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 .
Election/Restrictions
Claims 10-15 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 5, 2026.
Applicant’s election without traverse of claims 1-9 and 16-18 in the reply filed on August 5, 2026 is acknowledged.
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.
Claim(s) 1-3 and 5-6 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by US Pub No. 2009/0305127 to Miller.
Regarding Claims 1-3 and 5-6
Miller teaches a reinforced elastomeric article comprising a layer of film comprising a microporous matrix of UHMWPE compounded with a siliceous filler such as silica in an amount of between 55 and 80 percent (Miller, abstract, paragraph [0008], [0021]-[0022], [0030] and [0034]). Miller teaches that the porosity is between 50 and 75% which is within the range of between 35 and 95% (Id.).
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.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller as applied to claims 1-3 and 5-6 above.
Regarding Claim 18
Regarding the limitations of the film being made by the claimed process, this limitation is a product-by-process limitation. Absent a showing to the contrary, it is Examiner's position that the article of the applied prior art is identical to or only slightly different than the claimed article. 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. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Claim(s) 1-9 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP-3,591,259 to Murschel in view of US Pub No. 2002/0187869 to Martin.
Regarding Claims 1-9 and 16-18
Murschel teaches a reinforced elastomeric article comprising a layer of film comprising a microporous matrix of UHMWPE having a molecular weight above 3 million and a porosity between 30 and 90%, wherein the form of the elastomeric article is a V-ribbed belt wherein the film layer is applied to the rib surfaces and/or the backside of the belt (Murschel, abstract, paragraph [0029], [0034], [0059]). Murschel does not appear to teach the inclusion of siliceous filler. However, Martin teaches a belt comprising a reinforcing filler such as silica in an amount of between 25 to 250 phr (equivalent to between 0.2 and 71%) (Martin, abstract, paragraph [0065]). Martin teaches that this inclusion preserves the heat stability of the film while improving the tear strength and dynamic properties (Id.). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the reinforced elastomeric article of Murschel and to include the reinforcing filler such as silica as taught by Martin, motivated by the desire to form a conventional reinforced elastomeric article having improved strength and durability (Id.).
Regarding Claim 4
As set forth above, The prior art combination teaches that the UHMWPE possesses a molecular weight above 3 million, but does not specify that the UHMWPE is necessarily linear (Murschel). Given there are only three choices linear, branched or cross-linked, it would have been obvious to the person having ordinary skill in the art to choose a linear UHMWPE because it involves nothing more than choosing from a finite number of choices (3) with a reasonable expectation of success.
Regarding Claims 9 and 16
The prior art combination teaches that the back of the belt can have a porous coating and/or the structure may include at least two layered materials wherein both are porous, which would result in the claimed structure of the film layer being embedded within (Murschel, paragraph [0040]-[0044]). The prior art combination does not specify that the porous coating is the same as the porous coating applied to the surface of the ribs. However, it would have been obvious to one of ordinary skill in the art to apply as the porous coating on the back of the belt, the same porous coating utilized to coat the opposite side of the melt, motivated by the desire to form a conventional porous coated v-belt having improved uniformity in materials, physical and chemical properties.
Regarding Claim 18
Regarding the limitations of the film being made by the claimed process, this limitation is a product-by-process limitation. Absent a showing to the contrary, it is Examiner's position that the article of the applied prior art is identical to or only slightly different than the claimed article. 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. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINCENT A TATESURE whose telephone number is (571)272-5198. The examiner can normally be reached Monday-Friday 7:30AM-4PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Chriss can be reached at 5712727783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786
