DETAILED ACTION
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/886,561 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. The identified differences between instant claim 1 and the claim 1 in the ‘561 application is the discussion of the thermoplastic layer (which is not actually a structural limitation of the claimed assembly) and the raised configuration of the frame in the ‘561 application. Nevertheless, the instant claim is met by the attachment frames in the ‘561 application. Claim 2 of the instant application discusses order of steps, which is also not a limiting feature with respect to the claimed apparatus.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Liebmann (US 20080304971) in view of Bashor (US 6,332,769) and Pratte (US 20140110633).
As to claim 1, Liebmann teaches an assembly capable of forming a fiber reinforced thermoplastic part. The Liebmann assembly comprises a mold tool (101) with a mold surface (103) and a vacuum (105 and claim 3) configured to evacuate air from over the mold surface (Fig. 2, down arrows). Although not interpreted to be a claim limitation, Liebmann provides a thermoplastic material located over the mold tool ([0030]).
Liebmann is silent to (a) a plurality of attachment frames located around a perimeter of the mold surface and configured to form an airtight seal with a thermoplastic material located over the mold tool, and (b) a fiber dispensing assembly configured to deposit a plurality of fiber strips over the mold surface.
Regarding (a), Bashor teaches a plurality of attachment frames (22) located around a perimeter of a mold surface (13) which would form an airtight seal with a thermoplastic material (Abstract) placed on the mold. It would have been prima facie obvious to incorporate the railing/frames (22) from Bashor into Liebmann because Liebmann teaches/suggests a tape or mechanical locking mechanism for attaching the film to the edge of the mold, and Bashor provides a vacuum hole or port (Figs. 3-4, item 59) that the ordinary artisan would have recognized to be an obvious interchangeable substitute for the tape or mechanical locking mechanism already taught by Liebmann. One of ordinary skill in the art could have substituted the railing/frames (22) for the tape or mechanical locking mechanism to provide a predictable fixing of the sheet to the mold and a rim which would assist in handling the Liebmann part.
Regarding (b) Pratte teaches a fiber dispensing assembly (AFP/ATL Lay-down roller 80). It would have been prima facie obvious to incorporate the Pratte fiber dispensing assembly into Liebmann because Liebmann teaches/suggests arranging a number of layers of fibre material ([0032]) and Pratte provides a device for arranging a number of layers of fibre material within the scope of the Liebmann teaching/suggestion. A reasonable expectation of success would be apparent in light of the similarity of the two references
As to claims 2 and 3, Liebmann teaches an infrared heater (203) which is capable of heating to the softening temperature of the Liebmann film ([0029]), even though the film is not interpreted to be a structural limitation of the apparatus. Even though Liebmann expressly teaches only one infrared heater, providing the heat using a plurality of heater units would have been obvious as a simple duplication of parts already disclosed in the prior art.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Liebmann (US 20080304971) in view of Bashor (US 6,332,769) and Pratte (US 20140110633), and further in view of De Mattia (US 20120234489). Liebmann, Bashor, and Pratte teach the subject matter of claim 2 (and claim 3) above under 35 U.S.C. 103. This rejection contains an additional rejection of claim 3 in addition to a rejection of claim 4.
As to claims 3 and 4, Liebmann is silent to a plurality of heater units spaced substantially equally from the mold surface.
However, De Mattia teaches heating with IR heating elements (18 or 26) with a mold and the heating elements are depicted as spaced substantially equally from the mold surface (Fig. 2B, for example)
It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the De Mattia heating elements into the Liebmann mold because Liebmann teaches/suggests an infrared heating element ([0029]) and De Mattia provides heating elements for heating within the scope of the Liebmann teaching/suggestion, with a reasonable expectation of success evident from the fact that the references both recite infrared heaters. Alternatively, one of ordinary skill in the art would have recognized De Mattia’s IR heating elements to be an obvious interchangeable substitute for the Liebmann infrared heating element. Since both references recite infrared heating elements, the result of the substitution (IR heating element following mold surface versus unknown configuration IR heating element) would have been a predictable heating effect.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Liebmann (US 20080304971) in view of Bashor (US 6,332,769) and Pratte (US 20140110633), and further in view of Grimmer (US 7,550,103). Liebmann, Bashor, and Pratte teach the subject matter of claim 2 (and claim 3) above under 35 U.S.C. 103. This rejection contains an additional rejection of claim 3 in addition to a rejection of claim 4.
As to claims 3 and 4, Liebmann is silent to a plurality of heater units spaced substantially equally from the mold surface.
However, Grimmer teaches that a mold can be heated by IR heating elements (14) which are contoured to follow the mold’s surface spaced off by a distance to provide uniform heat (6:41-45).
It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Grimmer contoured IR heating elements into the Liebmann mold because Liebmann teaches/suggests an infrared heating element ([0029]) and Grimmer provides heating elements for heating within the scope of the Liebmann teaching/suggestion, with a reasonable expectation of success evident from the fact that the references both recite infrared heaters. Alternatively, one of ordinary skill in the art would have recognized Grimmer’s IR heating elements to be an obvious interchangeable substitute for the Liebmann infrared heating element. Since both references recite infrared heating elements, the result of the substitution (contoured IR heating element versus unknown configuration IR heating element) would have been a predictable heating effect.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J DANIELS whose telephone number is (313)446-4826. The examiner can normally be reached Monday-Friday, 8:30-5:00 pm.
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/MATTHEW J DANIELS/ Primary Examiner, Art Unit 1742