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 .
Response to Amendment
Applicant’s amendments, filed 3/18/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to claims 1 and 2, the addition of new claims 7-12 and the cancellation of claims 3 and 5-6.
Response to Arguments
Applicant's arguments filed 3/18/2026 have been fully considered but they are not persuasive. Applicant’s arguments with respect to the amendments are noted and moot in view of the rejection hereinafter. In addition, the examiner notes the comprehensive amendment is related to the intended use of the structure including the following provisions among others:
“comprising a modifying fluid”
“linear substrate is traversed”
“to infuse additive from modifying fluid”
“length of linear substrate that is in fluid communication with the modifying fluid”
“exposure length adjusted based on acceleration from a given speed”
“wherein the exposure length is adjusted based on the acceleration as: the exposure length is increased with an increase in the acceleration of the of the linear substrate; and the exposure length is decreased with a decrease in the acceleration of the of the linear substrate”
“an exposure of an exterior polymer material of the linear substrate varies with a speed of the linear substrate”
The intended use of the claimed apparatus is met by the prior because the prior structure is capable of operating in the manner as claimed. Russell generally discloses moving the telescoping sections to vary the effective length of the chamber affects the exposure time that the substrate is in contact with the coating (column 9, lines 30-35) and additionally discloses varying the speed of the sheet (compare examples, Example 2, steel at 40 ft/min and example 4, steel at 75ft/min, example 3, steel at 150ft/min). As such, the prior art meets the claimed intended use as the prior art is capable of functioning the manner as claimed. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Election/Restrictions
Newly submitted claims 9-12 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 9-12 and originally filed claims are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case Claims 9-12 are directed to method claims and the apparatus as originally filed can be operated in a materially different process, including without a modifying fluid with additives to infuse.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 9-12 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim(s) 1, 4, 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent 3544388 by Russell et al.
Russell discloses a device or modifying an aspect of a linear substrate, the device comprising: providing a processing vessel which is capable of holding a modifying fluid with an additive (see Figure 5).
Russell discloses the processing vessel further comprising a linear substrate inlet into the chamber and a linear substrate outlet out of the chamber (figure 5, outlet at 7, inlet as it enters from inner processing chamber).
Russell discloses an exposure gap between the linear substrate inlet and the linear substrate outlet (exposure gap exists between these two points), the linear substrate inlet and the linear substrate outlet being moveable between a plurality of relative positions each defining a different length of the exposure gap (telescoping), wherein the length of the exposure gap is reconfigurable from zero to greater than zero (fully nested will be zero gap for the “chamber” and may a value greater than zero, see figure 5) , and wherein a maximum length of the exposure gap is less than a longitudinal length of the processing vessel (maximum length less than the process vessel that includes chambers defined by each of the outer and inner).
Russell discloses the processing vessel further comprises an outer wall having opposing ends (4 and 6), wherein in a first relative position one of the linear substrate inlet and the linear substrate outlet being located between the opposing ends of the outer wall and the exposure gap having a first length, in the first relative position the exposure gap being in fluid communication with the chamber (see linear substrate inlet between the opposing ends, Figure 5). Russell, by adjusting the nesting arrangement and the size of chamber defined by telescoping section 29, will adjust the linear substrate inlet to a different position and the exposure gap having a second length that is different from the first length.
As for the requirement adjusting a length of the exposure gap based on the acceleration of the linear substrate traversing across the gap, such is intended use of the claimed apparatus and the prior structure is capable of operating in the manner as claimed. Russell generally discloses moving the telescoping sections to vary the effective length of the chamber affects the exposure time that the substrate is in contact with the coating (column 9, lines 30-35) and additionally discloses varying the speed of the sheet (compare examples, Example 2, steel at 40 ft/min and example 4, steel at 75ft/min, example 3, steel at 150ft/min). As such, the prior art meets the claimed intended use as the prior art is capable of functioning the manner as claimed. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
The following provisions are related to the intended use of the structure including, among others:
“comprising a modifying fluid”
“linear substrate is traversed”
“to infuse additive from modifying fluid”
“length of linear substrate that is in fluid communication with the modifying fluid”
“exposure length adjusted based on acceleration from a given speed”
“wherein the exposure length is adjusted based on the acceleration as: the exposure length is increased with an increase in the acceleration of the of the linear substrate; and the exposure length is decreased with a decrease in the acceleration of the of the linear substrate”
“an exposure of an exterior polymer material of the linear substrate varies with a speed of the linear substrate” (claim 7)
The intended use of the claimed apparatus is met by the prior because the prior structure is capable of operating in the manner as claimed. Russell generally discloses moving the telescoping sections to vary the effective length of the chamber affects the exposure time that the substrate is in contact with the coating (column 9, lines 30-35) and additionally discloses varying the speed of the sheet (compare examples, Example 2, steel at 40 ft/min and example 4, steel at 75ft/min, example 3, steel at 150ft/min). As such, the prior art meets the claimed intended use as the prior art is capable of functioning the manner as claimed. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Claim 2: Russell discloses the processing vessel has opposing ends including a fluid inlet (14) and fluid outlet in communication with the chamber and coupled to the outer wall and are moveable with respect to each other by virtual of them being on different telescoping sections (see Figure 5).
Claim 4: The scope of the term seals is not defined by the claims nor the specification to include any structure and therefore the inlet and outlet would necessarily have some degree of seals as broadly interpreted.
Claim 7: This is intended use of the claimed structure and the apparatus as taught the prior art is capable of operating as claimed and thus meets these claim requirements. As such, the prior art meets the claimed intended use as the prior art is capable of functioning the manner as claimed (See discussion above with respect to claim 1). It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Claim 8: Russell discloses providing a processing vessel comprising an outer chamber having a length (figure 5, process vessel comprises a chamber defined by the outer process vessel, 29) and an inner processing vessel forming a nested arrangement along the length of the outer processing device with at least a portion of the chamber defined therebetween and inner processing vessel being axially movable relative to the outer processing vessel(see Figure 5).
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Russell in view of US Patent Application Publication 20060038356 by Lehtinen.
While the examiner maintains the position as set forth above, the examiner cites here Lehtinen which discloses seals for inlet and outlet of passageway into a cavity for passage of elonaged articles (abstract, 0001) and therefore using the seals as suggested by Lehtinen would have been obvious to one of ordinary skill in the art so that the individual cavity can be isolated from the environment or another space (0002).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 4, 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 9718080. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of U.S. Patent No. 9718080 fully encompass the claim requirements and therefore anticipate or make obvious each of the claim limitations present in the instant application. Specifically, the claims of this prior application disclose or sufficiently make obvious the individual features of the instant claims.
Claims 1-2, 4, 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent Application No. 11033923. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of U.S. Patent Application No. 11033923 fully encompass the claim requirements and therefore anticipate or make obvious each of the claim limitations present in the instant application. Specifically, the claims of this prior application disclose or sufficiently make obvious the individual features of the instant claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/ Primary Examiner, Art Unit 1718