DETAILED CORRESPONDENCE
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
Applicant’s election of invention and/or species, and corresponding claims is acknowledged. The election has been made without traverse. Non-elected claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
The envelope and liquid is material worked upon. See specification at paragraph 34, e.g.,
Once a desired amount of insulation material 48 has been drawn into the envelope 49, the envelope 49 can be sealed closed to form the insulation package 46 at 112. The envelope 49 can be sealed in any suitable manner, non-limiting examples of which include sewing, adhesives, heat-sealing, etc.
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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) 1-16 and 21-23 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 pre-AIA the applicant regards as the invention.
In reference to claim 1, the limitation “wherein the inner mold liner and the outer mold shell are gas-permeable and permeable to the liquid” renders the claim indefinite because this limitation defines the structure of the apparatus on the basis of the material composition provided to the apparatus.
Whether infringement of the claim occurred would depend on the particular method of using the apparatus (i.e., whether a permeating liquid is used in a method of using the apparatus).
If an end user used the apparatus with a nonpermeating liquid, then they would not infringe because the above limitation would not be met, however no structural change would have occurred to the device. E.g., A mold made from generic LDPE filled with organic solvents will be permeable, but a mold made from generic LDPE filled with water will be impermeable.
This is an attempt to bridge more than one statutory class of invention and renders the claim indefinite1.
Note: Claims 2-16 and 21-23 are also rejected by virtue of their dependence on claim 1.
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 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 1-2 is/are rejected under 35 U.S.C. 102 as being unpatentable over Srihakulung (NPL 20122)
In reference to claim 1-2, Srihakulung discloses a structurally equivalent apparatus as claimed. See Fig 2 and illustrative mapping shown below:
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Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See references cited in applied prior art for further background. As a whole these references and appropriate secondary and tertiary references are believed sufficient to provide the skilled reader with the opportunity to learn about the technical background requisite to appreciate the body of knowledge needed to understand and communicate regarding the technology at issue.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Examiner has utilized USPTO approved search resources, such as EIC or external tools, beyond routine search tools and/or leveraged experts in the field. Examiner has cited and explained the relevance of prior art not used in rejections but pertinent to the claims or disclosure. Examiner has provided detailed search documentation through detailed Search Notes, such as annotated search results that identify which data sets were reviewed. When citing the prior art examiner has used annotations clearly in prior art rejections such as, using item-to-item matching to the prior art, pairing exact claim language to particular language used in the prior art, and/or clearly explaining examiner’s interpretation as to how a citation maps to claim language especially when there is not a one-to-one matching of terms.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 35 U.S.C. § 101 delineates four categories of statutory subject matter: “processes,” “machines,” “manufactures,” and “compositions of matter.” A claim is indefinite if it does not reasonably apprise those skilled in the art of the statutory class of invention the claim is directed to or if the claim attempts to bridge more than one statutory class of invention. See IPXL Holdings, 430 F.3d at 1384 (claim attempting to claim both a system and a method of using that system held indefinite); In re Rishoi, 197 F.2d 342, 345 (CCPA 1952) (“[T]here is no patentable combination between a device and the material upon which it works.”); In re Smith, 36 F.2d 302, 303 (CCPA 1929) (“It will be borne in mind that it has been long established that a person may not patent a combination of device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.”).
2 https://www.researchgate.net/publication/263811287_Quality_control_of_Solid_Propellant_casting_process_by_using_X-ray_technique
