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 Objections
Claims 1-8 are objected to because of the following informalities:
in claim 1, line 11 delete “frame material (4)” and insert therein - - frame material - - for consistency; and
in claim 4, line 1 delete “whreein” and insert therein - - wherein - - for clarity.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “electric resistance welding of elements made of composites… …by means of a heating element… …wherein the heating element is the implant according to claim 1” in claim 7.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-8 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.
Regarding claims 1 and 7, the phrase “in particular” appears to set forth a preference and renders each claim indefinite because it is unclear whether the limitation(s) (“reinforced with conductive fibres”) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is suggested to overcome this rejection to delete the phrase if the limitation is intended to be part of the claimed invention or to delete the phrase and limitation if the limitation is not intended to be part of the claimed invention. For purposes of examination the phrase is not considered part of the claimed invention.
Claims 1 and 7 recite the limitation “electric resistance welding of elements made of composites, with a frame made of thermoplastic materials, in particular reinforced with conductive fibres” in line 1. The limitation is unclear and confusing as are the elements made of composites intended as reinforced with conductive fibres or are the frame made of thermoplastic materials (see further the rejection of “in particular” above)? The instant specification (see page 1, lines 5-11) describes the elements made of composites as that reinforced with conductive fibres. In the event the limitation (“reinforced with conductive fibres”) is intended to be part of the claimed invention it is suggested to delete “electric resistance welding of elements made of composites, with a frame made of thermoplastic materials, in particular reinforced with conductive fibres” and insert therein - - electric resistance welding of elements made of composites reinforced with conductive fibres, with a frame made of thermoplastic materials - - to overcome this rejection.
Claim 1 recites the limitation “the upper layer of the frame material” in line 10. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the upper layer of the frame material” and insert therein - - the top layer of the frame material - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 1 recites the limitation “the lower layer of the frame material” in line 12. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the lower layer of the frame material” and insert therein - - the bottom layer of the frame material - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 1 recites the limitation “for placing between the welded elements” in line 14. The limitation “the welded elements” is unclear and confusing as the elements are not yet welded until after the placing. It is suggested to delete “for placing between the welded elements” and insert therein - - for placing between the elements to be welded - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Regarding claim 2, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) (“preferably of stainless steel”) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is suggested to overcome the rejection to delete the phrase if the limitation is intended to be part of the claimed invention or to delete the phrase and limitation if the limitation is not intended to be part of the claimed invention. For purposes of examination the phrase is not considered part of the claimed invention.
Claim 4 recites the limitation “the terminals” in line 3. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the terminals” and insert therein - - terminals - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 5 recites the limitation “the processing temperature” in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the processing temperature” and insert therein - - a processing temperature - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 7 recites the limitation “a heating element placed between the welded elements” in line 3 and “Placing the heating element between the welded elements” in line 5 and “Pressing the welded elements with the heating element between them” in line 7. The limitation “the welded elements” is unclear and confusing as the elements are not yet welded until after the placing and pressing steps. It is suggested to delete “a heating element placed between the welded elements” and insert therein - - a heating element placed between the elements to be welded - - and to delete “Placing the heating element between the welded elements” and insert therein - - Placing the heating element between the elements to be welded - - and to delete “Pressing the welded elements with the heating element between them” and insert therein - - Pressing the elements to be welded with the heating element between them - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 7 recites the limitation “the processing temperature” in line 10. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the processing temperature” and insert therein - - a processing temperature - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claims 7 and 8 each recite the limitation “processing temperature of the frame material of the welded elements”. The limitation “of the welded elements” is unclear and confusing as the frame material is a separate material from the welded elements and not of the welded elements but is of the heating element. It is suggested to delete “processing temperature of the frame material of the welded elements” and insert therein - - processing temperature of the frame material of the heating element - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
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 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (CN 104270840 and see also the machine translation).
Regarding claims 1 and 4, Liu (Figures 2 and 3 and see Paragraphs 0009, 0014, 0018, 0021, 0049-0057, 0059, and 0068 and the Embodiments/Examples of the machine translation) discloses an implant with a frame made of thermoplastic materials in the form of a flat multilayered structure which has an upper and a lower surface, and comprising (it being noted comprising is inclusive or open-ended and does not exclude additional, unrecited elements or method steps see MPEP 2111.03) the following layers: a) An electrically resistant layer (conductive core 1), which has the form of a flat sheet with openings (apertures) made of a conductive material; b) At least two additional layers made of the frame material (auxiliary resin layer 3’), one of which covers the electrically resistant layer from the top, and the other one from the bottom; c) At least two porous insulating layers made of an electrically nonconductive material (insulating layer 2 of glass fiber felt, glass fiber cloth, or a combination thereof to be impregnated with frame material and considered porous), one of which along with a resin layer (3) covers the implant from the top, contacting the top layer of the frame material, and the other one along with another resin layer (3) covers the implant from the bottom, contacting the bottom layer of the frame material wherein the layers are merged with each other in the form of a flat, multilayered inset for placing between the elements to be welded, and in that the electrically resistant layer has at least two electrical connections (uncovered ends of the electrically resistant layer 1 and regarding claim 4 the electrically resistant layer has at least two exposed areas, not covered with other layers, capable of for connecting terminals of the source of electrical current) capable of for connecting a source of electrical current.
As to the limitations in claim 1 of “for electric resistance welding of elements made of composites” and “in particular reinforced with conductive fibres”, claims 1-6 are directed to a product/apparatus, i.e. an implant. These limitations are functional limitations directed to the intended use of the implant. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on (see MPEP 2114). Liu teaches the implant comprising all of the structural limitations of the claim as set forth above which structure is capable of “for electric resistance welding of elements made of composites” and “in particular reinforced with conductive fibres” by placing the implant between elements made of composites (in particular reinforced with conductive fibres see the 35 U.S.C. 112(b) rejection above) and supplying electrical current to the implant to electric resistance weld the elements.
Regarding claim 2, Liu (Paragraphs 0008 and 0018) teaches the electrically resistant layer is made of metal(, such as stainless steel wire see the 35 U.S.C. 112(b) rejection above).
Regarding claim 3, Liu (Paragraph 0008) teaches the electrically resistant layer in the form of a mesh.
Regarding claim 5, Liu teaches the layers are merged with each other by pressing in a processing temperature of the frame material above a melting temperature of the frame material including in a range of 50°C to 300°C (Paragraph 0034 and for example processing temperature of 230°C, etc. set forth as exemplary see the embodiments/examples). However, as noted above claims 1-6 are directed to a product/apparatus, i.e. an implant. These limitations are directed to the process of forming the product and are product-by-process limitations. 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. The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. 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 (see Liu described above in full detail), although as may have been produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product (see MPEP 2113).
Regarding claim 6, Liu teaches the layers of the frame material are made of Polyetheretherketone (PEEK) or Polyaryletherketone (PAEK) or Polyphenylene sulphide (PPS) (Paragraphs 0021 and 0059 of the machine translation).
Claims 1, 2, and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacaruso et al. (U.S. Patent 5,389,184).
Regarding claim 1, Jacaruso (Figures 3a, 3b, and 4 and Column 2, lines 45-67 and Column 5, lines 30-66 and Column 6, lines 4-27 and 53-65) discloses an implant with a frame made of thermoplastic materials in the form of a flat multilayered structure which has an upper and a lower surface, and comprising the following layers: a) An electrically resistant layer, which has the form of a flat sheet (resistance heating material 24) with openings (open areas 31), made of a conductive material; b) At least two porous insulating layers (layer of electrical insulation 25 having voids or air pockets and permitting thermoplastic material to pass through) made of an electrically nonconductive material (to prevent short circuits), one of which covers the electrically resistant layer from the top, and the other one from the bottom; c) At least two additional layers made of the frame material (thermoplastic adhesive 26), one of which covers the implant from the top, contacting the top porous insulating layer, and the other one covers the implant from the bottom, contacting the bottom porous insulating layer wherein the layers are merged with each other in the form of a flat, multilayered inset for placing between the elements to be welded, and in that the electrically resistant layer has at least two electrical connections (pair of electrical leads 28) capable of for connecting a source of electrical current.
As to the limitations in claim 1 of “b) At least two additional layers made of the frame material, one of which covers the electrically resistant layer from the top, and the other one from the bottom; c) At least two porous insulating layers made of an electrically nonconductive material, one of which covers the implant from the top, contacting the upper layer of the frame material (4), and the other one covers the implant from the bottom, contacting the lower layer of the frame material; wherein said layers are merged with each other”, claim 1 is directed to a product/apparatus, i.e. an implant, wherein these limitations directed to layers merged with each other are directed to the process of forming the product, i.e. product-by-process limitations (see MPEP 2113 as discussed above), so that 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 nonobvious difference between the claimed product and the prior art product. Although Jacaruso teaches a reverse order of the at least two porous insulating layers and the at least two additional layers of the frame material prior to merging these layers with each other because these layers are like that in the instant invention merged with each other (and including Jacaruso teaches during the merging the thermoplastic material of each frame material passes through each porous insulating layer to embed the electrically resistant layer in the thermoplastic material (Column 2, lines 45-48 and Column 5, lines 56-59 and Column 6, lines 21-24) which merging is like that in the instant invention wherein merging the thermoplastic material of each frame material results in supersaturation of the porous insulating layers see Page 4, lines 15-19 of the instant specification) the implant taught by Jacaruso appears then to be the same as that of the claimed product.
As to the limitations in claim 1 of “for electric resistance welding of elements made of composites” and “in particular reinforced with conductive fibres”, claim 1 is directed to a product/apparatus. These limitations are functional limitations directed to the intended use of the implant (see MPEP 2114 as discussed above) wherein Jacaruso teaches the implant comprising all of the structural limitations of the claim as set forth above which structure is capable of “for electric resistance welding of elements made of composites” and “in particular reinforced with conductive fibres” by placing the implant between elements made of composites (in particular reinforced with conductive fibres see the 35 U.S.C. 112(b) rejection above) and supplying electrical current to the implant to electric resistance weld the elements.
Regarding claim 2, Jacaruso (Column 5, lines 63-66) teaches the electrically resistant layer is made of metal (, such as stainless steel see the 35 U.S.C. 112(b) rejection above).
Regarding claim 4, Jacaruso teaches the electrically resistant layer has at least two exposed areas (pair of electrical leads 28), not covered with other layers, capable of for connecting terminals of a source of electrical current.
Regarding claim 5, Jacaruso does not expressly teach the layers are merged with each other by pressing in a processing temperature of the frame material in a range from 50°C to 300°C (it being noted the fame material has a processing temperature in such a range see Column 4, lines 28-34). However, as noted above claim 5 is directed to a product/apparatus, i.e. an implant, wherein these limitations are directed to the process of forming the product, i.e. product-by-process limitations (see MPEP 2113 as discussed above), so that 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 (see Jacaruso described above in full detail), although as may have been produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product.
Regarding claim 6, Jacaruso teaches the layers of the frame material are made of Polyetheretherketone (PEEK) (Column 4, lines 28-34 and Column 6, lines 53-68 and Column 7, lines 45-56).
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.
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.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of Smith et al. (U.S. Patent Application Publication 2004/0055699).
Regarding claim 7, Liu (Figures 2 and 3 and see Paragraphs 0009, 0014, 0018, 0021, 0049-0057, 0059, and 0068 and the Embodiments/Examples of the machine translation and see further in particular Embodiment/Example 8) discloses a method of electric resistance welding of elements made of composites (thermoplastic composite material), with a frame made of thermoplastic materials, in particular the composites reinforced with conductive fibres (such as carbon fibre see Embodiment 8 and the 35 U.S.C. 112(b) rejection above), by means of a heating element (the implant of Figures 2 or 3) placed between the elements to be welded, comprising the steps of: a) Placing the heating element between the elements to be welded; b) Connecting an electrical current power supply (DC power supply) to the heating element; c) Pressing the elements to be welded with the heating element between them; d) Activating the electrical current power supply of the heating element; and e) Deactivating (turning off) the electrical current power supply of the heating element upon reaching a processing temperature of the frame material of the heating element; wherein the heating element is the implant according to claim 1.
As to the limitation in claim 7 of “f) Cutting the parts of the heating element protruding beyond the outline of the welded elements”, Liu does not expressly teach cutting parts of the heating element protruding beyond the outline of the welded elements. It is well understood by one of ordinary skill in the art to trim (i.e. to remove by cutting) parts of the heating element protruding beyond the outline of the welded elements used to connect to the power supply as a finishing step as taught by Smith (Figures 2-4 and Paragraphs 0027, 0032, 0033, 0044, and 0047). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further include in Liu a step of f) Cutting parts of the heating element protruding beyond the outline of the welded elements as trimming parts used to connect to the power supply is well understood by one of ordinary skill in the art to remove such parts as evidenced by Smith.
Regarding claim 8, Liu teaches the processing temperature of the frame material melts the frame material (melting connection technology field) wherein exemplary processing temperatures include 230°C (Embodiment 1), 225 to 235°C (Embodiment 2), etc. so that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the processing temperature of the frame material of the heating element in the method taught by Liu as modified by Smith ranges from 50°C to 300°C as include the predictable temperatures disclosed by Liu, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP 2144.05).
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Jacaruso in view of Smith.
Regarding claims 1, 2, and 4-6, Jacaruso is described above in full detail not repeated here for brevity.
As to the limitations in claim 1 of “b) At least two additional layers made of the frame material, one of which covers the electrically resistant layer from the top, and the other one from the bottom; c) At least two porous insulating layers made of an electrically nonconductive material, one of which covers the implant from the top, contacting the upper layer of the frame material (4), and the other one covers the implant from the bottom, contacting the lower layer of the frame material; wherein said layers are merged with each other”, Jacaruso is considered to anticipate the limitations as set forth above. The following is an alternative rejection made for claims 1, 2, and 4-6 in the event it is somehow considered Jacaruso does not necessarily anticipate the limitations. Jacaruso teaches placing a porous insulating layer on each side of the electrically resistant layer and then placing an additional layer made of the frame material on each porous insulating layer prior to merging the layers together, i.e. Jacaruso teaches b) At least two porous insulating layers (layer of electrical insulation 25 having voids or air pockets and permitting thermoplastic material to pass through) made of an electrically nonconductive material (to prevent short circuits), one of which covers the electrically resistant layer from the top, and the other one from the bottom and c) At least two additional layers made of the frame material (thermoplastic adhesive 26), one of which covers the implant from the top, contacting the top porous insulating layer, and the other one covers the implant from the bottom, contacting the bottom porous insulating layer; wherein the layers are merged with each other. Jacaruso does not teach away from placing the additional layer of the frame material on each side of the electrically resistant layer and then placing the porous insulating layer on each additional layer of the frame material prior to merging the layers together (i.e. reversing the order of the additional layers made of the frame material and the at least two porous insulating layers). Jacaruso teaches the porous insulating layers prevent short circuits and the additional layers made of the frame material adhere the merged layers of the implant and later the implant to elements made of composites. It is known to one of ordinary skill in the same art to place an adhesive layer (adhesive 11) on each side of an electrically resistant layer (fabric heater 20) and then place an insulating layer (insulating material 12) on each adhesive layer similarly achieves both the required prevention of short circuits and adhering the merged layers together and to elements made of composites (substrates 10) as evidenced by Smith (Figure 5 and Paragraph 0048). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the implant taught by Jacaruso is formed by reversing the order of the at least two additional layers made of the frame material and the at least two porous insulating layers, i.e. b) At least two additional layers made of the frame material, one of which covers the electrically resistant layer from the top, and the other one from the bottom; c) At least two porous insulating layers made of an electrically nonconductive material, one of which covers the implant from the top, contacting the top layer of the frame material, and the other one covers the implant from the bottom, contacting the bottom layer of the frame material; wherein the layers are merged with each other, prior to the layers are merged with each other wherein rearrangement of parts is not only prima facie obvious wherein the rearrangement does not modify the operation of the implant (see MPEP 2144.04 and “C. Rearrangement of Parts”), i.e. either order of layers results in the same layers are merged with each other, but as a simple substitution of one known order for the layers for another to yield predictable results as evidenced by Smith.
Regarding claim 3, Jacaruso (and alternatively Jacaruso as modified by Smith regarding claim 1 above) teaches the electrically resistant layer has the form of a flat sheet (resistance heating material 24) with openings (open areas 31). Jacaruso is not limited to any particular form of the sheet (Column 5, line 60 to Column 6, line 3). It is well understood by one of ordinary skill in the art conventional and predictable form of the flat sheet of the electrically resistant layer is a fabric as evidenced by Smith (Paragraph 0015). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the electrically resistant layer taught by Jacaruso (and Jacaruso as modified by Smith) is made in the form of a fabric as a simple substitution of one known form for another to yield predictable results as evidenced by Smith.
Regarding claim 7, Jacaruso (and alternatively Jacaruso as modified by Smith regarding claim 1 above) teach a method of electric resistance welding of elements made of composites (adhesive strips 10 and 10’), with a frame made of thermoplastic materials, in particular the composites reinforced with conductive fibres (see Column 6, lines 4-8 of Jacaruso and the 35 U.S.C. 112(b) rejection above), by means of a heating element (heating element 22) placed between the elements to be welded, comprising the steps of: a) Placing the heating element between the elements to be welded; b) Connecting an electrical current power supply (electrical power supply 30) to the heating element; c) Pressing the elements to be welded with the heating element between them; d) Activating the electrical current power supply of the heating element; and e) Deactivating the electrical current power supply of the heating element upon reaching a processing temperature of the frame material of the heating element (melting temperature of PEEK for approximately 15 seconds); wherein the heating element is the implant according to claim 1 (Figure 4 and Column 6, line 53 to Column 7, line 7 of Jacaruso).
As to the limitation in claim 7 of “f) Cutting the parts of the heating element protruding beyond the outline of the welded elements”, Jacaruso does not expressly teach cutting parts of the heating element protruding beyond the outline of the welded elements. Jacaruso teaches electrical leads of the heating element protrude beyond the outline of the welded elements and connect the heating element to the power supply (30) (as shown in Figures 3a and 4 and including Jacaruso does not expressly teach how the leads are disconnected from the power supply). It is well understood by one of ordinary skill in the art to trim (i.e. to remove by cutting) parts of the heating element protruding beyond the outline of the welded elements as taught by Smith (described above in full detail). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further include in Jacaruso (and Jacaruso as modified by Smith) a step of f) Cutting parts of the heating element protruding beyond the outline of the welded elements as trimming parts is well understood by one of ordinary skill in the art as evidenced by Smith such as at least to disconnect the electrical current power supply.
Regarding claim 8, Jacaruso teaches the processing temperature of the frame material melts the frame material wherein exemplary processing temperatures include 480 oF (Column 4, lines 28-34 and Column 6, line 53 to Column 7, line 7) so that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the processing temperature of the frame material of the heating element in the method taught by Jacaruso as modified by Smith ranges from 50°C to 300°C as include the predictable temperatures disclosed by Jacaruso, it being noted in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP 2144.05).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Liu ‘570 et al. (U.S. Patent Application Publication 2019/0232570) disclosing a preformed implant (EAB mechanism) for electric resistance welding of elements made of composites reinforced with conductive fibers including an electrically resistant layer (conductive layer 106) and layers (first and second adhesive layers 102, 104) made of a frame material made of thermoplastic materials (Figures 1 and 6 and Paragraphs 0045-0047, 0054, and 0056).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN L GOFF II whose telephone number is (571)272-1216. The examiner can normally be reached 7:30 AM - 4:00 PM EST Monday - Friday.
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746