DETAILED ACTION
Claims 1-7 are pending as amended on 06/06/24,
claims 5-6 being withdrawn.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on January 23, 2026 is acknowledged; claims 5-6 are hereby withdrawn.
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.
Claim 2 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 pre-AIA the applicant regards as the invention. There is no clear antecedent basis for “the pressure”; appropriate correction is required. The claims also appear to be a literal translation from Japanese to English and should be generally reviewed to ensure proper grammar & clarity.
Claim Rejections - 35 USC § 102
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 1-4 & 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawahara et al., JP 2016-168845.
With regard to claim 1, Kawahara teaches a hot press capable of acting on a laminate, comprising two press ‘boards’ (20), at least one of which comprises a ‘buffer’ (1) between a pressing surface (22) and said board (throughout, e.g. abstract, [0029 & FIGS. 1-2]).
With regard to claims 2-3 & 7, said buffer may be thicker and/or stiffer in a peripheral region [0029], which therefore reduces buffering effect relative to a center.
With regard to claim 4, the amount of heat transfer through a thicker (as well as stiffer, i.e. denser) region would also be understood to be less.
Claims 1-4 & 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirashita et al., JP 07-245359.
With regard to claim 1, Hirashita teaches a hot press capable of acting on a laminate, comprising two press ‘boards’ (1/6), at least one of which comprises a ‘buffer’ (2) between a pressing surface (3) and said board (throughout, e.g. abstract, [0013 & FIG. 1]).
With regard to claims 2-3 & 7, said buffer may be stiffer in a peripheral region [0013], which therefore reduces buffering effect relative to a center.
With regard to claim 4, the amount of heat transfer through a stiffer (i.e. denser) elastic material region would also be understood to be less.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iketani et al., JP 03-236918.
With regard to claim 1, Iketani teaches a hot press capable of acting on a laminate, comprising two press ‘boards’, at least one of which comprises a ‘buffer’ between a pressing plate surface and said board (throughout, e.g. abstract, [0001 & FIGS. 1-2]).
With regard to claims 2-3, said buffer may be thicker in a peripheral region [Claim 1], which therefore reduces buffering effect relative to a center.
With regard to claim 4, the amount of heat transfer through a thicker region would also be understood to be less.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwata et al., JP 2021-062522.
With regard to claim 1, Iwata teaches a hot press capable of acting on a laminate, comprising two press ‘boards’ (4/6/7), at least one of which comprises a ‘buffer’ (9) between a pressing plate surface (2) and said board (throughout, e.g. abstract, [FIGS. 1-8]).
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 of this title, 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.
Claims 2-4 & 7 are rejected under 35 U.S.C. 103 as being unpatentable Iwata et al., JP 2021-062522.
The teachings of Iwata have been detailed above, and the prior art can modify the heat transfer through the buffer and press surface to be different in a peripheral region as compared to a central region, by precise control of the selected heater output in these regions (e.g. abstract, [FIGS. 2-5]). It would similarly have been prima facie obvious for one of ordinary skill to vary the material properties/densities/stiffness/etc of the intervening materials (i.e. the buffer) to achieve similar ends by alternative but well-known means with predictable success, thus meeting the claims.
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.
Claims 1-4 & 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4 & 7 of copending Application No. 18/713,692. Although the claims at issue are not identical, they are not patentably distinct from each other because despite minor differences in word choice, the claims overall have essentially the same scope, directed to a press with a buffer which is stiffer in a peripheral region. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner also notes US 20130126074 as relevant to the pending claims.
Conclusion
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/JOHN BLADES/
Examiner
Art Unit 1746
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
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