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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed “ temperature adjustment device that adjusts an outer peripheral surface of the lower forming roller to a temperature higher than that of an outer peripheral surface of the upper forming roller” in claim 3 and the claimed “controller” in claims 4-9 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because i) the abstract comprises implied phraseology such as “apparatus (10) of an embodiment” and ii) the abstract describes an apparatus already known in the art (See prior art rejections below). A correction is required. See MPEP § 608.01 (b) for guidelines for the preparation of patent abstracts.
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 do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a temperature adjustment device that adjusts an outer peripheral surface of the lower forming roller to a temperature higher than that of an outer peripheral surface of the upper forming roller” in claim 3 with a controllable heating element near the lower forming roller as the corresponding structure disclosed at least in [0039] of Applicant’s published application (US 20250018635).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Examiner wishes to point out to applicant that claim(s) 1-9 is/are directed towards an apparatus and as such will be examined under the following conditions. The process/manner of using the apparatus and/or the material worked upon by the apparatus is/are viewed as recitation(s) of intended use and is/are given patentable weight only to the extent that structure is added to the claimed apparatus (See MPEP 2114 II and 2115 for further details).
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(s) 4-9 is/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 4 recites the limitation “a controller that controls the rubber member molding apparatus” which is indefinite. The language states a controlling function/result without setting forth well-defined boundaries of the invention, does not provide a clear cut indication of the scope of the subject matter covered by the claim, and one of ordinary skill in the art would know from the language what structure is encompassed by the claim. It is unclear which elements of the rubber member molding apparatus the controller is configured to control. It is unclear how the controller controls the molding apparatus. According to prior art and [0041] and [0061-0062] of Applicant’s specification, the controller is configured to control the actuators such as the screw and gear pump of the extruding machine and the motors rotating the forming rollers and is incapable of controlling directly the rubber member molding apparatus as claimed. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 4 recites the limitation “wherein under control of the controller, the long rubber member is extruded forward from the extruding machine, the long rubber member extruded from the extruding machine is sandwiched between the upper and lower forming rollers, and the long rubber member moved forward after having passed through the gap between the upper and lower forming rollers is attached to the molding drum and turns into the cylindrical rubber member for the tire” which is indefinite. The language merely states the results of controlling without setting forth well-defined boundaries of the invention, does not provide a clear cut indication of the scope of the subject matter covered by the claim, and one of ordinary skill in the art would know from the language what structure is encompassed by the claim. It is unclear which and how the elements of the rubber member molding apparatus are controlled by the controller to achieve the claimed results. According to [0041] and [0061-0062] of Applicant’s specification, the controller is configured to control the actuators such as the screw and gear pump of the extruding machine, the motors/driver rotating the forming rollers, and the motor/driver rotating the molding drum in a specific manner to obtain the claimed results. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 4 recites the limitation “the long rubber member is cut at an opening end of a nozzle provided at the extruding machine” which is indefinite. The language states a cutting result without setting forth well-defined boundaries of the invention, does not provide a clear cut indication of the scope of the subject matter covered by the claim, and one of ordinary skill in the art would know from the language what structure is encompassed by the claim. It unclear what structure in the claimed apparatus yields the claimed cutting result. Additionally, according to at least paragraphs [0061-0062] of Applicant’s published application, a specific operation of the gear pump of the extruder machine and specific operation/function of motors of the forming rollers yields the cutting result.
Claim(s) 5-6 is/are rejected as being dependent from claim 4 and therefor including all the limitation thereof.
Claim 5 recites the limitation “the long rubber member is cut in such a manner that the controller stops extrusion of the long rubber member from the extruding machine” which is indefinite. It unclear how the controller stops extrusion. It unclear how the stopping of extrusion via the controller by itself yields the claimed cutting result. According to at least paragraphs [0061-0062] and claim 6 of Applicant’s published application, a stopping operation of the extruder machine by itself is incapable of yielding the claimed cutting result. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 6 recites the limitation “under the control of the controller, the upper and lower forming rollers rotate in directions of moving the long rubber member sandwiched therebetween forward” which is indefinite. It unclear how the controller directly controls rotation and direction of rotation of the upper and lower forming rollers as claimed. According to at least paragraphs [0041] of Applicant’s published application, motors are responsible for controlling rotation and direction of rotation of the upper and lower forming rollers. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 7 recites the limitation “a controller that controls the rubber member molding apparatus” which is indefinite. The language states a controlling function/result without setting forth well-defined boundaries of the invention, does not provide a clear cut indication of the scope of the subject matter covered by the claim, and one of ordinary skill in the art would know from the language what structure is encompassed by the claim. It is unclear which elements of the rubber member molding apparatus the controller is configured to control. It is unclear how the controller controls the molding apparatus. According to prior art and [0041] and [0061-0062] of Applicant’s specification, the controller is configured to control the actuators such as the screw and gear pump of the extruding machine and the motors rotating the forming rollers and is incapable of controlling directly the rubber member molding apparatus as claimed. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 7 recites the limitation “the controller performs such control that a leading portion of the long rubber member is attached to the molding drum and the long rubber member is wound around the molding drum and turns into a cylindrical rubber member for a tire by rotating the molding drum while the supplier supplies the long rubber member” which is indefinite. The language merely states the results of controlling without setting forth well-defined boundaries of the invention. Is the claimed “a cylindrical rubber member for a tire” in claim 7 same or different from the claimed “a cylindrical rubber member for a tire” in claim 1? It is unclear which element rotates the molding drum and how the controller controls the rotation of the molding drum to achieve the claimed results. It is also unclear which element actuates the supplier and how the controller controls the supplier to achieve the claimed supplying function/result. According to [0041] and [0043] of Applicant’s published application, the controller is configured to control the actuators such as the motors/driver rotating the forming rollers (i.e. the supplier) and a motor/driver rotating the molding drum. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 7 recites the limitation “the leading portion is in a tapered shape having a tip end” which is indefinite. It unclear how the leading portion obtains a tapered shape. It is unclear how the shape of the leading portion of the material worked upon by the apparatus adds structure to the claimed apparatus. According to at least paragraph [0052] of Applicant’s published application, a shape of the gap between the upper and lower forming rollers is configured to obtain a tapered shape having a tip end in the leading portion. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 7 recites the limitation “the controller performs such control that the tip end of the leading portion is moved closer to an outside in a drum axial direction with respect to a center position of the long rubber member in a width direction thereof by moving at least one of the supplier or the molding drum in the drum axial direction upon attaching of the leading portion” which is indefinite. The language merely states the results of controlling without setting forth well-defined boundaries of the invention. The scope of “such control” is indefinite. It is unclear how the controller controls the supplier. Are the rollers of the supplier rotating while moving in the drum axial direction? It is unclear how the controller controls the drum. Is the drum rotating while moving the drum in the drum axial direction? It is also unclear how the controller moves at least one of the supplier or the molding drum in the drum axial direction. According [0042] and Figs. 4-5 of Applicant’s published application, a movement device is need to enable the claimed moving. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 7 recites the limitation “the controller performs such control that a portion of the long rubber member overlapping with the leading portion in the drum axial direction is formed as an inclined portion inclined with respect to a drum circumferential direction by moving at least one of the supplier or the molding drum in the drum axial direction when the long rubber member is wound around a position overlapping with the leading portion in the drum axial direction and a portion of the long rubber member other than the inclined portion is wound in parallel with the drum circumferential direction” which is indefinite. The language merely states the results of controlling without setting forth well-defined boundaries of the invention. The scope of “such control” is indefinite. It is unclear how the controller controls the supplier while wounding the inclined portion and the parallel portion. Are the rollers of the supplier rotating while moving in the drum axial direction? It is unclear how the controller controls the drum while wounding the inclined portion and parallel portion. Is the drum rotating while moving the drum in the drum axial direction? According to [0060] of Applicant’s published application, the drum does not move in the drum axial direction during winding of the parallel portion. It is also unclear how the controller moves at least one of the supplier or the molding drum in the drum axial direction. According [0042] and Figs. 4-5 of Applicant’s published application, a movement device is needed in addition to the controller to enable the claimed moving. See MPEP §§ 2173.03 and 2173.05 (g).
Claim(s) 8-9 is/are rejected as being dependent from claim 7 and therefor including all the limitation thereof.
Claim 8 recites the limitation “the long rubber member extruded from the extruding machine passes through the gap formed between the upper and lower forming rollers, and the leading portion turns into a tapered shape accordingly” which is indefinite. Is the claimed “a tapered shape” in claim 8 same or different from the claimed “a tapered shape” in claim 7? It is unclear how the leading portion turns in to the tapered shape. The relationship between the gap and the tapered shape as claimed is vague. According to at least paragraph [0052] of Applicant’s published application, a shape of the gap between the upper and lower forming rollers is configured to obtain a tapered shape having a tip end in the leading portion. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 9 recites the limitation “the leading portion is in an isosceles triangular shape having a tip end” which is indefinite. Is the claimed “the leading portion is in an isosceles triangular shape having a tip end” in claim 9 same or different from the claimed “the leading portion is in a tapered shape having a tip end” in claim 7? It unclear how the leading portion obtains an isosceles triangular shape. It is unclear how the shape of the leading portion of the material worked upon by the apparatus adds structure to the claimed apparatus. According to at least paragraph [0052] of Applicant’s published application, a shape of the gap between the upper and lower forming rollers is configured to obtain the claimed shape having a tip end in the leading portion. See MPEP §§ 2173.03 and 2173.05 (g).
Claim 9 recites the limitation “the controller performs such control that the leading portion is deformed into a right triangular shape by moving at least one of the supplier or the molding drum in the drum axial direction and moving the tip end of the leading portion closer to the outside in the drum axial direction with respect to the center position of the long rubber member in the width direction thereof when the leading portion is attached to the molding drum” which is indefinite. The language merely states the results of controlling without setting forth well-defined boundaries of the invention. The scope of “such control” is indefinite. It is unclear how the controller controls the supplier while performing the deforming and attaching operations. Are the rollers of the supplier rotating while moving in the drum axial direction? It is unclear how the controller controls the drum while performing the deforming and attaching operations. Is the drum rotating while moving the drum in the drum axial direction? It is also unclear how the controller moves at least one of the supplier or the molding drum in the drum axial direction. According [0042] and Figs. 4-5 of Applicant’s published application, a movement device is needed in addition to the controller to enable the claimed moving. See MPEP §§ 2173.03 and 2173.05 (g).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lizuka (US 20010050134).
Regarding claim 1, Lizuka discloses a rubber member molding apparatus (molding apparatus of Fig. 10, P0047) comprising:
an extruding machine (60) that extrudes a long rubber member forward (extruder 60 extrudes ribbon 30R comprising rubber: P0047, Fig. 10);
upper and lower forming rollers (64, 65) that sandwich the long rubber member extruded from the extruding machine (P0047, 0049, Figs. 10-11); and
a molding drum (61) to which the long rubber member (30R) moved forward after having passed through a gap between the upper and lower forming rollers (64, 65) is attached and on which the long rubber member turns into a cylindrical rubber member (30) for a tire (P0047, Fig. 10),
wherein the upper forming roller is disposed forward of the lower forming roller (64 is clearly shown as being disposed forward 65: Figs. 10-11). Thus, Lizuka discloses a rubber member molding apparatus substantially as claimed by applicant.
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Regarding claim 2, Lizuka further discloses wherein outer peripheral surfaces of the upper and lower forming rollers (64, 65) are in such a relationship that the long rubber member (30R) having passed through the gap between the upper and lower forming rollers is attached to the outer peripheral surface of the upper forming roller (64: P0049, Figs. 10-11).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lizuka (US 20010050134) as applied to claim 1 above, and further in view of Wireman (US 3975126).
Regarding claim 3, Lizuka fails to disclose temperature adjustment device that adjusts an outer peripheral surface of the lower forming roller to a temperature higher than that of an outer peripheral surface of the upper forming roller.
In the same field of endeavor, rubber member molding apparatuses, Wireman discloses the technique of providing a temperature adjustment/control device (internal water circuit) that adjusts an outer peripheral surface of an upper/first forming roller (1a) to a temperature higher than that of an outer peripheral surface of a lower/desired forming roller (1b) for the benefit(s) of preventing adhesion of the rubber material to the hotter forming roller and ensuring adhesion of the rubber material to the lower/colder forming roller (C3, L55-67, Figs. 1-3). Based on the generic teachings of Wireman about the independent temperature control of the upper and lower rollers and the selection from the two rollers as a desired colder roller (C3, L1-25, C3, L55-67, claim 5, and claim 8), Wireman discloses/suggests to make the lower forming roller the hotter roller and the upper forming roller the colder roller.
Since Lizuka discloses/desires adherence of the rubber member to the outer peripheral surface of the upper forming roller (P0049, Figs. 10-11), it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the apparatus of Lizuka in view of Wireman by incorporating a temperature adjustment device that adjusts an outer peripheral surface of the lower forming roller to a temperature higher than that of an outer peripheral surface of the upper forming roller for the benefit(s) of yielding the predictable result(s) of preventing adhesion of the rubber material to the lower/hotter forming roller and ensuring adhesion of the rubber material to the upper/colder forming roller.
Note
Claims 4-9 cannot be evaluated with respect to prior art at this time because the Examiner cannot reasonably apprise the scope of the claimed invention and cannot make a proper comparison between the claims and the prior art due to the 112(b) issues explained above. Nevertheless, prior art relevant to the subject matter of claims 4-9 is made of record below.
Prior Art Made of Record
Nakatani (US 20220242024) discloses a relevant rubber member molding apparatus (P0021, Figs. 1-3), a relevant controller configured to control the rubber member molding apparatus (Fig. 4 and accompanying text), the controller capable of controlling breakage/cutting of the rubber member (P0034, 0050, 0052), and a relevant gap between upper and lower forming rollers configured to obtain a tapered or isosceles triangular shape (P0029-0030, Fig. 3, Figs. 6-10, and accompanying text).
Nishikawa (US 20150068667) discloses a relevant controller (3) for controlling winding, shaping, and attaching of a rubber strip to a molding drum by controlling rotation the molding drum and motion of the molding drum in a drum axial direction (P0034-0035, Fig. 1, and accompanying text). Nishikawa further discloses a relevant shaping and winding technique (P0035, Fig. 4).
Abe (US 20050183810) discloses a relevant controlling/cutting technique such that a long rubber member is cut at an opening end of a nozzle provided at the extruding machine by stopping extrusion of the long rubber member (P0045, Fig. 6).
Summer (US 4569711) discloses a relevant cutting means/technique such that a long rubber member is cut at an opening end of a nozzle provided at the extruding machine (C3, L15-22, Fig. 1).
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.
Claim 1 and 4-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 4-9 of copending Application No. 18/754792 alone or further in view of Lizuka (US 20010050134).
Regarding claims 1 and 4-9, claims 2 and 4-9 of the copending application explicitly disclose all the structural elements and functional limitations of the instant claims 1 and 4-9 with the exception of the limitation “wherein the upper forming roller is disposed forward of the lower forming roller”.
However, since claim 2 of the copending application discloses “the opening end is disposed forward of a back end of at least one of the upper and lower forming rollers”, it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the apparatus of the copending application by disposing the upper forming roller forward of the lower forming roller motivated by the desire to dispose the opening end forward of a back end of the upper forming roller.
Alternatively, in the same field of endeavor, rubber member molding apparatuses, Lizuka, as applied in the prior art rejection of claim 1 above, discloses the technique of disposing the upper forming roller forward of the lower forming roller for the benefit(s) of facilitating attachment/conveyance of the rubber member to the molding drum using the upper forming roller (See prior art rejection of claim 1 above).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the apparatus of the copending application in view of Lizuka by disposing the upper forming roller forward of the lower forming roller for the benefit(s) of facilitating attachment/conveyance of the rubber member to the molding drum using the upper forming roller.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERZI H MORENO HERNANDEZ whose telephone number is (571)272-0625. The examiner can normally be reached 1:00-10:00 PM PT.
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JERZI H. MORENO HERNANDEZ
Primary Examiner
Art Unit 1743
/JERZI H MORENO HERNANDEZ/Primary Examiner, Art Unit 1743