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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 3/10/26 is acknowledged. The traversal is on the ground(s) that no search burden is present. This is not found persuasive because the claims are classified in different areas, require different searches, and prior art applicable to one group is not necessarily applicable to both. See details of restriction. Claims 16-20 are withdrawn with traverse.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The claims recite an apparatus with structural limitations and material worked upon by the apparatus. While there is nothing wrong with claiming the material worked upon, such limitations are only given weight to the extent that they limit the structure of the claimed apparatus. See MPEP 2115. See In re Rishoi (94 USPQ 71), In re Smith (3 USPQ 315), and In re Young (25 USPQ 69).
In Rishoi, a film of liquid was claimed as part of an apparatus, it being clear that the liquid film is only present during use of the apparatus. It was held that the liquid film is not a structural limitation and therefore cannot impart patentability to those claims which are otherwise unpatentable. It was further stated that there is no patentable combination between a device and the material upon which it works.
In Smith, a particular web material having an extra length of carbons was claimed as part of an apparatus. The web material is worked upon by the apparatus. The court considered the possibility of combining the specified web with an old machine to provide a patentable combination, but it was held that a person may not patent a combination of a device and material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent.
In Young, a concrete structure upon which an apparatus works was claimed as part of the apparatus. It was held that the inclusion of the material worked upon may not lend patentability to the apparatus.
In view of the cited cases and MPEP 2115, the claimed material worked upon has only been given weight to the extent that such limitations indicate structural limitations of the claimed apparatus.
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 1-15 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.
In claim 1, the limitation “providing heat energy to the unshielded portion” does not properly refer back to the previously recited heat energy. Additionally, claims 4-11 all recite the providing of heat energy or heat, but do not refer back to the previously recited heat energy.
Claims 4 and 8-11 recite the device as capable of causing “activation”, but do not properly refer back to the previously recited activation.
Claims 4 and 9-11 recite “at least one portion” but do not refer back to the previously recited “at least one portion”.
Claim 8 recites “a portion”. It’s not clear if this is the same portion previously recited.
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.
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.
Claim(s) 1-7 and 9-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Skaja et al. (US 2015/0342296) in view of Tensor (US 5885514).
**The claims recite several limitations directed solely to material to be worked upon (shoe components, associated structure such as rims, connection surfaces, etc). As discussed above, these limitations are not part of the device and do not further limit its structure.
As to claims 1 and 12, Skaja discloses a device for manufacturing a shoe, the device comprising: a first component mounting 80b/90/88 for receiving a first component corresponding to a shoe sole unit having an outer rim part and a first connection surface inward of the outer rim part (para 42, fig 7-11); a second component mounting 62/68 for receiving a second component corresponding to a shoe upper having a second connection surface (figs 7-11, para 39-49); and a heat source 104 for providing heat energy for activating at least one portion of the first connection surface by providing heat energy to the first connection surface (para 47-54, figs 7-11); wherein the first component mounting and the second component mounting are moveable toward each other (para 49) and capable of connecting the first component with the second component by joining the first connection surface of the shoe sole unit with the second connection surface of the shoe upper (figs 7-11,para 39-61).
Skaja does not disclose a shield positionable over the outer rim part of the shoe sole unit to prevent the outer rim part of the shoe sole unit from being subjected to as much heat as an unshielded portion of the first connection surface of the shoe sole unit to enable the device to heat the unshielded portion.
Tensor discloses a device with first and second component mountings, comprising
a shield 84 positionable over an outer rim part of a material layer to prevent the outer rim part of the layer from being subjected to as much heat as an unshielded portion of the first connection surface the layer unit to enable the device to heat the unshielded portion (figs 1, 2, 4, C3, L21-40). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Skaja such that a shield is positionable over the outer rim part of the shoe sole unit to prevent the outer rim part of the shoe sole unit from being subjected to as much heat as an unshielded portion of the first connection surface of the shoe sole unit to enable the device to heat the unshielded portion as taught by Tensor above as such enables targeted heating and extends the life of the mold (C3, L21-40)
.
As to claim 2, Skaja discloses the first component mounting and the second component mounting are moveable toward each other for connecting the first component with the second component without the outer rim part of the shoe sole unit sticking to the second connection surface of the shoe upper (para fig 7, 11).
As to claim 3, the outer rim is solely material to be worked upon. The device of Skaja as modified by Tensor has the same structure as applicant’s and thus is capable of processing an outer rim part comprising a width of 3 mm.
As to claim 4, Skaja discloses the device, wherien, with the first component received in the first component mounting and the second component received in the second component mounting, the first component mounting and the second component mounting are positionable to define a gap between the first connection surface of the first component and the second connection surface of the second component (Skaja figs 7-11,para 39-61); wherein the heat source is positionable in the gap between the first and second connection surfaces (para 39-61, figs 7-11); wherein the heat source is configured to supply heat for activating at least one portion of the first connection surface by providing heat energy from the heat source in the gap (para 39-61, figs 7-11); and wherein, the first component mounting and the second component mounting are moveable toward each other with the heat source out of the gap (para 3-49, heat source can be removed before components moved towards each other, para 48-49).
As to claim 5, Skaja discloses the heat source is capable of providing heat energy to the first connection surface of the first component such that an activation temperature of at least one material of the first connection surface is reached (para 48-51).
As to claim 6, Skaja discloses the heat source is configured for providing heat energy to the first connection surface of the first component such that a viscous layer of at least one material of the first connection surface is formed (para 48-51). The forming of the viscous layer is dependent upon the material of the component, and thus the heater is capable of forming the viscous layer of the material of the component.
As to claim 7, Skaja discloses the heat source is configured for providing heat energy to the first connection surface of the first component such that the first connection surface is at least partially melted (para 48-51).
As to claim 9, Skaja discloses wherein the heat source is configured to supply heat for activating at least one portion of the first connection surface of the first component and supply heat for activating at least one portion of the second connection surface of the second component (capable of heating to proper temperature, para 48), and wherein the first and the second component mounting are positioned so that the first connection surface and the second connection surface are spaced apart during activation of the first connection surface and the second connection surface (para 47-51, fig 7-8).
As to claim 10, Skaja discloses the heat source is configured to supply heat for simultaneously activating at least one portion of the first connection surface of the first component and activating at least one portion of the second connection surface of the second component (para 47-52, figs 7-8).
As to claim 11, Tensor discloses the heat source is configured to supply heat for activating at least one portion of the first connection surface of the first component by providing heat energy without contact to the unshielded portion (figs 1, 2, 4).
As to claim 13, Skaja discloses the first component mounting and the second component mounting are moveable toward each other for joining the first connection surface of the first component and the second connection surface of the second component without an additional adhesive (para 48, figs 7-11- adhesive material to be worked upon and does not further limit the structure).
As to claims 14-15 Skaja discloses the first and the second component mounting are configured to hold the first component and the second component during a solidifying of a connection of the first component and the second component (para 49-51 fig 11-12). Skaja’s device is capable of facilitating solidification by cooling, since cooling can occur after shoe components are joined.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over SKaja and Tensor, as applied to claim 1 above, and further in view of Bol (US 2010/0181026).
Bol teaches a heat source comprising at least one infrared radiation source configured to supply irradiating heat energy for activating at least a portion of a first connection surface of a first component (para 27-29).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Skaja and Tensor such that the heat source
comprises at least one infrared radiation source configured to supply irradiating heat energy for activating at least the portion of the first connection surface of the first component as infrared heaters are known in the art as taught by Bol above and such has a reasonable expectation of success and enables targeted heating (para 11).
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,108,841. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of ‘841 encompass all of the limitations recited in claims 1-15 of the current application. .
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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