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 .
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.
Claim 24 is 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.
Claim 24 recites “basalt fibers, natural material”. The scope of the claim is unclear because basalt is a natural material.
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.
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.
Claim(s) 14-26 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Radtke, U.S. Patent Application Publication No. 2012/0244301.
Radtke discloses a hollow component. See paragraph 0001. The hollow body can comprise continuous fibers which extend longitudinally as well as at an angle, (tangentially and diagonally), to the longitudinal axis of the hollow body. See paragraphs 0011-0013, 0018. The hollow body can comprise a thermoplastic polymers such as polyethylene, polypropylene, polyamide, polyurethanes, styrene, polyacrylates, polyesters, etc. See paragraph 0014. The thermoplastic polymer comprises the continuous fiber reinforcements. The fiber reinforcements can be formed from glass, carbon, basalt, and aramid fibers. See paragraph 0017. The fiber reinforced polymer surrounds the hollow portion of the structure.
With regard to the limitations that the component is formed by fluid injection technique, the hollow is a cut out hollow, that the hollow is produced by a projectile driven by water, where the fluid injection technique is selected from water injection, projectile injection and gas technology, and when the continuous fibers are included in the structure, (during or after the fluid injection step), the instant claims are drawn to a product. Product by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "Even 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 , 227 USPQ 964, 966 (Fed. Cir. 1985).
Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289, 292 (Fed. Cir. 1983).
The use of 35 USC 102/103 rejections for product by process claim has been approved by the courts. "[T]he lack of physical description in a product - by - process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product - by - process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown , 173 USPQ 685, 688 (CCPA 1972).
Therefore, the burden is shifted to Applicant to show that any process differences result in an unobvious difference in the final product.
Claim(s) 14-26 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Aoyagi et al, U.S. Patent No. 5,753,324.
Aoyagi discloses a hollow article formed by winding continuous fiber sheets around a mandrel. The fibers can be wound at 0, 90, 40-50 and -40- -50 degrees relative to the longitudinal axis, which corresponds to axially, longitudinally, and diagonally. See col. 1, lines 36-43. The fibers can be carbon, glass, or aramid fibers. . See col. 2 lines 40-45. The fibers include a matrix which can be any known resin, in particular thermosetting resins. See col. 2, lines 47-52. With regard to the limitations that the component is formed by fluid injection technique, the hollow is a cut out hollow, that the hollow is produced by a projectile driven by water, where the fluid injection technique is selected from water injection, projectile injection and gas technology, and when the continuous fibers are included in the structure, (during or after the fluid injection step), the instant claims are drawn to a product. Product by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "Even 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 , 227 USPQ 964, 966 (Fed. Cir. 1985).
Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289, 292 (Fed. Cir. 1983).
The use of 35 USC 102/103 rejections for product by process claim has been approved by the courts. "[T]he lack of physical description in a product - by - process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product - by - process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown , 173 USPQ 685, 688 (CCPA 1972).
Therefore, the burden is shifted to Applicant to show that any process differences result in an unobvious difference in the final product.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla 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.
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/ELIZABETH M IMANI/ Primary Examiner, Art Unit 1789