DETAILED ACTION
Information Disclosure Statement
It is noted that the present application has at least three (3) related foreign filings or publications in other countries, in addition to a related domestic filing also with foreign filings. Applicant is reminded of the duty under 37 CFR 1.56(a) to disclose information material to patentability, such as (a) Office Actions and prior art related to the claimed invention which have been cited during prosecution of related filings, (b) prior foreign or domestic filings by Applicant(s) which are related to the claimed or disclosed invention and which constitute prior art, (c) related brochures, dissertations, or other research publications, including that which has been authored by one or more inventors listed under this application or by other individuals under which or along which one or more inventors may have been working, and (d) any other relevant prior art Applicant may be aware of, including since the filing of any previous information disclosure statement (IDS).
Election/Restrictions
The election of Group I and Species A, identified as corresponding to claims 13-21, in the reply filed on 06 July 2026 is acknowledged. Because supposed errors in the restriction requirement were not distinctly and specifically pointed out, the election has been treated as an election without traverse (MPEP § 818.01(a)), thereby leaving claims 22-24 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
Claim Objections
Claims 13-21 are objected to because of the following informalities:
At line 1 of claim 13, “the method” should be added prior to “comprising”, and a colon “:” should be added thereafter.
Absent persuasive argument contesting this issue, appropriate correction by amendment 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.
Claim 20 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In particular:
The claim 20 recitation of increasing “the clamping effect already exerted on the polymer film due to the weight force of the tension frame” lacks antecedent basis, in particular since no such clamping effect is recited or clearly implied previously.
Absent persuasive argument contesting this issue, appropriate correction by amendment is required.
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.
Claims 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/846,621 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite each of the instant claim 13-20 steps and features respectively under copending claims 10-17.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 21 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/846,621 as applied above, and further in view of Niebling et al. (US 5,217,563). Copending claim 10 differs from instant claim 21 in that the copending wall presses the base frame against the polymer film as opposed to pressing the film itself, and in that the copending base frame is part of as opposed to not being part of the pressure chamber. However, Niebling discloses a fig. 2 configuration of a base frame 20 not forming part of a pressure chamber. It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Niebling into the copending claims as providing an art-recognized interchangeable base frame configuration which would have facilitated fixing and clamping of the polymer sheet, in addition to mold closing.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 102/103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Rejection 1
Claims 13-15 and 17-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Niebling et al. (US 5,217,563).
As to claim 13, Niebling teaches a fig. 2 method in which a polymer film 18 is placed onto a base frame 20 as claimed, heating as claimed either with heater 19 (see also the Example 1 mold heating) or with compressed air (see the Example 3 heating of injected compressed air), and contacting as claimed (see again the Example 3 air, in addition to the disclosed injection via accumulator 3 for molding sheet 18 against the contour of mold half 5). Note that with the above interpretation whereby heating is provided by compressed air, any air injected subsequent to a previous volume of air may be construed as providing contact with such air subsequent to heating, as claimed. Further, a lower edge of upper mold half 9 may be construed as the claimed tension frame provided with a through opening defined by the shape of pressure bell 7. Additionally, at least some of the above heating, either via heater 19 or via heated compressed air, would be provided with film 18 fixed in the manner claimed.
Niebling further teaches the claim 14 isostatic forming (see the above embodiment which comprises an isostatic forming via the compressed air, in addition to at least the abstract), the claim 15 base frame configuration (see the disclosure thereof as surrounding lower half 5), the claim 17 stop elements 22 with at least portions of sheet 18 and the lower edge of upper mold half 9 positioned therebetween (see recesses defined in upper mold half 9 that would result in at least portions thereof arranged between pins 22, and note that this interpretation applies due to the stop elements not being claimed as arranged surrounding the polymer film and tension frame, both of which are positioned entirely between said stop elements as depicted by Figs. 1-2 of the instant specification), the claim 18 planar top side, the claim 19 spikes/teeth 22, the claim 20 clamping means (either as upper mold half 9 as a whole, or as the component responsible for its elevation and lowering), and the claim 21 wall (i.e. surrounding lower mold half 5 in fig. 2) believed to press the film in the manner claimed (note that this interpretation applies due to the wall pressing the polymer film not claimed as taking place through the first opening as depicted by Fig. 8 of the instant specification).
Claim 16 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Niebling as applied above, or in the alternative under 35 U.S.C. 103 as obvious over Niebling, and further in view of either Fritz et al. (US 6,257,866) or Niebling (DE 102010021892, machine translation made of record herewith cited herein).
The claim 16 groove is believed to be depicted on a lowermost edge of upper mold half 9 of Niebling ’563, which accommodates pins 22 that may be construed as the claimed seal. In the alternative that it is ultimately determined that such pins do not press against the film or that this interpretation otherwise does not correspond to the claimed groove and seal, then each of Fritz (seal 100 with a corresponding groove) and Niebling ’892 (groove 16 and seal 15) are recognized for their respective teachings in this regard for a similar forming device/method. It would have been obvious for one of ordinary skill in the art to incorporate these teachings from either Fritz or Niebling ’892 into Niebling ’563 as providing such a seal and corresponding groove for helping to control and/or maintain pressure during application of compressed air.
Rejections 2-3
Claims 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by each of Fritz et al. (US 6,257,866) and Niebling (DE 102010021892, machine translation made of record herewith cited herein), taken individually.
As to claim 13, each of Fritz and Niebling disclose steps corresponding to those claimed. See Fritz in figs. 1-4 and 9 for placing onto frame 18, heating via heaters 52, and pressurizing as in figs. 3-4, with a lowermost edge of upper platen 16 corresponding to the claimed tension frame, and with heating taking place after fixing as shown in fig. 2. See Niebling in figs. 3-5 for placing onto frame 170/172, heating via heaters 20, and pressurizing as in fig. 5, with a lowermost edge of first mold half 10 corresponding to the claimed tension frame, and with heating taking place after fixing in fig. 4.
Fritz and Niebling further teach steps and features corresponding to each of claims 14-20. See at least the above citations taken from these references, in addition to Fritz’s seal 100 and corresponding groove, Niebling’s groove 16 and seal 15, Fritz’s stop elements/spikes/teeth 40, Niebling’s stop elements/spikes/teeth 174, Fritz’s clamping means (either as upper platen 16 as a whole or the corresponding means responsible for its movement), and Niebling’s clamping means (as first mold 10 as a whole or mold tables 80/90).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over each of Fritz and Niebling ’892, taken individually, and further in view of Niebling et al. (US 5,217,563).
Fritz and Niebling differ from claim 21 in that the corresponding wall pressing the film is part of the base frame as opposed to providing the base frame as not part of the pressure chamber. However, as an alternative to a fig. 1 configuration in which such a wall of frame 5 is similarly configured, Niebling ’563 also discloses a fig. 2 configuration in which a base frame 20 is separate from an interior wall, thus not forming part of the pressure chamber thereof. It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Niebling ’563 into Fritz and Niebling ’892 as providing an art-recognized interchangeable base frame configuration suitable also for fixing and clamping of the polymer sheet thereof.
Rejections 4-7
It is noted that while not outlined herein for the sake of brevity, a rejection is also applicable over a number of additional references of record or hereby added to the record which likewise anticipate one or more of the pending claims. For example:
JP 2019-214192 (figs. 1-3) is believed to anticipate at least claim 1 due to the disclosed placing of sheet 4 on base 14, heating via the disclosed heater forming part of apparatus 1, arranged inside pressure chamber 5, or built into mold base 15, and pressurizing as in fig. 3, with frame member 6 or 19 corresponding to a tension frame.
DE 102008050564 is believed to anticipate at least claim 1 due to the disclosed placing of sheet 4 on base 5 or 67, heating via hot air or the disclosed heater equipped within bottom plate 63, and pressurizing as in fig. 2, with sealing surface 13 and/or mold 10 corresponding to a tension frame.
US 5,283,029 is believed to anticipate at least claim 1 due to the disclosed placing of sheet 3 on base 5, heating via heated air or heater 2, and pressurizing as in the disclosed figure, with ring 4 corresponding to a tension frame.
US 10,889,079 (fig. 4A-D) is similarly believed to anticipate at least claim 1.
These references should be addressed in reply to this Office action via amendment and/or remarks.
Related Prior Art
See at least the abstract and figures of further additional prior art hereby made of record, which additional prior art is considered pertinent to Applicant’s disclosure and may be relied upon in subsequent rejections against claimed subject matter. Note, for example:
US 9,751,252, considered relevant due to a similar apparatus and method as depicted for example in the disclosed figures.
The manner in which such prior art might apply to the claimed and/or disclosed invention should be considered prior to a formal response being filed to this Office action.
Interview Request
Applicant’s Representative is encouraged to contact the Examiner upon review of the instant Office action so as to discuss the claimed invention, the above prior art rejection and other applicable prior art, and how it is believed that the crux of the claimed and disclosed invention distinguishes over the prior art as a whole, particularly if it is believed that such a discussion will help to advance prosecution.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Atul P. Khare whose telephone number is (571)270-7608. The examiner can normally be reached Monday-Friday 9am-6pm.
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, Christina A. Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Atul P. Khare/Primary Examiner, Art Unit 1742
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