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 .
The arguments filed 4/27/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 and 20 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without the specific material composition and/or methods of forming a multilayer gasket, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). Claims 1, 8-13, and 20 claim different properties of the outer layer, but the claims/disclosure do not disclose how the properties are achieved.
Claims 2-7 are rejected for depending on a rejected claim.
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 1-13 and 20 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.
Claims 1, 8-13, and 20 claim different properties of the outer layer, but the claims/disclosure do not disclose how the properties are achieved. It is unclear to the examiner as to how the claimed properties are achieved. For the purposes of this examination, the examiner is interpreting the claims as all the listed materials in the current disclosure will meet the claimed properties.
Claims 2-7 are rejected for depending on a rejected claim.
Claim Rejections - 35 USC § 102
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, 8-17, and 20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Suzuki et al. (US Pub. No. 2022/0267915).
Regarding claims 1 and 20, the Suzuki et al. (hereinafter Suzuki) reference, as best understood, discloses a multilayer gasket (7) comprising a core layer (e.g. 7); and a first outer layer (Para. [0146]) overlying a first surface of the core layer (Para. [0146]), wherein the first outer layer comprises a low-melt fluoropolymer material (Paras. [0145],[0146]) having a melting temperature of not greater than about 300 ˚C. Note that PVDF is a claimed material and is not a novel composition, it would be capable of having the claimed melting temperature, as stated in the current disclosure. The method of claim 20 is obvious in view of the rejection of claim 1.
Regarding claims 2 and 15, the Suzuki reference, as best understood, discloses the low-melt fluoropolymer material comprises a fluoropolymer material content of at least about 50 wt.% for a total weight of the low-melt fluoropolymer material (Para. [0145]).
Regarding claims 3 and 16, the Suzuki reference, as best understood, discloses the low-melt fluoropolymer material comprises a fluoropolymer material content of not greater than about 100 wt.% for a total weight of the low-melt fluoropolymer material (Para. [0145]).
Regarding claims 4 and 17, the Suzuki reference, as best understood, discloses the low-melt fluoropolymer material comprises PVDF (Para. [0145]).
Regarding claim 8, the Suzuki reference, as best understood, discloses the material and structure, as claimed. Note that PVDF is a claimed material and is not a novel composition, it would be capable of having the claimed adhesion strength, as stated in the current disclosure.
Regarding claim 9, the Suzuki reference, as best understood, discloses the material and structure, as claimed. Note that PVDF is a claimed material and is not a novel composition, it would be capable of having the claimed adhesion strength, as stated in the current disclosure.
Regarding claim 10, the Suzuki reference, as best understood, discloses the material and structure, as claimed. Note that PVDF is a claimed material and is not a novel composition, it would be capable of having the claimed surface energy, as stated in the current disclosure.
Regarding claim 11, the Suzuki reference, as best understood, discloses the material and structure, as claimed. Note that PVDF is a claimed material and is not a novel composition, it would be capable of having the claimed surface energy, as stated in the current disclosure.
Regarding claim 12, the Suzuki reference, as best understood, discloses the material and structure, as claimed. Note that PVDF is a claimed material and is not a novel composition, it would be capable of having the claimed water contact angle, as stated in the current disclosure.
Regarding claim 13, the Suzuki reference, as best understood, discloses the material and structure, as claimed. Note that PVDF is a claimed material and is not a novel composition, it would be capable of having the claimed water contact angle, as stated in the current disclosure.
Regarding claim 14, the Suzuki reference discloses a multilayer gasket (7) comprising a core layer (e.g. 7); and a first outer layer (Para. [0146]) overlying a first surface of the core layer (Para. [0146]), wherein the first outer layer comprises a low-melt fluoropolymer material comprising polyvinylidene fluoride (PVDF) or terpolymer of tetrafluorethylene hexafluorpropylene) or vinylidene fluoride (THV) or ethylene tetrafluoroethylene (ETFE) or ethylene chlorotrifluoroethylene (ECTFE) or fluorinated ethylene propylene (FEP) or perfluoroalkoxy alkane(PFA) or any combination thereof or copolymers thereof (Paras. [0145],[0146]).
Claim Rejections - 35 USC § 103
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) 5-7, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki in view of Park (US Pub. No. 2007/0045967).
Regarding claims 5 and 18, the Suzuki reference, as best understood, discloses the invention substantially as claimed in claims 1 and 14.
However, the Suzuki reference fails to explicitly disclose the low-melt fluoropolymer material comprises PVDF-HFP co-polymer.
The Park reference, a coating for a seal, discloses that PVDF and PVDF-HFP co-polymers are known equivalents (Para. [0074]).
It would have been obvious to one of ordinary skill in the art at the time of filing to replace the PVDF with PVDF-HFP co-polymer in the Suzuki reference in view of the teachings of the Park reference since the materials are known equivalents and would provide predictable results.
Regarding claims 6, 7 and 19, the Suzuki reference, as best understood, discloses the invention substantially as claimed in claims 1 and 14.
However, the Suzuki reference fails to explicitly disclose an inner surface of the first outer layer adjacent to the first surface of the core layer or an outer surface of the first outer layer opposite of the first surface of the core layer is a corona treated surface, a plasma treated surface or any combination thereof.
The Park reference, a coating for a seal, discloses using plasma or corona to form the layer (Para., [0055]).
It would have been obvious to one of ordinary skill in the art at the time of filing to use corona or plasma to make the layer in the Suzuki reference in view of the teachings of the Park reference in order to ensure a strong bond between the core and outer layer and since the methods are well known in the art.
Response to Arguments
Applicant's arguments filed 4/27/26 have been fully considered but they are not persuasive.
With regards to the applicant’s argument of the 35 U.S.C. § 112(a) rejection, the argument is not found persuasive. The current disclosure fails to disclose how the claimed properties are achieved. The current disclosure does disclose that “the low-melt fluoropolymer material may have a melting temperature of not greater than about 300° as measured using differential scanning calorimetry (DSC) according to ASTM D4591”; however, this statement only provides a standard to measure a material. It does not enable one of ordinary skill in the art to formulate a material to meet that standard. The current disclosure does also list examples that the material may include, but it does not enable one of ordinary skill in the art to formulate a material having the claimed properties.
Applicant further argues that the specification provides specific guidance of how the claimed properties are achieved. This argument strengthens the rejection. The applicant lists different properties and treatments that the material may include, but none of it enables one of ordinary skill in the art to formulate a material having the claimed properties.
With regards to the applicant’s argument of the 35 U.S.C. § 112(b) rejection, the argument is not found persuasive. Although the specification discloses different standards of measurement, the specification doesn’t disclose how the material achieves the different properties. The disclosure states different materials and treatments that the final material may include, but it is unclear to one of ordinary skill in the art as to how the properties are achieved. For example is it the chemical composition, the addition treatment layer, different processes done to the material, etc.? Furthermore, the listed materials are infinite because it states “any combination thereof or copolymers thereof.
With regards to the applicant’s argument of the rejection of claims 1, 14, and 20, the argument is not persuasive because the claims only require two layers. Element 7 is considered the core layer and the protective layer is considered the first outer layer. Applicant seems to argue that that more than two layers are claimed; however, the claims only require two layers.
Applicant further argues that the claimed material is not disclosed in the Suzuki reference, this argument is not persuasive because Para. [0146] clearly states “a material of such a protective layer may also be selected from among the materials for the gasket 7.” One of ordinary skill in the art would understand that the reinforcing material is a part of the gasket material.
Applicant further argues that the Suzuki gasket is fundamentally different from the claimed multiplayer gasket. This argument is not persuasive because, as rejected, the Suzuki reference discloses all of the claimed structural limitations of a multilayered gasket. The claims do not require more than two layers.
With regards to the applicant’s argument of the Suzuki in view of Park, the argument is not persuasive because the Park reference is only being used as a teaching of known equivalent materials of a seal.
The argument of the 35 U.S.C. § 112(a) rejection of claim 20, regarding the lack of forming methods is persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 GILBERT Y LEE whose telephone number is (571)272-5894. The examiner can normally be reached Monday-Friday 8am-430pm.
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, Christine Mills can be reached at (571)272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GILBERT Y LEE/Primary Examiner, Art Unit 3675
Prosecution Insights