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 .
Specification
The disclosure is objected to because of the following informalities:
in paragraph 0012 reference to specific claim number(s) should be removed.
Appropriate correction is required.
Claim Objections
Claims 1-13 are objected to because of the following informalities:
in claim 1, line 3 delete “step” and insert therein - - steps - - as more than one step is claimed (i.e. a step of fixing before the step of applying);
in claim 8, line 3 delete “are free” and insert therein - - is free - - (i.e. the end is free); and
in claim 8, line 4 delete “are covered” and insert therein - - is covered- - (i.e. the cable section is covered).
Appropriate correction is required.
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 1-13 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 1 recites the limitation “the same nozzle” in line 6. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the same nozzle” and insert therein - - the nozzle - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 1, line 4 recites the limitation “the elastomer is applied to the fabric layer (6) in a deformable state via a nozzle (1), -- the cable (5) is applied to the fabric layer (6) via the same nozzle (1) in phases at the same time together with the elastomer (4) in such a way that, in one phase, the elastomer (4) surrounds the cable (5) at least partially, -- in another phase only the cable (5) but no elastomer (4) is applied via the nozzle (1) to the fabric layer (6)”. The limitation “in phases at the same time together” is unclear and confusing as while in the one phase the elastomer surrounds the cable at least partially in the another phase only the cable but no elastomer is applied via the nozzle to the fabric layer so that in the another phase the cable is not applied to the fabric layer via the nozzle at the same time together with the elastomer. It is suggested to delete “in phases at the same time together with the elastomer (4)” and insert therein - - in phases at the same time together with the elastomer (4) or without the elastomer (4) - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 1 recites the limitation “before the method step in which the elastomer (4) and the cable (5) are applied at least in phases at the same time” in line 14. The limitation “at least in phases at the same time” is unclear and confusing wherein as noted above in the another phase the cable is not applied to the fabric layer via the nozzle at the same time together with the elastomer. It is suggested to delete “at least in phases at the same time” and insert therein - - at least in the one phase at the same time - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 2 recites the limitation “the same nozzle opening” in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the same nozzle opening” and insert therein - - a same nozzle opening - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 3 recites the limitation “the beginning or at the end” in line 3. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the beginning or at the end” and insert therein - - a beginning or at an end - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 4 recites the limitation “the relative speed” in line 2. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the relative speed” and insert therein - - a relative speed - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Regarding claim 8, the phrase “preferably” appears to set forth a preference and renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination the limitation(s) following the phrase are not considered part of the claimed invention. It is suggested to delete “, preferably both ends of the cable (5),” to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 8 recites the limitation “the cable section between the ends” in line 3. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the cable section between the ends” and insert therein - - a cable section between ends - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 9 recites the limitation “the common application” in line 1. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the common application” and insert therein - - a common application - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 9 recites the limitation “the nozzle body” in line 3. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the nozzle body” and insert therein - - a nozzle body - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 9 recites the limitation “the interior” in line 6. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the interior” and insert therein - - an interior - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 12 recites the limitation “the elastic cable” in line 1. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “The garment or bandage according to claim 8” and insert therein - - The garment or bandage according to according to claim 11 - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
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.
Claims 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mark (U.S. Patent Application Publication 2019/0009472).
Regarding claim 9, Mark (Figure 2H and Paragraphs 0115 and 0123) discloses a nozzle (multi-element printer head 1500 see Figure 2H), wherein a nozzle body of the nozzle has a first supply opening (for matrix 1504 and/or support 1506) for the admission of a first material or article worked upon (1504 and/or 1506) and a second supply opening (for core 1502) for the admission of a second material or article worked upon (1502), wherein the first and the second supply openings lead to an interior of the nozzle body (as shown in Figure 2H) which is provided with an exit opening (at the bottom of the head see Figure 2H) for the first material or article worked upon and the second material or article worked upon.
Regarding claim 10, Mark teaches a tubular guide member (see the tube in the interior of head 1500 guiding core 1502 in Figure 2H) is integrated into the nozzle body of the nozzle for guiding the second material or article worked upon.
As to the limitation in claim 9 of “for the common application of elastomer and a cable on a fabric layer of a garment or a bandage which is produced according to the method of claim 1”, claims 9 and 10 are directed to an apparatus, i.e. a nozzle, wherein these limitations are directed to the materials or articles worked upon by the apparatus and/or functional limitations. A claim is only limited by positively recited elements, and thus, inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims (see MPEP 2115). Further, a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on (see MPEP 2114). Mark teaches all of the structural limitations of the claim as set forth above (and further including structure capable of wherein the first material or article worked upon is intermittently coated on the second material or article worked upon to apply the first material or article worked upon and the second material or article worked upon in phases including in one phase the first material or article worked upon surrounds the second material or article worked upon at least partially (1510, 1514 of Figure 2H) and in another phase only the second material or article worked upon but no first material or article worked upon is applied (1512 of Figure 2H)) which structure is capable of “for the common application of elastomer and a cable on a fabric layer of a garment or a bandage which is produced according to the method of claim 1” wherein as the first material or article worked upon (as 1504 and/or 1506) is elastomer and as the second material or article worked upon (as 1501) is a cable and the nozzle operated above a fabric layer of a garment or a bandage (as a third material or article worked upon) thereby for a common application of the elastomer and the cable on the fabric layer of the garment or the bandage which is produced according to the method of claim 1.
Claims 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cohen et al. (U.S. Patent 10,254,499).
Regarding claim 9, Cohen (Figures 2 and 7a and Column 25, line 52 to Column 26, line 26 and Column 31, lines 44-65) discloses a nozzle, wherein a nozzle body of the nozzle has a first supply opening (at the top for polymer) for the admission of a first material or article worked upon (polymer) and a second supply opening (at the top for wire) for the admission of a second material or article worked upon (wire), wherein the first and the second supply openings lead to the interior of the nozzle body (as shown in Figure 7a) which is provided with an exit opening (orifice at the bottom) for the first material or article worked upon and the second material or article worked upon.
Regarding claim 10, Cohen teaches a tubular guide member (capillary) is integrated into the nozzle body of the nozzle for guiding the second material or article worked upon.
As to the limitation in claim 9 of “for the common application of elastomer and a cable on a fabric layer of a garment or a bandage which is produced according to the method of claim 1”, claims 9 and 10 are directed to an apparatus, i.e. a nozzle, wherein these limitations are directed to the materials or articles worked upon by the apparatus and/or functional limitations (see MPEP 2114 and 2115 as discussed above). Cohen teaches all of the structural limitations of the claim as set forth above (and further including structure capable of wherein the first material or article worked upon is intermittently coated on the second material or article worked upon to apply the first material or article worked upon and the second material or article worked upon in phases including in one phase the first material or article worked upon surrounds the second material or article worked upon at least partially (Figure 7a) and in another phase only the second material or article worked upon but no first material or article worked upon is applied (switch from polymer with wire to bare wire, Figure 105h and Column 25, lines 56-57)) which structure is capable of “for the common application of elastomer and a cable on a fabric layer of a garment or a bandage which is produced according to the method of claim 1” wherein as the first material or article worked upon (polymer) is elastomer and as the second material or article worked upon (wire) is a cable and the nozzle operated above a fabric layer of a garment or a bandage (as a third material or article worked upon) thereby for a common application of the elastomer and the cable on the fabric layer of the garment or the bandage which is produced according to the method of claim 1.
Claim Rejections - 35 USC § 102/103
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 8 and 13 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jayasundara et al. (WO 2017/091154).
Regarding claims 8 and 13, Jayasundara discloses at least a garment (Page 5, lines 6-14) with a fabric layer (substrate 320 is fabric, Page 4, lines 8-9) wherein an end of a cable (intermittently-insulated electrically conductive yarn 125, Page 7, lines 15-21 and Page 11, lines 1-2 and regarding claim 13 wherein the cable is electrically conductive) is free (Page 6, line 22 and Page 11, lines 1-2) of elastomer (insulating coating material 130 of thermoplastic elastomer, Page 3, lines 13-14) and a cable section (such as first insulated section 336) between ends of the cable is covered by elastomer (Figure 3 and Page 9, line 34 to Page 10, line 5). In the event it is somehow considered Jayasundara does not necessarily anticipate one or more of those limitations of claims 8 and 13 as set forth above the following rejection is made. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the garment taught by Jayasundara comprises a fabric layer (substrate 320 is fabric) wherein an end of a cable (intermittently-insulated conductive yarn 125 wherein the cable is electrically conductive) is free of elastomer (insulating coating material 130 of thermoplastic elastomer) and a cable section (such as first insulated section 336) between ends of the cable is covered by elastomer as is disclosed by Jayasundara at Figure 3 and the Page #, line # set forth above and further including termination ends are not covered with the elastomer so as to enable an electrical connection to be established, see page 6, line 22 and page 11, lines 1-2.
As to the limitation in claim 8 of “produced in accordance with the method of claim 1,”, claims 8 and 13 are directed to a product, i.e. a garment or a bandage, wherein this limitation is directed to the process of forming the product, i.e. product-by-process. 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. The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art (see Jayasundara described above in full detail), although as may be produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product (see MPEP 2113).
Claim Rejections - 35 USC § 103
Claims 1-4, 7-10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jayasundara in view of Mark and/or Cohen.
Regarding claims 1 and 7, Jayasundara discloses a method wherein elastomer (insulating coating material 130 of thermoplastic elastomer, Page 3, lines 13-14) with a cable (intermittently-insulated electrically conductive yarn 125, Page 7, lines 15-21 and Page 11, lines 1-2 and regarding claim 7 wherein the cable is electrically conductive) embedded in the elastomer is applied onto a fabric layer (substrate 320 is fabric, Page 4, lines 8-9) at least of a garment including the following steps: -- the elastomer is applied to the fabric layer in a deformable (such as deforming by bending) state, -- the cable is applied to the fabric layer in phases at the same time together with the elastomer or without the elastomer (see the 35 U.S.C. 112(b) rejection above) in such a way that, in one phase (such as second insulated section 335), the elastomer surrounds the cable at least partially, -- in another phase (such as uninsulated section 135) only the cable but no elastomer is applied to the fabric layer, wherein an end of the cable is fixed to the fabric layer (such as at first insulated section 336), and the fixing of the end of the cable occurs before the method step in which the elastomer and the cable are applied at least in the one phase (such as second insulated section 335) at the same time (see the 35 U.S.C. 112(b) rejection above).
As to the limitations in claim 1 of the elastomer is applied to the fabric layer in a deformable state “via a nozzle (1)” and the cable is applied to the fabric layer “via the same nozzle (1)” in phases at the same time together with the elastomer or without the elastomer, Jayasundara is not limited to any particular device for applying the elastomer and the cable suggesting pass-through coating the elastomer (Page 3, line 24) and applying the elastomer and cable via a laying mechanism (Page 4, line 15). It is well understood by one of ordinary skill in the art of applying a polymer (polymer matrix/binding resin 1504, polymer support 1506 as taught by Mark and polymer such as elastomer as taught by Cohen) and a cable (wire 1502 of Mark and wire of Cohen) to a substrate (16 of Mark and platform/substrate taught by Cohen) wherein the polymer is intermittently coated on the cable to apply the polymer and cable in phases including in one phase the polymer surrounds the cable at least partially (1510, 1514 of Mark and Figure 7a of Cohen) and in another phase only the cable but no polymer is applied (1512 of Mark and switch from polymer with wire to bare wire as taught by Cohen) using a nozzle as taught by Mark (Figure 2H and Paragraphs 0115 and 0123) and/or Cohen (Figures 2, 7a, 7b, 9, and 105h and Column 25, line 8 to Column 26, line 15 and Column 30, lines 15-39 and Column 33, lines 18-48 and Column 93, lines 1-18). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the method taught by Jayasundara includes the elastomer is applied to the fabric layer in the deformable state via a nozzle and the cable is applied to the fabric layer via the nozzle not only as a simple substitution of one known device (including pass-through coating and a laying mechanism) to yield predictable results but to use a single device for both the coating and applying (including intermittently so that in the another phase only the cable but no elastomer is applied via the nozzle) as is well understood by one of ordinary skill in the art as evidenced by Mark and/or Cohen (and thereby including wherein an end of the cable that has already exited the nozzle is fixed to the fabric layer (such as at first insulated section 336 taught by Jayasundara or further the bare end of the cable is anchored as an aid to wire delivery as shown by Mark see the end prior to 1510 of Figure 2H and/or expressly taught by Cohen see Column 176, line 64 to Column 177, line 2 and thereby the method includes at least two of the one phase, first insulated section 336 and second insulated section 335, wherein the elastomer surrounds the cable at least partially with an end of the cable further fixed to the fabric layer), and the fixing of the end of the cable which has exited the nozzle occurs before the method step in which the elastomer and the cable are applied at least in the one phase at the same time).
Regarding claim 2, Jayasundara as modified by Mark (see Figure 2H) and/or Cohen (see Figure 7a) teach the elastomer and the cable exit the nozzle via a same nozzle opening.
Regarding claim 3, the other phase as taught by Jayasundara as modified by Mark and/or Cohen, in which only the cable but no elastomer is applied via the nozzle to the fabric layer is at a beginning (and an end) of a method step in which the cable exits the nozzle (see Figure 3 of Jayasundara).
Regarding claim 4, the cable as taught by Jayasundara as modified by Mark and/or Cohen is moved by a drive arrangement and as taught by Mark (driven roller set 42, 40 see Figure 1B and Paragraphs 0101 and 0103) at a speed which is monitored or controlled relative to the speed between the nozzle and the substrate to maintain for example compression and neutral tension and as taught by Cohen (wire feed roller see Figure 9 and Column 53, lines 1-4) at precisely the same speed that the nozzle traverses the platform/substrate and considered in each case a speed which corresponds to the relative speed between the nozzle and the fabric layer (i.e. substrate).
Regarding claims 8 and 13, Jayasundara as modified by Mark and/or Cohen above (and including each of Jayasundara, Mark, and Cohen is described above in full detail) teach at least a garment with a fabric layer produced in accordance with the method of claim 1, wherein the end of the cable (and regarding claim 13 wherein the cable is electrically conductive) is free of elastomer and a cable section between ends of the cable is covered by elastomer.
Regarding claims 9 and 10, Jayasundara as modified by Mark and/or Cohen above (and including each of Jayasundara, Mark, and Cohen is described above in full detail) teach a nozzle for the common application of elastomer and a cable on a fabric layer of at least a garment which is produced according to the method of claim 1, wherein a nozzle body of the nozzle has a first supply opening for the admission of elastomer and a second supply opening for the admission of the cable, wherein the first and the second supply openings lead to an interior of the nozzle body which is provided with an exit opening for the elastomer and the cable and (regarding claim 10) wherein a tubular guide member is integrated into the nozzle body of the nozzle for guiding the cable.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Jayasundara as applied to claims 8 and 13 above, and further in view of Matushita et al. (WO 2021/025042 and see also the machine translation). Additionally, claims 5, 6, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Jayasundara and Mark and/or Cohen as applied to claims 1-4, 7-10, and 13 above, and further in view of Matsushita.
Jayasundara is described above in full detail.
Regarding claim 11 and 12 (and claims 5, 6, 11, and 12 for Jayasundara as modified by Mark and/or Cohen), Jayasundara does not expressly teach the elasticity of the cable and the cable used includes a rubber core. Jayasundara is not limited to any particular cable materials suggesting the cable used is elastic consisting of an elastic (e.g. spandex) core and a surrounding metal net (metal wire or yarn wound around the core) (Page 3, lines 1-12 and Page 7, line 23). It is well understood by one of ordinary skill in the art the elastic cable is expandable by a value of for example about 1.4 times to prevent stretching of the garment from being hindered including wherein the elastic cable used has a rubber core (of a plurality of rubber yarns) and a surrounding metal net (of spirally wound wire) as taught by Matsushita (Page 4, second full paragraph and Page 16, second full paragraph and Page 17, first full paragraph of the machine translation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the cable is elastic as taught by Jayasundara and Jayasundara as modified by Mark and/or Cohen with an elasticity with which the cable is expandable by a value of at least 1.6 times as is the known value in the art to prevent stretching of the garment from being hindered as evidenced by Matsushita (it being noted In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists and similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close see MPEP 2144.05) and including the elastic cable used consists of a rubber core (and the surrounding metal net of spirally wound metal wire or yarn) as a simple substitution of one known elastic core to yield predictable results as also evidenced by Matsushita.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Lemelson (U.S. Patent 3,557,403) disclosing a composite extrusion apparatus for the intermittent coating of cable with polymer (Figure 1 and Column 3, lines 19-42).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN L GOFF II whose telephone number is (571)272-1216. The examiner can normally be reached 7:30 AM - 4:00 PM EST Monday - Friday.
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746