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 .
Drawings
The drawings filed 4/30/2024 are accepted.
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 1-20 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.
Specifically, the claims held to be indefinite because the specification does not contain objective methods by which the claimed “geometric mean slope” / “geometric mean modulus” (herein understood to be synonymous) and the claimed “geometric mean tensile strength” can be determined. The lack of a clear methodology by which said values can be calculated renders the claim indefinite.
For example, with regards to the “geometric mean tensile strength”, said term is defined in paragraph 0034 as “the square root of the product of the machine direction tensile strength and the cross-machine direction tensile strength”. The claim does not specify how said value is determined, and limitations from the specification cannot be read into the claim. The tensile test in the specification (106 as published) further states that the majority of peak load values fall between 10 to 90 percent of the load cell's full-scale value but fails to provide sufficient clarity how the test is conducted.
With regards to the “geometric mean slope” / “geometric mean modulus” said term is defined in paragraph (0033) as ““Geometric Mean Slope” (GM Slope) generally refers to geometric mean modulus of a product and is equal to the square root of the product of machine direction slope and cross-machine direction slope.” Said definition does not specify which modulus. Furthermore, slope is measured as the gradient of the least-squares line fitted to the load-corrected strain points falling between a specimen-generated force of 70 to 157 grams (0.687 to 1.540 N) divided by the specimen width (0033). It is unclear, however, how the least square line is calculated and what calculation is associated with the “load-corrected” strain points. The specification states the slope “refer to the slope of the line resulting from plotting tensile versus stretch and is an output of the MTS TestWorks….” It is unclear how said “tensile” and “stretch” are determined and what assumptions may be part of MTS TestWorks.
With regards to claim 9, said claim is further held to be indefinite because the manner in which the “Stiffness Index” is determined is indefinite for the reasons set forth above. Specifically, Stiffness Index is defined (0035) as the quotient of the geometric mean tensile slope dived by the geometric mean tensile strength.
Response to Arguments
Applicants’ arguments filed 7/1/2026 have been fully considered but they are not persuasive.
Claim Rejections
With regards to the rejection of Claims 1-20 under 35 U.S.C. 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, Applicant argues the specification provides a methodology for determining the claimed physical parameter (citing the specification at p. 20, I. 20 - p. 22, I. 3). The examiner initially notes it is unclear to what “physical parameter” applicant is referring as the claims are rejected as being indefinite because the original disclosure does not describe how two parameters (“geometric mean slope” / “geometric mean modulus” (herein understood to be synonymous) and the claimed “geometric mean tensile strength”) are determined. The examiner believes applicant is referring to the tensile strength as applicant argues “The parameter at issue is tensile strength…” The Examiner acknowledges a procedure is described in the specification but asserts that said procedure is not set forth with sufficient detail to allow a person of ordinary skill in the art to duplicate the procedure utilized with reasonable certainty. Applicant argues said position does not establish indefiniteness and argues the specification “expressly provides a methodology for determining the claimed physical parameter.” However, said methodology is not currently in the claim and cannot be read into the claim. Furthermore, the specification fails to set forth a tensile strength “methodology” with sufficient detail to render the claim definite. As the Federal Circuit held in Dow Chemical Co. v. Nova Chemicals Corp. (803 F.3d 620 (2015)), claims reciting a limitation that could be calculated in several ways are indefinite where the patent claims, specification, and prosecution history failed to indicate which method should be used. As is known in the art, “Tensile properties depend both on the material and the conditions of test (extension rate, temperature, humidity, specimen geometry, pretest conditioning, etc.); therefore, materials should be compared only when tested under the same conditions.” (see Tensile Property - an overview | ScienceDirect Topics; “General introduction to rubber compounding” 1.5.3.1 Tensile and tear properties). Applicant’s claims and specification fail to set forth a methodology to measure tensile strength with sufficient detail to allow a skilled artisan to determine the scope of the claim with reasonable certainty. More specifically, the original disclosure does not contain details related to the measurement of tensile strength (e.g. extension rate, temperature, humidity, specimen geometry, pretest conditioning) which are necessary to render the claim definite. Such details are not “ancillary choices identified by the Examiner” which represent routine experimental considerations within ordinary skill; rather, they are critical variables for providing sufficient clarity and certainty to the claim. As understood by a skilled artisan, said variables would result in materially different tensile values and otherwise alter the determination of whether a product falls within the scope of the claims. Thus, said argument is noted but is not persuasive.
With regards to the “geometric mean slope” / “geometric mean modulus”, applicant does not present any arguments in response to the rejection. Thus, the rejection is maintained for reasons of record.
Conclusion
THIS ACTION IS MADE FINAL. Applicants are 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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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