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 with traverse of Group I in the reply filed on 8/17/2026 is acknowledged. The traversal is on the grounds that the inventions are not independent or distinct, that they could not support separate patents, and that there would be no serious search and/or examination burden. Applicant also notes that a request to participate in the Patent Prosecution Highway (PPH) was filed, and that claims 1-7 correspond to claims allowed in European Patent EP 4 374 022. These arguments are not found persuasive.
1) The traversal applies the wrong legal standard. This application is a national stage entry under 35 U.S.C. 371. As stated in the requirement, restriction in this application is governed by the unity of invention standard of 37 CFR 1.475 and 1.499 and PCT Rules 13.1 and 13.2. It is not governed by the “independent or distinct” and “serious burden” standards of 35 U.S.C. 121 and MPEP 803, which apply to applications filed under 35 U.S.C. 111(a). See MPEP 1850 and 1893.03(d). Under 37 CFR 1.475, the question is whether the groups of inventions are linked by a technical relationship involving one or more of the same or corresponding special technical features. A “special technical feature” is one that defines a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. 37 CFR 1.475(a); PCT Rule 13.2. Search and examination burden is not part of that test. Applicant’s arguments regarding distinctness, separate patentability and burden therefore do not address the basis of the requirement.
2) The traversal does not point out any specific error. Under 37 CFR 1.143, a traversal must distinctly and specifically point out the supposed errors in the requirement. Applicant does not identify any special technical feature shared by Groups I-IV. Nor does Applicant dispute the finding in the requirement that the common technical feature lacks novelty or inventive step in view of the art cited as category “X” in the International Search Report. A general statement that the restriction is improper is not a specific traversal. See MPEP 818.01(a).
The requirement is still deemed proper and is therefore made FINAL. Claims 8-16 are withdrawn.
Specification
The disclosure is objected to because of the following informality. The background section identifies “U.S. Pat. Nos. 10,546,277B2” as a document dealing with roofing membranes with RFID tags. U.S. Patent No. 10,546,277 B2 is assigned to Raise Marketplace, LLC and is directed to an online exchange marketplace. The intended citation appears to be U.S. Patent No. 10,546,227 B2 (“TPO and PVC membrane incorporating RFID tags”).
Claim Interpretation
During examination, claims are given their broadest reasonable interpretation consistent with the specification. See MPEP 2111. The following terms are construed as follows:
(a) “Construction material reinforcement layer” (preamble). The body of claim 1 fully sets forth the structure of the claimed layer: a reinforcement, a data medium and a thread. The preamble states only an intended use, namely that the layer is for a construction material, and does not further limit the claimed structure. See MPEP 2111.02, II. A prior art reinforcement layer having the recited structure and capable of serving as a reinforcement layer of a construction material meets the preamble.
(b) “Reinforcement.” The specification states that the reinforcement “may comprise at least one of a multiaxial reinforcement, at least one textile, fabric(s), scrim(s), nonwoven fabric(s) made of glass, carbon and aramid and/or laminates thereof,” and may comprise “fabrics based on polyester, PP, PE and/or tear-resistant material.” A textile substrate such as a woven, knit, nonwoven or non-crimp fabric is therefore a “reinforcement” as claimed.
(c) “Data medium.” The specification describes the data media as including “RFID data media or any other suitable passive form of data medium that can be read over a distance.” An RFID chip or transponder is a data medium.
(d) “Surrounded by a thread.” The specification states that the attachment of the data medium “can, for example, be an application to the thread and/or an incorporation into the thread.” The corresponding claim of the international application (WO 2023/227753 A1) recites that the data carrier is “von einem Faden umfasst” (comprised or encompassed by a thread). Read in light of the specification, the phrase encompasses a thread that extends around the data medium so as to at least partially enclose it, as well as a data medium incorporated in or carried by a thread. The specification does not require that the thread enclose the data medium over a full 360 degrees.
(e) “Connected.” Joined directly or indirectly, for example by adhesion, knitting, stitching or binding threads.
(f) “Directional scrim.” The specification describes the directional scrim as comprising “longitudinal threads … and transverse threads,” and states that it “can have any multiaxial mesh shape (e.g. hexagonal or octagonal and/or also unidirectional, bidirectional, biaxial, triaxial and quadraxial).” A non-crimp (laid) fabric of oriented threads is a directional scrim.
(g) “Integrated into.” Made part of, or combined with, the reinforcement so as to form a unit with it.
(h) “Impregnation.” The specification describes the impregnation as protecting the data medium, thread or reinforcement against “capillary formation, chemical attack, mechanical stresses such as bending and compression or temperature effects.” Under the broadest reasonable interpretation, the term encompasses a protective polymer or resin that is cast on, coated on, or penetrates the data medium, thread or reinforcement.
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 5-7 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 5 recites “the directional scrim (22).” There is insufficient antecedent basis for this limitation in the claim. Claim 5 depends from claim 1, which does not recite a directional scrim; a directional scrim is introduced only in claim 2, from which claim 5 does not depend. It is therefore unclear whether claim 5 requires the reinforcement of claim 1 to comprise a directional scrim, or whether the directional scrim is an additional element.
Claim 6 recites “the directional scrim (22).” There is insufficient antecedent basis for this limitation in the claim. Claim 6 depends from claim 3, which depends from claim 1, and neither claim 1 nor claim 3 recites a directional scrim.
Claim 7 recites “the inserted thread (23)” and “the scrim (22).” There is insufficient antecedent basis for these limitations in the claim. Claims 1 and 3 recite “a thread,” but not an “inserted” thread, and do not recite a scrim. It is unclear whether “the inserted thread” refers to the thread of claim 1 or to a different thread.
Claim 7 further recites that the thread “is integrated into the scrim (22) and in multiaxially aligned scrim.” The metes and bounds of this phrase are unclear. It cannot be determined whether “multiaxially aligned scrim” further defines “the scrim (22)” (i.e., the scrim is multiaxial) or introduces a second scrim in which the thread is also integrated.
Claim Rejections - 35 USC § 102/103
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 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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by USPAP 2020/0117973 to Schumacher or, in the alternative, under 35 U.S.C. 103 as obvious over USPAP 2020/0117973 to Schumacher in view of USPAP 2011/0147462 to Speich, EP 1798340 to Dorfner, and/or DE 102014104266 to Jessrang.
As to claim 1, Schumacher discloses an RFID system used in textiles, including “in the area of technical textiles” (¶ [0006]) and industrial textiles (¶ [0016]). Schumacher discloses each element of claim 1 as follows:
(a) A reinforcement: a textile substrate material 4, which “can be a woven, knitted, nonwoven, non-crimp fabric or braided fabric” (¶¶ [0037]-[0038], [0057]; claim 9). Each of these is a “reinforcement” as that term is described in Applicant’s specification.
(b) At least one data medium connected to the reinforcement: an RFID chip 2, “structured in the form of a flat, circular disk-shaped body that is adhered onto the textile substrate material 4” (¶ [0060]; see also ¶¶ [0005], [0010], [0055]; FIG. 1).
(c) Wherein the at least one data medium is surrounded by a thread: “[a] segment of the electrically conductive thread (5) loops around the RFID chip (2) without touching it across an angle of at least 180°” (¶¶ [0010], [0013]; claim 1). The segment loops around the chip “across an angle range of at least 180°, preferably across an angle range between 180° and 270°,” forming “an open loop” around the chip (¶ [0017]), and loops around the chip “within an angle region that is greater than or equal to 180° but less than 360°” in Region A (¶¶ [0071]-[0072]; FIGS. 1-2; see also ¶¶ [0020], [0073] (polygonal-chain loop)). The thread thus extends around the chip and at least partially encloses it, such that the chip is “surrounded by a thread” under the broadest reasonable interpretation.
(d) Wherein the thread is connected to the reinforcement: the electrically conductive thread 5 is “worked into the textile substrate material 4 using a warp knitting machine, especially advantageously with a tricot machine or a Raschel machine” (¶ [0063]; see also ¶¶ [0025]-[0028], [0064]; claim 2), and “is secured to the textile substrate material 4 by means of binding threads 6” (¶ [0067]; see also ¶¶ [0039]-[0041], [0068]; claim 6).
(e) Preamble: Schumacher’s knitted, nonwoven or non-crimp textile substrate carrying the RFID chip has all of the recited structure and is capable of serving as a reinforcement layer of a construction material. Schumacher also teaches that its RFID-equipped textile substrates “can be used for a plurality of different applications,” including tarpaulins (¶¶ [0045], [0048]). The intended-use preamble therefore does not distinguish the claim. See MPEP 2111.02, II and 2114.
To the extent “surrounded by a thread” is construed to require that the thread fully enclose the data medium, the examiner relies on Speich. Speich discloses a “transponder thread which can be processed by weaving or knitting” (claim 11), in which “the chips 16 and antenna parts 18, 20 … are embedded in a basic structure 22,” which “can consist, for example, of fibers spun together or of a covering of plastic” (description of FIG. 2; claim 13). The chip is thus fully surrounded by the thread. Speich also discloses the transponder thread arranged in a textile “as weft 42 or as warp 44” (FIG. 4; claims 22-23). Speich teaches that embodying the transponder as a thread allows it to be connected in a simple manner to a flat textile structure, e.g., by weaving or knitting, avoiding the problems of connecting transponder chips to a flat textile structure (background; summary). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute Speich’s transponder thread, in which the chip is embedded in a spun-fiber or plastic covering, for Schumacher’s separately adhered chip and looped antenna thread, so that the transponder is fed into Schumacher’s warp-knitting process as a thread and worked into the substrate. The motivation would have been the simplified, single-step incorporation taught by Speich and the protection afforded the chip by its covering. Both references work functional threads into textiles on conventional textile machinery, and the substitution of one known textile RFID element for another yields the predictable result of an identifiable textile. KSR, 550 U.S. at 416.
As to claim 2, Schumacher discloses that the textile substrate material may be a nonwoven or a non-crimp fabric (¶¶ [0038], [0057]), and that the thread is worked in with a “nonwoven Raschel machine” (¶¶ [0027], [0064]). A non-crimp fabric of laid, oriented threads is a directional scrim. Because Schumacher names only five substrate types, a person of ordinary skill in the art would at once envisage the nonwoven and non-crimp fabric species. See Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381-83 (Fed. Cir. 2015); MPEP 2131.02, III.
As to claim 3, Schumacher discloses that the chip is adhered onto the substrate (¶ [0060]) and that the antenna thread looping around the chip is worked into the substrate by warp knitting and affixed with binding threads in a single work process (¶¶ [0041], [0063]-[0068]). The chip and antenna thus form a unit with the textile substrate, such that the data medium is “integrated into the reinforcement”.
As to claim 4, Schumacher does not appear to disclose that the chip, the thread or the substrate comprises an impregnation. Schumacher’s substrate consists of electrically non-conductive materials (¶¶ [0037], [0056]). Dorfner discloses passive transponders (a chip and an antenna) applied to geosynthetic reinforcement used in asphalt and concrete construction and in earth reinforcement (claims 1 and 8; description). The transponder “has a protective layer” that “consists of a potting compound” which “hardens medium hard” (claims 12-14), and is operational from -40 °C to 160 °C (claim 11). Dorfner also discloses geogrids of “coated” filaments (claim 7). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide Schumacher’s RFID chip and conductive thread with a cast-on polymer protective layer, and to coat the textile substrate, as taught by Dorfner, in order to protect the chip and its antenna against moisture, chemical attack, mechanical stress and temperature in use. Applying a known protective encapsulant to a known textile RFID device for this purpose is the use of a known technique to improve a similar device in the same way. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The resulting potting compound and coating are an “impregnation” under the broadest reasonable interpretation.
As to claim 5, Schumacher discloses that the thread is worked into the textile substrate on a warp knitting (tricot or Raschel) machine (¶¶ [0026]-[0028], [0063]-[0064]) and that the substrate may be a non-crimp fabric, i.e., a directional scrim (¶¶ [0038], [0057]). The thread is therefore integrated into the directional scrim.
As to claim 6, Schumacher discloses that the tricot or Raschel machine has “a variable weft insertion by means of which the length of a transmitting and/or receiving antenna is prescribed” (¶ [0030]; see also ¶¶ [0031], [0065]; claim 4). A weft-inserted thread runs transversely to the longitudinal (production) direction of the textile. Schumacher further discloses “electronic guide bars by means of which the position of a transmitting and/or receiving antenna can be freely prescribed on the textile substrate material” (¶ [0032]; see also ¶¶ [0033], [0066]; claim 5), and shows the thread forming “periodic wave-shaped structures” on both sides of Region A (¶ [0071]; FIG. 1). The thread is thus inserted in the reinforcement in at least the transverse direction and, along its wave-shaped course, in longitudinal and diagonal directions. Speich further discloses the transponder thread inserted as weft (transverse) or warp (longitudinal) (FIG. 4).
As to claim 7, Schumacher does not appear to specify that the scrim is multiaxial but Jessrang discloses a “multiaxial textile scrim” comprising fiber layers 6a-6e of parallel fibers oriented at different angles relative to adjacent layers, the layers being joined by knitting threads 8 that “consist of an electrically conductive material” (claims 1-3). The scrim is produced on multiaxial warp-knitting machinery, the conductive function being integrated in the knitting step. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to form Schumacher’s non-crimp substrate as a multiaxial scrim with the conductive (antenna) thread integrated into it, as taught by Jessrang. A multiaxial scrim provides reinforcement in several directions, and Jessrang shows that functional conductive threads can be integrated into a multiaxial scrim in the same warp-knitting operation. Selecting a multiaxial configuration from the finite set of known scrim configurations (unidirectional, biaxial, triaxial, quadraxial) is the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 417, 421.
Claim Rejections - 35 USC § 103
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1798340 to Dorfner in view of USPAP 2011/0147462 to Speich and/or DE 102014104266 to Jessrang.
As to claim 1, Dorfner discloses geosynthetics (“geotextiles, geocomposites or geogrids (woven, rusted [knitted] or monolithic tapes)”) used as reinforcement in asphalt and concrete construction and in earth reinforcement, i.e., construction material reinforcement layers comprising a reinforcement (claims 1 and 5-7). Dorfner discloses at least one passive transponder (data medium) applied and connected to the geosynthetic, storing product, project and building-material data (claims 1, 3, 4 and 8). Dorfner connects the transponder by gluing (claims 3 and 9-10) and does not appear to disclose that the transponder is surrounded by a thread connected to the reinforcement. Speich discloses a transponder thread in which the chip is embedded in a basic structure of fibers spun together or in a plastic covering, the thread being incorporated into a textile by weaving or knitting as warp or weft (claims 11, 13 and 22-23; FIGS. 2 and 4). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Dorfner’s transponder into the woven or knitted geosynthetic as a Speich transponder thread, rather than gluing a discrete transponder onto the geosynthetic. The motivation would have been Speich’s teaching that the transponder thread can be connected in a simple manner to a flat textile structure by weaving or knitting, eliminating Dorfner’s separate gluing step, together with the protection the thread covering provides to the chip. In the resulting geosynthetic, the transponder is surrounded by a thread that is connected to (woven or knitted into) the reinforcement, as claimed. The result, an identifiable geosynthetic reinforcement, is predictable. KSR, 550 U.S. at 416-17.
As to claim 2, Dorfner discloses a geocomposite of mechanically bonded nonwoven with glass, carbon or aramid filaments used as reinforcement (claim 6), and woven or knitted geogrids of longitudinal and transverse strands, which are directional scrims (claims 1 and 7).
As to claim 3, in the combination the transponder thread is woven or knitted into the geosynthetic, such that the data medium is integrated into the reinforcement.
As to claim 4, Dorfner discloses a protective potting-compound layer on the transponder (claims 12-14) and geogrids of coated filaments (claim 7), each of which is an impregnation of the data medium or the reinforcement.
As to claim 5, in the combination the transponder thread is woven or knitted into the geogrid (directional scrim) as one of its strands.
As to claim 6, Speich discloses the transponder thread inserted as weft (transverse) or warp (longitudinal) (FIG. 4; claims 22-23). Inserting the transponder thread into Dorfner’s geogrid in either direction would have been an obvious selection between the two directions Speich identifies.
As to claim 7, does not specify that the scrim is multiaxial but Jessrang discloses a “multiaxial textile scrim” comprising fiber layers 6a-6e of parallel fibers oriented at different angles relative to adjacent layers, the layers being joined by knitting threads 8 that “consist of an electrically conductive material” (claims 1-3). The scrim is produced on multiaxial warp-knitting machinery, the conductive function being integrated in the knitting step. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to form Schumacher’s non-crimp substrate as a multiaxial scrim with the conductive (antenna) thread integrated into it, as taught by Jessrang. A multiaxial scrim provides reinforcement in several directions, and Jessrang shows that functional conductive threads can be integrated into a multiaxial scrim in the same warp-knitting operation. Selecting a multiaxial configuration from the finite set of known scrim configurations (unidirectional, biaxial, triaxial, quadraxial) is the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 417, 421.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
