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 claims 1-13 in the reply filed on 11/17/25 is acknowledged. The traversal is on the ground(s) that: a) at least certain novel and inventive features of the claimed product enable novel and inventive aspects of the claimed method; and b) there is no undue burden on the Examiner to consider them together. This is not found persuasive because there is a search and/or examination burden for the patentably distinct groups as set forth above because at least the following reasons apply: The subject matter of patentably indistinct groups have acquired a separate status in the art in view of their different classification (i.e. group I relates to the structural features of a form seal itself and group II relates to a method of placing a seal within a device that include various steps to complete the assembly).
Also note, examination is not limited simply to search. In addition to the search, much of the examination is devoted to determining patentability of claims. Said determination requires the formulation of rejections and responding to applicant’s arguments with regard to same. The additional search and the determination of patentability for multiple, patentability groups would place serious burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
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 1-13 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 1 recites the limitation "the outer dimensions or outer diameter" in line 7. There is insufficient antecedent basis for this limitation in the claim.
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) 1-5, 7-9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP 59086754).
Regarding claim 1, Ito discloses a form seal 1 for sealing a gap between a component, which can be inserted or is inserted into a recess 202 of a part 2 and includes a groove arranged on an outer edge, and the part, which delimits the recess on all sides on the outside, which recess is open to the environment on a front side, the form seal comprising: an annular first sealing region 106 capable of sealing a front portion of the gap, which is capable of facing the environment, wherein first sealing region includes a front region adjoining a front side 108 of the form seal, the outer dimensions or outer diameter of which decrease in a direction of the front side; a second sealing region 112 projecting radially inward from an inner side of the first sealing region and adapted as a spring, which is complementary to the groove of the component; and a third sealing region 103 adapted to support a rear side of the form seal, which third sealing region adjoins the first sealing region on a boundary of the first sealing region facing away from the front side. However, Ito fails to explicitly disclose the arrangement of the form seal within a groove. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the arrangement of the seal within the assembly to cater to a desired sealing location and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Regarding claim 2, Ito as modified discloses wherein the first sealing region 106 includes, on the boundary of the front region facing away from the front side of the form seal 1, a rear region which is adjoined on the inner side by the second sealing region 112 and whose radial width corresponds to a maximum radial width of the front region of the first sealing region.
Regarding claim 3, Ito as modified discloses wherein the second sealing region 112 includes a projection formed on an inner edge thereof, which projects in a direction facing away from the front side of the form seal 1. Regarding claim 4, Ito as modified discloses wherein the third sealing region 103 has, over an entire axial height thereof, external dimensions in a radial direction that are smaller than the outer dimensions of the first sealing region 106.
Regarding claim 5, Ito as modified discloses wherein the third sealing region 103 includes: a cross-sectional geometry that corresponds to a generally triangular shape with one side (adjacent 105) facing the first sealing region 106 and two sides 104 each inclined relative to a longitudinal axis of the form seal, a rounded or flattened rear side facing away from the first sealing region; and/or on the one side facing the first sealing region, a radially inwardly facing inner surface area extending parallel to a radially inwardly facing inner surface area of the front region of the first sealing region adjoining the front side and/or is arranged offset outward relative to the inner surface of the front region of the first sealing region in the radial direction by a distance, wherein the distance is a predetermined distance, is 0.05 mm to 0.20 mm, and/or is dimensioned such that the inner surface area of the third sealing region only rests against the component when the form seal surrounding the component on all sides on the outside is compressed in the radial direction and/or is clamped within the recess.
Regarding claim 7, Ito as modified discloses wherein the front 108 is planar and/or is dimensioned such that the front side of the form seal facing the environment in an assembled state of the form seal is planar, is flush with a front side of the component facing the environment, and/or is flush with an outer surface of the part surrounding the front side of the form seal on all sides. Regarding claim 8, Ito as modified discloses a device comprising: a form seal 1; the component with the groove 202 arranged on the outer edge; and the part with the recess open to the environment, into which the component is introduced with interposition of the form seal surrounding the component on all sides on the outside.
Regarding claim 9, Ito as modified discloses wherein the recess 202 includes a region facing the environment, the dimensions or diameter of which decrease in a direction facing the environment.
Regarding claim 12, Ito as modified discloses wherein: the front side of the form seal 1 facing the environment is planar, is flush with a front side of the component facing the environment, and/or is flush with an outer surface of the part surrounding the front side of the form seal on all sides on the outside; and/or the third sealing region 103 adjoins a stop surface on the side facing away from the first sealing region, wherein at least one of: the form seal has, in a radial region comprising the third sealing region, an axial height in the axial direction adapted to a depth of the radial region of the part recess delimited at the rear by the stop surface; the stop surface is a surface of the part including the part recess or of another part of the device; and at least an outer edge of the component rests against the stop surface.
Allowable Subject Matter
Claims 6, 10 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: In view of a review of the prior art by the Examiner; the prior art of record neither teaches nor suggests all of the claimed subject matter of claims 6, 10 and 11 including where an annular circumferential groove with rounded cross-sectional geometry in an inner side in a transition region between the first sealing region and the third sealing region adjoining the second sealing region and the component includes a recess adjoining the groove with a shape complementary to a shape of the projection. There is no motivation to modify the prior art references, absent the applicant’s own disclosure, in the manner required by the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENE G BYRD whose telephone number is (571)270-1824. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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/EUGENE G BYRD/Primary Examiner, Art Unit 3675