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 .
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.
Claim(s) 1-6, 10-11, 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Last (EP3205945).
Regarding claim 1,
A heating or cooling element (see par. 1) comprising: a carrier mat 4 comprising a polymer material (see par. 26); and a first tube 6 in a meander or spiral form (see pars. 5, 106-107) wherein: the heating or cooling element can be rolled up (see pars. 5, 9).
With respect to the recitation of “and the polymer material is configured to be cut and bent around the first tube to fasten the first tube to the carrier mat”, a claim term is functional when it recites a feature "by what it does rather than by what it is".
While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board' s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Here, said recitation of “and the polymer material is configured to be cut and bent around the first tube to fasten the first tube to the carrier mat” is a recitation of what the apparatus is configured to do and not what the apparatus is as there are no structural attributes of the interrelated components except for the requirement that the polymer material is capable being cut and bent around the first tube to fasten the first tube to the carrier mat. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see MPEP 2114 [R-1]. Since the polymer material of Last is capable of being cut and bent around the first tube to fasten the first tube to the carrier mat, the polymer material of Last meets the claimed limitations of being configured to do so. There is no structural difference between the device of Last and the polymer material of Applicant' s claim 1.
Regarding claim 2,
Last teaches wherein the polymer material is a thermoplastic polymer (e.g. polyethylene, see par. 26).
Regarding claim 3,
Last teaches wherein the polymer material is selected from a group consisting of polyethylene, polypropylene polyvinyl chloride, and a combination thereof (see par. 26).
Regarding claim 4,
Last teaches wherein the carrier mat has a wired mesh shape (see pars. 20, 26, 28, 58. 127).
Regarding claim 5,
Last teaches wherein the carrier mat comprises wires of the polymer material with a thickness between 1 and 20 mm (see pars. 20-21, 26, 127).
Regarding claim 6,
A claim term is functional when it recites a feature "by what it does rather than by what it is".
While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board' s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Here, the recitations of claim 6 is a recitation of what the cut polymer material is configured to do and not what the cut polymer material is as there are no structural attributes of the interrelated components except for the requirement that the cut polymer material is capable of being heated, etc.… While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see MPEP 2114 [R-1]. Since the cut polymer material of Last is capable of being heated, etc., the cut polymer material of Last meets the claimed limitations of being configured to do so. There is no structural difference between the cut polymer material of Last and the device of Applicant's claim 6.
Regarding claim 10,
Last teaches wherein the polymer material is selected from a group consisting of polyethylene, polypropylene, and polyvinyl chloride (see par. 26); and the carrier mat comprises wires of polymer material with a thickness between 1 and 5 mm (see pars. 20-21, 26, 127).
Regarding claim 11,
The subject matter of claim 11 is directed towards essentially the same subject matter as claim 6 and has been addressed in the rejection of claim 6.
Regarding claim 16,
Last teaches wherein portions of the polymer material extend around (e.g. at least below said tube) and secure the first tube to the carrier mat (see par. 79).
Regarding claim 17,
A claim term is functional when it recites a feature "by what it does rather than by what it is".
While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board' s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
It appears that the language of claim 17 is a recitation of what a bent portion of the polymer material is configured to do and not what the bent portion of the polymer is as there are no structural attributes of the interrelated components except for the requirement that the bent portion of the polymer is capable of wrapping around the first tube and connecting the first tube to the carrier mat. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see MPEP 2114 [R-1]. Since the bent portion of the polymer material of Last is capable of being wrapped around the first tube and connecting the first tube to the carrier mat, the bent portion of Last meets the claimed limitations as recited in claim 17. There is no structural difference between a bent portion of the polymer material of Last and a bent portion of the polymer material of Applicant' s claim 17.
Regarding claim 18,
The subject matter of claim 18 is directed towards essentially the same subject matter as claim 17 and has been addressed in the rejection of claim 17.
Response to Arguments
Previously objections to the specification is withdrawn.
Applicant's arguments filed 6/14/2026 have been fully considered but they are not persuasive as Last teaches a polymer material configured to be (e.g. capable of) being cut and bent around the first tube, etc.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Last (WO2021/080423) teaches a carrier mat. HOWARTH teaches heat sealing a folded plastic mat with a tube.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 STEVE S TANENBAUM whose telephone number is (313)446-6522. The examiner can normally be reached M-F 11 AM - 7 PM.
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/Steve S TANENBAUM/Examiner, Art Unit 3763
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