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 Interpretation
The claims recite an apparatus with structural limitations and material worked upon by the apparatus. While there is nothing wrong with claiming the material worked upon, such limitations are only given weight to the extent that they limit the structure of the claimed apparatus. See MPEP 2115. See In re Rishoi (94 USPQ 71), In re Smith (3 USPQ 315), and In re Young (25 USPQ 69).
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
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, 3, 4 and 7 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.
Claim 1 “the physical property including at least one of “. It is not clear to which of the previously recited physical properties “the physical property” refers.
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(s) 1, 3, 4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hyde et al. (US 5257478) in view of Roy et al. (US 2006/0276109).
**The substrate and resin are material to worked upon and do not further limit the structure of the device. See above.**
As to claims 1 and 3, Hyde discloses a laminating device (fig 1) comprising: opposing boards 20/24 and configured to pressurize a laminate including a substrate layer and a resin layer between the opposing boards at a predetermined temperature, wherein
at least one of the boards includes an elastic sheet 21/22 (C5, L44-51 figs, 1, 4, 8) that forms a pressurizing surface 22b, a thickness of an outer peripheral part of the elastic sheet is either same or larger than a thickness of a central part of the elastic sheet (figs 1, 4, 8), and a physical property for transmitting a pressing force to a part of the elastic sheet that is opposed to at least an outer peripheral end of the laminate when pressure is applied is smaller than a physical property for transmitting a pressing force to a part of the elastic sheet that is opposed to a central part of the laminate in order to prevent the resin layer from flowing out of a side portion of the laminate when the pressure is applied (figs 1, 4, 8, see fig 4 at D3/60 location, which is capable of preventing resin outflow, C4, L36 – C6, L24; C8, 25-41).
Hyde does not disclose the physical property includes at least one of an elastic modulus and hardness of the elastic sheet.
Roy discloses a pressing sheet wherein an elastic modulus of a part of the elastic sheet that is opposed to at least an outer peripheral part of the laminate is smaller than an elastic modulus of a part of the elastic sheet that is opposed to a central part of the laminate (para 140, 154, 210-215 233/234). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Hyde such that the elastic modulus of a part of the elastic sheet that is opposed to at least an outer peripheral part of the laminate is smaller than an elastic modulus of a part of the elastic sheet that is opposed to a central part of the laminate as taught by Roy above as such promote uniform pressure application (para 140).
As to claim 4, Roy discloses that it is known to vary the heat transfer properties of the sheet along the radius and that the heat transfer properties effect the surface uniformities and defects (para 11, 22, 77, 99). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Hyde such that a heat transfer property of a part of the elastic sheet that is opposed to at least an outer peripheral part of the laminate is less than a heat transfer property of a part of the elastic sheet that is opposed to a central part of the laminate as taught by Roy above as such would have been achieved by performing routine experimentation to yield only the expected results.
As to claim 7, It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Hyde such that peripheral part of the elastic sheet has a hardness lower than that in a central part of the elastic sheet (para 136, fig 8) as taught by Roy above as such promotes even pressure application.
Response to Arguments
Applicant's arguments filed 2/17/26 have been fully considered but are moot in view of the new ground(s) of rejection.
Conclusion
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 CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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