and 26).
Although Mariaggi does not teach the sleeve made by AM (claim 1) or sterotlithography (claim 4) these are process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Mariaggi anticipates claims 1, 3, 4, 7.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rodman (US 2725309).
Rodman teaches a non-woven fabric which has been embossed (see Ex. IX). Although Rodman does not teach the fabric made with the sleeve of claim 1 via hydroembossing, these are process limitations. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Coyle (US 2007/0125248).
Regarding claim 6, Coyle teaches each limitation of claim 1 (see above). Coyle further teaches the pattern on the sleeve can have dimensions chosen based upon the pattern desired to be imparted (¶23). It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the depth and thickness of the sleeve since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed parameter is critical and has unexpected results. In the present invention, one would have been motivated to optimize the thickness and depth motivated by the desire to provide a final product with the desired properties.
Claims 2, 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Coyle (US 2007/0125248) as applied to claim 1 above and further in view of Boukaftane (US 2009/0136679).
Regarding claims 2, 7-9, and 11, Coyle teaches each limitation of claim 1 (see above). Coyle fails to teach what the exact polymer of the sleeve is or a crosslinked coating.
Boukaftane teaches an embossing device with a sleeve where the sleeve is formed from photocurable resins such as polyester, polyether, polyurethane (¶19), which may be applied in multiple layers (¶28) which ensures good compromise as regards static loads and anti-adherence towards the substrate to be embossed (¶28). It would have been obvious to a PHOSIA prior to the effective filing date of the claimed invention to use as the resin of Coyle a photocurable polyurethane as exemplified by Boukaftane for the advantages disclosed therein.
Regarding claims 7-9, Coyle and Boukaftane teach a sleeve formed from a photocurable resins such as polyester, polyether, polyurethane (¶19), which may be applied in multiple layers. Neither teaches the water absorption capacity; the tensile strength; nor the elongation at break.
However, it is reasonable to conclude that each of those properties is inherent to Coyle and Boukaftane. Support for said conclusion is found in the use of like materials which would result in the claimed property. The prior art in combination discloses exactly the specifics of the specification at hand as there are no examples in the specification at all. The burden is upon the Applicant to prove otherwise.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 10, Coyle teaches each limitation of claim 1 (see above). Coyle fails to teach the hardness of the sleeve. Boukaftane however teaches composition used for the surface of the sleeve (¶23) have a hardness of at least 75 Shore D which makes it resistant to impact and abrasion so it may reproduce embossing on substrates. It would have been obvious to a PHOSIA prior to the effective filing date of the claimed invention to use a sleeve with a hardness of at least 75 Shore D because such as resin is known in the art to be suitable for imparting patterns on a surface.
Regarding claim 12, Coyle fails to each the use of the device to produce a nonwoven. However, Boukaftane teaches a similar device may be used to create a nonwoven (¶23). As such a PHOSIA would have found it obvious to produce a nonwoven using the device of Coyle as similar devices are known to be useful in producing non-woven fabrics. Although neither teaches hydroembossing, the claim is directed to a product and not a process. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claims 7-10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Coyle (US 2007/0125248) as applied to claim 1 above and further in view of Horak (WO 2015/000642)).
Coyle teaches each limitation of claim 1 (see above). Coyle fails to teach what the exact polymer of the sleeve is or a crosslinked coating.
Regarding claims 9 and 11, Horak teaches a roll cover formed from at least one which has covalently bonded partly fluorinated or perfluorinated groups (abstract). Horak teaches the roller is hydrophobic (¶7) and reduces the amount of contaminants that may be present after embossing (¶7). It would have been obvious to use as the roller cover of Coyle that which is taught by Horak for the benefit of reduced contaminants. The only example in Horak has an elongation at break of 8% which is within the claimed range.
As to claims 7, 8, and 10, while neither reference teaches the water absorption capacity; the tensile strength; nor shore hardness, it is reasonable to conclude that each of those properties is inherent to Coyle and Horak . Support for said conclusion is found in the use of like materials which would result in the claimed property. The prior art in combination discloses exactly the specifics of the specification at hand as there are no examples in the specification at all. The burden is upon the Applicant to prove otherwise.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK J VINEIS whose telephone number is (571)270-1547. The examiner can normally be reached Monday - Thursday: 8:00 a.m. - 4:00 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Greg Tryder can be reached at (571) 270-7365. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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