DETAILED ACTION
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 with traverse of Group II, 13-14 and the water species election in the reply filed on 04/06/2026 is acknowledged. The traversal is on the ground(s) that the subject matter of Groups I and II is not separate and distinct. This is not found persuasive because as stated in the restriction requirement Inventions I and II are distinct. The inventions are related as product and process of making. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the process as claimed can be used to make another and materially different product, such as a welding piece. Additionally, the product as claimed can be made by another and materially different process; the product as claimed could be made by reversing the orders of steps as disclosed and does not require the order as instantly claimed (e.g. the laminate formation prior to the heating and applying pressure steps).
Applicant is reminded that “[E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and the prior art applicable to one invention would not likely be applicable to another invention.
The requirement is still deemed proper and is therefore made FINAL. Claims 16-20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
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 1-11 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.
Re claim 1, it is not clear how many layers of PAEK are present as the laminate requires 2 or more plies (at least 2 layers) vs. the susceptor is between each pair of plies (at least 4 layers).
Re claim 11, no steps are included for a composite that is “configured to“ have cycle time as claimed.
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:
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 1-15 rejected under 35 U.S.C. 103 as being unpatentable over US 20220266537 A1 to Glotin et al.
Re claims 1-3, 6-8, and 12-15, Glotin teaches [112-113] thermoplastic material for welding of [123-124, 139] two plies PAEK/PEKK with [19-20] susceptor and [130-132] reinforced with carbon fibers [56-57, 128-129] carbon fibers are continuous and oriented as claimed. Given the materials are the same, the rate and number average are expected. That the susceptor is between each pair of polymer layers is not taught up to the number of plies recited; however, Glotin states the construction is not limited [120], see Fig. 11 4 between 2 and 3 ([177]) and thus more susceptor material surrounding another set of plies is duplication of parts. It would have been obvious to one of ordinary skill in the art to use susceptor on the surfaces of each of the plies in order to provide even more optimal heating. The duplication of parts is generally recognized as being within the level of ordinary skill in the art, absent unexpected results. Providing additional clay-polymer composite barrier coatings would have achieved expected results such as providing more barrier properties. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.04 (VI) B. In re Harza, 124 USPQ 378,380 (CCPA 1960).
Re claim 4, the thickness range is not 10 microns to 50 microns, while [156] thickness is taught; moreover, note It is submitted the optimal and/or claimed values of the respective material would have been obvious to the skilled artisan at the time the invention is made since it is known that if one increases thickness then the strength increases. See also MPEP § 2144.05 II (B).
Re claim 5, the [133-134] amount of carbon fibers may be 20% to 80% wt% . In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Re claim 11, Glotin teaches the essential elements as required but the cycle time welding is product by process derived limitations in a product claim. 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, 777 F.2d 695, 698. Both Applicant's and prior art reference's product are the same.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
References of Interest
The remaining references listed on form(s) 892 and/or 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon in the rejection above.
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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