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 .
Claim Objections
Claim 1 objected to because of the following informalities:
In claim 1, ln 12-13, “the air knife being arranged with respect to the chill roll so that at the location where air exiting the air knife along the discharge axis impinges upon the chill roll” should read --the air knife being arranged with respect to the chill roll so that, at the location where air exiting the air knife along the discharge axis impinges upon the chill roll,--
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 6-9 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 "the discharge channel", "the housing", "the chamber", and "the inlet opening". There is insufficient antecedent basis for these limitations in the claim. For the purpose of compact prosecution, the claim has been interpreted to depend from claim 3.
Claim 7 recites the limitations "the chamber" and "the housing"". There is insufficient antecedent basis for these limitations in the claim. For the purpose of compact prosecution, the claim has been interpreted to depend from claim 3.
Claim 8 recites the limitation "the discharge channel". There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, claim 7 has been interpreted to depend from claim 3.
Claim 9 recites the limitations "the housing", "the discharge channel", and "the direction of flow of the air under pressure". There is insufficient antecedent basis for these limitations in the claim. For the purpose of compact prosecution, the claim has been interpreted to depend from claim 3.
All claims dependent on the above rejected claims are rejected as well because they include all the limitations of the rejected claims.
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) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scheibner et al. (US4676851) hereinafter Scheibner.
Regarding claim 1, Scheibner teaches:
Apparatus for making a film comprising:
a container for holding a quantity of polymeric material heated so as to be in a flowable state (Fig 2: extrusion die 10);
a die in fluid communication with the container for receiving polymeric material from the container and extruding the polymeric material into a thin and flat web exiting the die (Fig 2: unlabeled film die orifice, film 12; col 6, ln 40-44);
a chill roll adjacent to the die for receiving the web exiting the die, the chill roll being cooled to a temperature that promotes transition of the polymeric material in the web to a more solid state in which the web of material is capable of retaining its shape under the force of gravity, the chill roll being mounted for rotation in an operating direction (Fig 1-2: casting cylinder 11; the casting cylinder 11 is at a temperature sufficient for the film 12 to stay attached to the underside of casting cylinder 11 as seen in Fig 1); and
an air knife located adjacent to the chill roll and configured with respect to the chill roll for directing an elongate flow of air from the air knife along a discharge axis onto the web on the chill roll (Fig 2: air knife 16), the air knife being arranged with respect to the chill roll so that, at the location where air exiting the air knife along the discharge axis impinges upon the chill roll, a component of the motion of the air resolved to be tangent to a surface of the chill roll at the impingement location is in the same direction as the operating direction in which the chill roll rotates (Fig 2: col 5, ln 51-67).
Regarding claim 2, Scheibner teaches the apparatus of claim 1.
Scheibner does not explicitly recite wherein the air knife is arranged with respect to the chill roll so that the elongate flow of air from the air knife impinges upon the web at a longitudinal edge of the web.
However, "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing 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" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See MPEP 2114. The air knife of Scheibner produces a component of the motion of the air resolved to be tangent to a surface of the chill roll at the impingement location which is in the same direction as the operating direction in which the chill roll rotates (Fig 2: col 5, ln 51-67). Therefore, when a longitudinal edge of the film is formed, the structure of the prior art air knife is capable of performing the claimed function.
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 3-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12162192 in view of Scheibner.
Claim 3 of the instant application is made obvious claim 1 of the ‘192 patent in view of Scheibner.
Claim 4 of the instant application is made obvious claim 3 of the ‘192 patent in view of Scheibner.
Claim 5 of the instant application is made obvious claim 4 of the ‘192 patent in view of Scheibner.
Claim 6 of the instant application is made obvious claim 7 of the ‘192 patent in view of Scheibner.
Claim 7 of the instant application is made obvious claim 8 of the ‘192 patent in view of Scheibner.
Claim 8 of the instant application is made obvious claim 9 of the ‘192 patent in view of Scheibner.
Claim 9 of the instant application is made obvious claim 10 of the ‘192 patent in view of Scheibner.
Claim 10 of the instant application is made obvious claim 11 of the ‘192 patent in view of Scheibner.
Claim 11 of the instant application is made obvious claim 12 of the ‘192 patent in view of Scheibner.
Claim 12 of the instant application is made obvious claim 13 of the ‘192 patent in view of Scheibner.
Claim 13 of the instant application is made obvious claim 14 of the ‘192 patent in view of Scheibner.
Claim 14 of the instant application is made obvious claim 15 of the ‘192 patent in view of Scheibner.
Claim 15 of the instant application is made obvious claim 16 of the ‘192 patent in view of Scheibner.
Claim 16 of the instant application is made obvious claim 17 of the ‘192 patent in view of Scheibner.
Claim 17 of the instant application is made obvious claim 18 of the ‘192 patent in view of Scheibner.
Claim 18 of the instant application is made obvious claim 19 of the ‘192 patent in view of Scheibner.
Claim 19 of the instant application is made obvious claim 20 of the ‘192 patent in view of Scheibner.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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/ALEXANDER A WANG/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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