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 .
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.
Claim1 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim claims 1, 7 and 8 of copending Application No. 18/991,210. Although the claims at issue are not identical, they are not patentably distinct from each other because They are both directed towards window or door hollow chamber profiles.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Application 18/991,210 discloses a window or door hollow chamber profile, comprising (a) a core profile comprising a plastic matrix formed of a thermoplastic polyamide material and reinforcing fibers contained in the plastic matrix; and (b) a sheath profile at least partially sheathing the core profile and made of a thermoplastic material compatible with the plastic material of the core profile, wherein characterized in that the thermoplastic material of the sheath profile compatible with the plastic material of the core profile is a blend of a polyamide material and an acrylonitrile- styrene-acrylic ester terpolymer (ASA) (Claims 1 and 8) as in claim 1. With respect to claim 6, the polyamide of the core profile is selected from the group comprising polyamide-6 (PA 6), polyamide-6.6 (PA 6.6), polyamide-6.10 (PA 6.10), polyamide-4.6 (PA 4.6), polyamide-12 (PA 12) and blends of the aforementioned polyamides (Claim 8).
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.
Claims 1 and 3 – 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Al-Sheyyab et al. (EP 3311992 A1).
A machine-generated translation of EP 3311992 A1 accompanies this action. In reciting this rejection, the examiner will cite this translation.
Al-Sheyyab et al. discloses a window or door hollow chamber profile (Paragraphs 0001 and 0021; Figure 3) comprising (a) a core profile comprising a plastic matrix formed of a thermoplastic polyamide material and reinforcing fibres contained in the plastic matrix (Abstract; Paragraphs 0004 and 0006); and (b) a sheath profile at least partially sheathing the core profile and made of a thermoplastic material compatible with the plastic material of the core profile (Paragraph 0007), wherein in that the thermoplastic material of the sheath profile compatible with the plastic material of the core profile is a blend of a polyamide material and an acrylonitrile- styrene-acrylic ester terpolymer (ASA) (Paragraphs 0007 and 0008) as in claim 1. With respect to claim 3, the thickness of the sheath profile is within a range from 0.3 mm to 1.5 mm (Paragraph 0004). Regarding claim 4, a weather-side outer wall and/or a room-side outer wall are at least partially formed by the sheath profile (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Al-Sheyyab et al. discloses hollow rail as part of freezer, which includes a door). For claim 5, the weather-side surface of the weather-side outer wall and/or the room-side surface of the room-side outer wall are formed by a layer of the sheath profile (A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Al-Sheyyab et al. discloses hollow rail as part of freezer, which includes a door). In claim 6, the polyamide of the core profile (30) is selected from the group comprising polyamide-6 (PA 6), polyamide-12 (PA 12) and blends of the aforementioned polyamides (Paragraph 0006). With regard to claim 7, the profile is produced by means of extrusion, coextrusion or pultrusion, in particular by means of reactive pultrusion (Paragraph 0008). As in claim 8, the reinforcing fibres are formed as glass and/or carbon (Paragraph 0004). With respect to claim 9, window or door frame, which is formed from portions of a window or door hollow chamber profile (1) according to claim 1 (Paragraphs 0001 and 0021; Figure 3).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Al-Sheyyab et al. (EP 3311992 A1) in view of Conroy et al. (USPN 5,522,196).
Al-Sheyyab et al. discloses a window or door hollow chamber profile (Paragraphs 0001 and 0021; Figure 3) comprising (a) a core profile comprising a plastic matrix formed of a thermoplastic polyamide material and reinforcing fibres contained in the plastic matrix (Abstract; Paragraphs 0004 and 0006); and (b) a sheath profile at least partially sheathing the core profile and made of a thermoplastic material compatible with the plastic material of the core profile (Paragraph 0007), wherein in that the thermoplastic material of the sheath profile compatible with the plastic material of the core profile is a blend of a polyamide material and an acrylonitrile- styrene-acrylic ester terpolymer (ASA) (Paragraphs 0007 and 0008). However, Al-Sheyyab et al. fail to disclose the plastic material of the sheath profile contains the acrylonitrile-styrene-acrylic ester terpolymer (ASA) in a proportion of 10% by weight to 65% by weight, in relation to the weight of the sheath profile as 100% by weight.
Conroy et al. a window or door hollow chamber profile (Abstract; Figures) having a plastic material of the sheath profile contains the acrylonitrile-styrene-acrylic ester terpolymer (ASA) in a proportion of 10% by weight to 65% by weight, in relation to the weight of the sheath profile as 100% by weight (Column 5, lines 13 – 17) for the purpose having a weather and ultra-violet light resistant profile (Column 3, lines 42 – 44).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a sheath profile of acrylonitrile-styrene-acrylic ester terpolymer (ASA) in a proportion of 10% by weight to 65% by weight on the profile of Al-Sheyyab et al. in order to have a weather and ultra-violet light resistant profile as taught by Conroy et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Patricia L Nordmeyer whose telephone number is (571)272-1496. The examiner can normally be reached 10am - 6:30pm EST, Monday - Friday.
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 July 16, 2026
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