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 Interpretation
Claim 8 requires the core profile be “first produced by means of a strand production process” (l. 3 of the claim). The phrase “strand production process” does not appear in the instant specification, but processes such as extrusion, coextrusion, and pultrusion are mentioned for forming the core profile (e.g. p. 8, last paragraph). For purposes of this examination, the examiner considers a teaching for such processes as sufficient for meeting the requirement of a strand production process.
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 2 and 9 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.
Regarding claim 2, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “the surface resistance of the core profile…is at most 108 Ω”, and the claim also recites “at most 106 Ω” which is the narrower statement of the range/limitation. This claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. This is particularly complicated by the fact claim 2 uses “preferably” before the range of “at most 106 Ω”.
Regarding claim 9, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “the core profile is produced by means of extrusion, coextrusion or pultrusion”, and the claim also recites “by means of reactive pultrusion” which is the narrower statement of the range/limitation. These claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. This is particularly complicated by the fact claim 9 uses “in particular” before “by means of reactive pultrusion”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 2, claim 2 recites “the surface resistance of the core profile according to DIN EN 62631-3-2:2016-10 is at most 108 Ω, preferably at most 106 Ω” (cl. 2, ll. 2 – 3). Claim 1, upon which claim 2 directly depends, recites “the core profile is electrically conductive or statically conductive at least on its surface” (cl. 1, ll. 7 – 8).
The paragraph bridging pp. 2 – 3 of the instant specification states the following definition, in relevant part:
As used herein, the term “surface resistance” means the electrical resistance measured on the surface of the core profile according to DIN EN 62631-3-2:2016-10, in particular using the “ring electrode” method. In this context, as used herein, the term “electrically conductive” surface is used when the surface resistance is in the range from 102 Ω to 106 Ω. Likewise, as used herein, the term “statically conductive” surface is used in this context if the surface resistance is in the range between 106 and 108 Ω. The lower limit of the surface resistance is preferably 102 Ω, in particular 5*102 Ω.
Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999) (meaning of words used in a claim is not construed in a “lexicographic vacuum, but in the context of the specification and drawings”). MPEP § 2111.01, IV, A.
Accordingly, “electrically conductive” and “statically conductive” in claim 1 refer to a surface resistance according to DIN EN 62631-3-2:2016-10 that ranges from 102 Ω to 108 Ω.
Claim 2 sets forth only the upper bound for the surface resistance without reciting a lower bound. Accordingly, claim 2 fails to properly further limit claim 1 in that the recited range(s) permit surface resistances below 102 Ω as required by the phrase “electrically conductive or statically conductive”. Additionally or alternatively, no new upper bound is set forth with the recited ranges.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The examiner makes the following recommendations to improve claims 2 and 9 to overcome the above deficiencies:
With respect to claim 2, the examiner recommends amending claim 2 to recite a single range which is narrower than defined by “electrically conductive or statically conductive”, i.e. narrower than 102 Ω to 108 Ω. As a non-limiting example considering only that in the instant specification, the instant specification as highlighted above mentions a particular lower limit of 5*102 Ω, so an appropriate narrower range for Applicant’s purposes may be 5*102 Ω to 108 Ω. Alternatively, the surface resistance in claim 2 can be defined such that the range is consistent with exclusively “electrically conductive” or “statically conductive”.
With respect to claim 9, the examiner recommends amending claim 9 to remove “in particular by means of reactive pultrusion”. If reactive pultrusion as a particular embodiment is desired to be claimed, this is better set forth in a claim specifically requiring reactive pultrusion.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 4, 5, and 7 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (DE 10 2016 119 766 A1, referencing a machine translation thereof provided with this Office Action) in view of Möller (US 2020/0298272 A1).
Regarding claim 1, Schmidt discloses a window or door hollow chamber profile (“hollow chamber profile” for windows or doors, e.g. “hollow chamber profile” 1: e.g. Fig. 1 – 3c; ¶¶ [0007] – [0029]), comprising
a core profile with a plastic matrix formed from plastic material and reinforcing fibres contained in the plastic matrix (“core profile” with a “thermoplastic matrix” which is “fiber-reinforced”, e.g. “core profile” 10 with “thermoplastic matrix” 4 and “reinforcement fibers” 5: e.g. Fig. 1 – 3c; ¶¶ [0008] – [0019], [0022] – [0026]).
Although Schmidt permits the window or door hollow chamber profile to comprise coatings which at least partially sheath the core profile (“coating”, e.g. “coating” 12: e.g. Fig. 1 – 3c; ¶¶ [0008] – [0010], [0012] – [0019], [0022] – [0027]), Schmidt is not specific as to the window or door hollow chamber profile specifically comprising a sheath layer in the form of a powder coating which at least partially sheathes the core profile, wherein the core profile is electrically conductive or statically conductive at least on its surface.
However, this feature would have been obvious in view of Möller.
Möller discloses a window or door profile (“polymer-based substrate”: e.g. Fig. 1 – 7; ¶¶ [0015] – [0194]; ¶ [0085] mentions use with windows or doors) comprising
a core profile with a plastic matrix formed from plastic material and reinforcing fibres contained in the plastic matrix (“substrate base body” with a “two- or multi-layer coating”, e.g. “substrate base body” 12 with “two- or multi-layer coating” 18, 38, 58, 78, 98: e.g. ¶¶ [0018] – [0020], [0027], [0036] – [0042], [0064], [0068] – [0081], [0083], [0085] – [0092], [0094], [0098] – [0105], [0107] – [0109], [0111], [0114], [0115], [0117], [0118], [0120] – [0122], [0125] – [0128], [0138] – [0147], [0152], [0153], [0155], [0157] – [0175], [0178], [0179], [0181], [0183] – [0192]) and
a sheath layer in the form of a powder coating which at least partially sheathes the core profile, wherein the core profile is electrically conductive or statically conductive (“lacquer layer”: e.g. ¶¶ [0015], [0017], [0018], [0029] – [0034], [0048], [0074], [0077], [0083], [0097] – [0100], [0103], [0105], [0106] – [0114], [0117], [0119], [0136], [0148], [0165], [0166], [0174], [0177], [0179], [0182], [0185], [0192] – [0194]).
As to the core profile being electrically conductive or statically conductive, Möller discloses the surface resistance of the core profile is at most 1010 Ω (ohm), e.g. at most 108 Ω or less or at most 107 Ω (e.g. ¶¶ [0018], [0021], [0025], [0035], [0109], [0153], [0167], [0176]).
The paragraph bridging pp. 2 – 3 of the instant specification defines, in relevant part, the following:
As used herein, the term “surface resistance” means the electrical resistance measured on the surface of the core profile according to DIN EN 62631-3-2:2016-10, in particular using the “ring electrode” method. In this context, as used herein, the term “electrically conductive” surface is used when the surface resistance is in the range from 102 Ω to 106 Ω. Likewise, as used herein, the term “statically conductive” surface is used in this context if the surface resistance is in the range between 106 and 108 Ω. The lower limit of the surface resistance is preferably 102 Ω, in particular 5*102 Ω.
Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999) (meaning of words used in a claim is not construed in a “lexicographic vacuum, but in the context of the specification and drawings”). MPEP § 2111.01, IV, A.
The terms “electrically conductive” and “statically conductive” in claim 1 therefore define the core layer profile to be, at least on its surface, to have a surface resistance according to DIN EN 62631-3-2:2016-10 that ranges from 102 Ω to 108 Ω. Möller’s surface resistance ranges cited above either encompass or overlap this range. Accordingly, Möller is considered to describe a core profile which is electrically conductive or statically conductive at least on its surface.
This is particularly important since Möller uses such a surface resistance to improve lacquerability, i.e. improve adhesion of the sheath layer to the core profile (e.g. ¶¶ [0015], [0017], [0029], [0032], [0100], [0103], [0106]). Given a sheath layer which is a “lacquer” serves decorative and corrosion protection purposes (Möller: e.g. ¶¶ [0003], [0172], [0173]), improving adhesion of the sheath layer to the core profile thus also would have been understood to improve the durability of these properties.
Accordingly, it would have been obvious to modify Schmidt’s window or door hollow chamber profile to comprise a sheath layer in the form of a powder coating which at least partially sheathes the core profile, wherein the core profile is electrically conductive or statically conductive at least on its surface as Möller suggests. The rationale for this modification is to improve the durability of decorative and corrosion protection properties for the window or door hollow chamber profile.
Regarding claim 2, in addition to the limitations of claim 1, as noted in 35 U.S.C. 103 rejection of claim 1 in view of Schmidt and Möller, Möller discloses the surface resistance of the core profile is at most 1010 Ω (ohm), e.g. at most 108 Ω or less or at most 107 Ω (e.g. ¶¶ [0018], [0021], [0025], [0035], [0109], [0153], [0167], [0176]).
Although Möller is not specific as to measuring this surface resistance according to DIN EN 62631-3-2:2016-10, as explained in the 35 U.S.C. 103 rejection of claim 1 in view of Schmidt and Möller, Möller notes one advantage of the surface resistance is improved adhesion of the sheath layer to the core profile (e.g. ¶¶ [0015], [0017], [0029], [0032], [0100], [0103], [0106]). This is also a purpose of the surface resistance in the instant specification (e.g. p. 3, ¶ 1).
Accordingly, one of ordinary skill in the art would have understood Möller’s surface resistance is representative of a surface resistance according to DIN EN 62631-3-2:2016-10 as claimed.
The ranges Möller offers for the surface resistance encompass or overlap the claimed ranges.
These ranges encompass or overlap the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 4, in addition to the limitations of claim 1, Möller discloses the core profile comprises an outer layer containing electrically conductive particles (“bonding layer” or “layer with electrically conductive material”: e.g. ¶¶ [0018] – [0020], [0028], [0036] – [0039], [0042] – [0047], [0049] – [0070], [0078], [0080], [0086] [0107], [0118], [0167], [0169] ,[0172] – [0175], [0178], [0181], [0184]).
Although Möller is not explicit as to the electrically conductive particles being in a proportion of 0.5% by weight to 50% by weight, in relation to the weight of the outer layer as 100% by weight, Möller acknowledges the amount of electrically conductive particles may be provided in an adhesive (e.g. ¶¶ [0068], [0069]) and thus must balance two competing properties. The first property is the resulting electrical conductivity, and the second property is the adhesion to the “substrate base body” in Möller’s core profile. These properties must be balanced for the same reasons as outlined for the inclusion of the sheath layer Möller discloses, namely as weak electrical conductivity and weak adhesion will compromise retention of the sheath layer.
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See also MPEP § 2144.05, II, A.
Accordingly, it would have been obvious for the electrically conductive particles to be in a proportion of 0.5% by weight to 50% by weight, in relation to the weight of the outer layer as 100% by weight, e.g. to balance properties for retaining the sheath layer as part of the core profile.
Regarding claim 5, in addition to the limitations of claim 4, Schmidt discloses the thickness of the outer layer of the core profile is within a range of at most 5 mm, e.g. at most 2 mm or at most 1 mm (e.g. ¶¶ [0009], [0014], [0015]).
These ranges encompass or overlap the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 7, in addition to the limitations of claim 1, Schmidt discloses the plastic matrix of the core profile is formed as, e.g., a poly(meth)acrylate matrix (e.g. ¶¶ [0011], [0012], [0022], [0023]).
Regarding claim 8, Schmidt discloses a method for producing a window or door hollow chamber profile as discussed above with respect to claim 1, wherein the core profile is first produced by means of a strand production process (e.g. ¶¶ [0008], [0009], [0022]).
Given Möller needs the core profile to be electrically conductive to allow the sheath layer to be applied, as discussed in the 35 U.S.C. 103 rejection of claim 1, it follows the sheath layer should be applied in the form of a powder coating after the strand production process in order to use such electrical conductivity.
Regarding claim 9, in addition to the limitations of claim 8, Schmidt discloses the core profile is produced by means of, e.g., pultrusion, in particular by means of reactive pultrusion (e.g. ¶¶ [0008] – [0011], [0013], [0022]). Möller likewise discloses pultrusion (e.g. ¶¶ [0092], [0096], [0140])
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt and Möller as applied to claim 1 above, and further in view of Maeda (JP S58-176224 A, referencing a machine translation thereof provided with this Office Action).
Regarding claim 3, although Schmidt and Möller are not explicit as to the plastic material of the core profile containing electrically conductive particles in a proportion of 0.5% by weight to 50% by weight, in relation to the weight of the core profile as 100% by weight, this feature would have been obvious in view of Maeda.
Maeda adds, e.g., carbon black as an electrically conductive particle to a plastic material in a proportion of 5% by weight to 50% by weight in relation to the weight of the plastic material to lower surface resistance and provide high adhesion strength for an electrostatic coating (e.g. § Description, pp. 2 – 5).
Given Möller’s sheath layer is applied through electrostatic processes (e.g. ¶¶ [0030], [0100], [0103], [0105], [0106], [0110], [0123], [0158], [0160], [0165], [0166]), it would have therefore been obvious to modify the plastic material of Schmidt’s core profile to further contain electrically conductive particles, e.g. carbon black, in a proportion of 0.5% by weight to 50% by weight, in relation to the weight of the core profile as 100% by weight, in order to further ensure adhesion of the sheath layer Möller suggests providing.
Regarding claim 6, in addition to the limitations of claim 3, Maeda discloses the electrically conductive particles are, e.g., electrically conductive carbon black particles (e.g. § Description, p. 3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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, Veronica Ewald can be reached at 571-272-8519. 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.
/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
Prosecution Insights