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 .
Claim Rejections - 35 USC § 112
1. 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.
2. Claims 62-95 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.
3. Regarding claim 62, the term “substantially” is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 62 is also considered indefinite because of the recitation of “may” (e.g., may pass and may connect). The Examiner is of the position that the recitation of “may pass” and “may connect” are not positive limitations. As such, the scope of claim 62 is not clear. Claim 62 is further indefinite because it is not clear what is meant by recitation of “ultimate” tensile strength. It is not clear what the term “ultimate” is supposed to define with respect to the tensile strength since no value of tensile strength is recited. In other words, does “ultimate” mean final tensile strength or maximum tensile strength? Applicants are encouraged to recite definite and positive limitations with respect to the tensile strength such as the actual tensile strength. Claims 63-89 are rejected for their dependency on claim 62.
4. Claim 64 is further indefinite because of the term “substantially”. Said term is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
5. Claim 68 is further indefinite because it is not clear what is meant by “rough keying” fabric. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “rough keying fabric ” in claim 68 is used by the claim to mean “mesh, knitted or woven fabric, geo-grid, non-woven fabric, stitchbonded fabric, spunlace non-woven, hydro entangled non-woven or mixtures thereof,” while the accepted meaning is s a specialized, solid-colored (usually bright green or blue) material used in film, TV, and streaming for virtual backgrounds, The term is indefinite because the specification does not clearly redefine the term.
6. Claim 70 is further indefinite because of the term “substantially”. Said term is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 70 is further indefinite because it is not clear what is meant by “net angle”. Applicants are encouraged to recite definite and positive limitations with respect to the claimed “net angle”, such as the actual angle of the linking elements.
7. Claim 75 is further indefinite because of the term “substantially”. Said term is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 75 is further indefinite because of the limitation directed to “once the linking elements have extended”. It is not clear to the Examiner if scope of the claim positively encompasses linking elements that extend through the first and second layer. Such a limitation appears to claim a future embodiment that comprises linking elements that change direction, but is unclear as to what causes such a direction change.
8. Claim 76 is further indefinite because of the term “substantially”. Said term is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
9. Claim 81 is further indefinite because of the term “substantially”. Said term is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 81 is further indefinite because it is not clear what is meant by recitation of “ultimate” tensile strength. It is not clear what the term “ultimate” is supposed to define with respect to the tensile strength since no value of tensile strength is recited. In other words, does “ultimate” mean final tensile strength or maximum tensile strength? Applicants are encouraged to recite definite and positive limitations with respect to the tensile strength such as the actual tensile strength.
10. Claim 83 is indefinite because the phrase “one or more of the materials” with respect to the first and/or second layer lacks antecedent basis. Claim 62 recites first and second layers, but does not limit the layers to a material and/or a structure. It appears that Applicants are attempting to limit the materials of the first and/or second materials are made from and/or comprise a biocide and/or a biological growth promoter, but the present claim language does not capture such an embodiment.
11. Claim 85 is further indefinite because of the term “sufficient”. Said term is a relative term which renders the claim indefinite. The term “sufficient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
12. Claims 86-88 are further indefinite because of the recitation of “at a pressure”. It is not clear what pressure or pressure ranges would provide for the claimed tensioning of the linking elements. As such, the scope of these claims is not clear.
13. Claims 90 and 91 are indefinite because of the recitation of “at a pressure”. It is not clear what pressure or pressure ranges would provide for the claimed tensioning of the linking elements. As such, the scope of these claims is not clear. Claims 92-95 are further rejected for their dependency on claim 91.
Claim Rejections - 35 USC § 102/103
14. 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.
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.
15. Claim(s) 62-95 stand 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 Kohlman et al., US 2015/0352804 A1.
The published patent application issued to Kohlman et al., teach a composite textile that can become rigid or semi-rigid (abstract). Said composite textile comprise first (100a) and second (100b) spaced apart non-woven layers and plurality of bulking (110)/linking fibers positioned between said first and second spaced apart non-woven layers such that there is a continuous linkage between said spaced apart non-woven layers (figures 1-3 and section 0024). Kohlman et al., teach that said bulking/linking fibers should be sufficiently stiff and self-supporting to resist bending forces (section 0025). Kohlman et al., does not explicitly teach the claimed spacing of the bulking/linking fibers, but does teach that the number of fibers per unit area in an important factor in resisting crushing forces while the settable powder is added, in maintain the spacing between first and second non-woven layers (100a and 100b) (sections 0025, 0029). A person of ordinary skill in the art would recognize that spacing of the bulking/linking fibers can be varied as a function of resistance to compression forces and to maintain the spacing between the outer non-woven layers (100a and 100b). It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA)
Kohlman et al., teach filling the space between the first and second non-woven layers with a settable powder that becomes rigid or semi-rigid in the presence of a fluid (section 0019). The Examiner is of the position that once the settable powder is filled in the space between the spaced apart first and second layers it would apply tension to the bulking/linking fibers thereby causing said layers to bulge outwards between the bulking/linking fibers under tension. With regard to the claimed first and second layers, Kohlman et al., teach non-woven layers that are formed with the same type of fibers used as bulking/lining fibers (110), low melt binding fibers, adhesives and/or needling (sections 0031-0032). Said bulking fibers included polyethylene or polypropylene (section 0024). Said layers can also be held or kept in place using thermal bonding, powder adhesive or spray adhesives (section 0023). Other additives included in the first and second non-woven layers include clay, talc, pigments, antioxidants, or surfactants (section 0028). The Examiner is of the position that said spaced apart non-woven layers are permeable to fluids. With regard to the claimed reinforcement, Kohlman et al., teach attaching a filter layer (200) to one or both of the spaced apart non-woven layers (figure 1 and sections 0032 and 0074). Said filter layer can be a woven, non-woven or knit and can comprise polypropylene or polyester fibers (sections 0060 and 0083). With regard to the claimed rough keying fabric, Kohlman et al., teach projections (210) in figure 6A have a hook shape and attach to the non-woven layer (100). Kohlman et al., teach that such projections (210) increase the lamination force required to remove the filter layer (200) form the non-woven layer (100) (section 0066). Kohlman et al., teach that projections (210) may be formed from a slit double needle bar knit fabric (section 0067). Kohlman et al., teach that said projections (210) mechanically entangle with the non-woven (100) with sufficient strength to retain the settable powder but allow the filter layer to be removed (section 0068). Said projections can also be made with polypropylene fibers (section 0083). With regard to the claimed second fill material, Kohlman et al., teach that the settable powder may comprise cement combined with other materials such as sand, glass beads, foam beads, or fibers (section 0040). The Examiner is of the position that depending on the size and density of each type of filler material it would naturally separate into distinguishable layers. With regard to the claimed ductile layer, Kohlman et al., teach that additional layers can be added to the filter layer (200) to increase tensile and flexural strength and provide increased stiffness (section 0073). With regard to the claimed tensile strength, , Kohlman et al., does not explicitly teach these features. The Examiner is of the position that once the article of Kohlman et al., is provided the claimed features of tensile strength would be exhibited. Support for this supposition is based on Kohlman et al., using the same materials and structures/layers as claimed and further positioning/orienting those layers and materials in the claimed manner. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Double Patenting
16. 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 62-95 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No.12122136. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No.12122136 claims the similar embodiments that encompass the same structural and material features. For Example U.S. Patent No.12122136 recite the claimed composite, unset fill powder, reinforcing layers, linking elements and tensioning features.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 8287982 B2
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/LYNDA SALVATORE/ Primary Examiner, Art Unit 1789
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