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 .
Election/Restrictions
Applicant’s election without traverse of Invention II in the reply filed on 17 December 2025 is acknowledged.
Claims 1-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 December 2025.
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 6 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 6 of copending Application No. 18/848,590 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they recite the same structure and method steps albeit with slight wording differences rendering the instant application slightly broader than the ‘590 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 8 is objected to because of the following informalities: “before placed” in line 3 should read “before being placed”. 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 6-12 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 6 recites the limitations “an uncrosslinked core made of a crosslinkable rubber composition for a core, and an uncrosslinked outer layer, made of a crosslinkable rubber composition for an outer layer, covering a periphery of the uncrosslinked core” in lines 5-7. These limitations are indefinite as it is unclear if they refer to the prior claimed core, outer layer, and periphery of lines 2-3 or of they are additional elements. Additionally it is unclear if the uncrosslinked portions are what become the prior claimed core/outer layer or if they are other elements. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “an uncrosslinked crosslinkable rubber composition for the core, and an uncrosslinked crosslinkable rubber composition for the outer layer”.
Claim 7 recites the limitations “a core” and “an outer layer” in line 3. These limitations are indefinite as it is unclear if they refer to the prior claimed core and outer layer of claim 1 or of they are additional elements. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “the core” and “the outer layer” respectively.
Claim 11 recites the limitations “for a core” in line 5 and “for an outer layer” in line 6. These limitations are indefinite as it is unclear if they refer to the prior claimed core and outer layer of claim 1 or of they are additional elements. Additionally it is unclear if these refer to the composition of the prior claimed elements as opposed to a material that is merely “intended” to be for the core and the outer layer. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “of the core” and “of the outer layer” respectively.
Claims 7-12 are indefinite at least by virtue of depending on an indefinite claim listed above.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 6-8 and 10, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2001-208204.
With regard to claim 6, JP ‘204 discloses a method (as disclosed in para. [0012] of the machine translation) for manufacturing an annular seal material (i.e. the material of 1, as seen in Fig. 1, etc.) comprising a core (12) and an outer layer (11) covering a periphery of the core (as seen in Figs. 1, etc.), wherein the outer layer has a thick film portion (i.e. the portion of 12 at 350 as seen in Figs. 5, 14, 16, etc. is thicker than the non-thick film portion) and a non-thick film portion (i.e. the rest of 12, which as seen in Figs. 5, 14, 16, etc. is thinner) in a cross section (as seen in Figs. 5, 14, 16, etc.) in a circumferential direction (as seen in Figs. 5, 14, 16, etc.), the method comprising: a preforming step of providing one or two or more rope-like preforms (as disclosed in para. [0012] of the machine translation) comprising an uncrosslinked core (12, disclosed as uncrosslinked in para. [0012], etc. of the machine translation) made of a crosslinkable rubber composition for a core (as disclosed as uncrosslinked in para. [0012], etc. of the machine translation), and an uncrosslinked outer layer (11, as disclosed as later crosslinked (i.e. vulcanized) in para. [0012], etc. of the machine translation), made of a crosslinkable rubber composition for an outer layer (as disclosed as later crosslinked (i.e. vulcanized) in para. [0012], etc. of the machine translation), covering a periphery of the uncrosslinked core (as seen in Figs. 1, 5, etc.); and a hot pressing step of contacting two end portions of the rope-like preform with each other and placing the same in a mold to carry out hot press molding (as disclosed in para. [0012], [0033], etc.).
With regard to claim 7, JP ‘204 discloses that the preforming step comprises carrying out extrusion using the crosslinkable rubber composition for a core and the crosslinkable rubber composition for an outer layer (as seen in Fig. 5, described in para. [0003], [0012], etc. of the machine translation, etc.).
With regard to claim 8, JP ‘204 discloses that the method further comprises winding an uncrosslinked thin film layer (35, as described in para. [0032], etc.) around a seam of the two end portions of the rope-like preform that have been contacted (as seen in Figs. 12, etc.), before placed in the mold in the hot pressing step (as seen in Figs. 13, etc.), and as a material constituting the uncrosslinked thin film layer, the crosslinkable rubber composition for an outer layer is used (as discloses in para. [0032], etc.).
With regard to claim 10, JP ‘204 discloses the method further comprises heating the two end portions of the rope-like preform before the hot pressing step (as disclosed in para. [0033] they are first heated then pressed).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
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.
Claim 12, as best understood, is rejected under 35 U.S.C. 103 as being unpatentable over JP 2001-208204 alone.
With regard to claim 12, JP ‘204 fails to disclose that in the hot pressing step, two or more of the rope-like preforms are connected (i.e. as it appears to only disclose one rope-like preform). However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have modified the device of JP ‘204 to include two rope-like preforms as Examiner hereby takes Official Notice that the art is replete with examples of seal rings being made from two preliminary pieces. Such a modification would have provided the expected benefit of allowing the use of smaller pieces that may otherwise be discarded/wasted.
Allowable Subject Matter
Claims 9 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not appear to disclose removing part of the core (while in the uncrosslinked state) or disposing a connecting member between the end portions, wherein at least the outer layer of the connecting member is thicker then the outer layer of the rest of the preform.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and provides additional examples of similar annular seals and methods of making such.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at (571) 272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS L FOSTER/Primary Examiner, Art Unit 3675