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 16 objected to because of the following informalities: line 2 recites “iron”, which should be changed to –ion— per applicant’s disclosure and general understanding in the battery arts. Appropriate correction is required.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,295,511. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘511 teaches, in combination, the limitations of claims 1, 2, 7, 11, 12, 14, and 18. Claims 3-6, 8-10, 13, 15-17, 19, 20 are taught by claims 2-11, 6, 12, and 13 of ‘511.
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 1-16 and 19-20 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 “a heater plate” in line 4, but does not define whether this refers to the heater plate of line 2 or requires an additional heater plate.
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 3 recites the broad recitation “less than at least one of … 500 J/K”, and the claim also recites “less than at least one of … 250 J/K, 300 J/K, 350 J/K”, which is the narrower statement of the range/limitation. The claim(s) 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.
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 4 recites the broad recitation “greater than at least one of … 300 J/K”, and the claim also recites “at least one of 150 J/K, 200 J/K, 250 J/K”, which is the narrower statement of the range/limitation. The claim(s) 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.
Claim 5 recites “substantially 400 J/K”, but “substantially” means “to a great or significant extent”, so the claim does not define whether this requires “about 400 J/K” or if most of the time the value is 400 J/K, and sometimes not.
Claim 14 recites the limitation "the base plate" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the second piece of carpet" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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, 6-8, 13-14, and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by IZARD et al. (US 2019/0111634).
Regarding claims 1, 6-8, and 17-18 IZARD teaches an iron comprising an aluminum heater base plate 120, heating element 125 between the heater plate and a heat shield 130, a housing comprising heat plate 120 and heater shroud 135, wherein the shield 130 and heating element 125 are located within the housing (paras. 17-18; fig. 2).
Regarding claim 13, IZARD teaches the heater comprises plural copper “tubes” through which electricity is passed so as to produce heat (paras. 18 and 33; fig. 2), where such tubes must inherently be resistors.
Regarding claim 14, IZARD teaches a battery, temperature sensor, and power controller (heat setting actuator 240; para. 37).
Regarding claim 19, IZARD teaches arranging adjacently a first and second piece of carpet, disposing a length of carpet seaming tape beneath the first and second carpet at a common boundary, and heating the pieces at the common boundary (para. 16) with the iron of claim 1 (above).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-5, 11, 15-16, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over IZARD as applied to claim 1 above.
Regarding claims 2-5, IZARD does not teach the base plate comprises a thermal mass greater than 150 J/K, less than 500 J/K, or 400 J/K. IZARD teaches a base plate that comprises aluminum (para. 17), where aluminum has a heat capacity of approximately 0.9 J/g-K. Utilizing aluminum, the limitations equate to utilizing a base plate comprising approximately more that 167g, less than 556g, or 444g. It would have been obvious to one of ordinary skill in the art at the time of the art to select a base plate comprising the range of masses claimed because it has been held per se obvious to change the dimensions of a prior art reference (MPEP 2144.04), and there would have been a reasonable expectation of performing a heat sealing in the same manner utilizing aluminum base plates of the various thermal masses claimed.
Regarding claim 11, IZARD does not explicitly describe the heat shield as comprising a slab, IZARD shows a unitary insulation layer 130 (fig. 2), where it would have been obvious to one of ordinary skill in the art at the time of the invention that the layer 130 is equivalent to a slab, or alternatively it would have been per se obvious for the insulation layer to be separable as a slab (MPEP 2144.04).
Regarding claim 15, IZARD does not teach the controller is a PID controller, but it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a PID controller as the controller of IZARD because PID controllers were well-known, commonly utilized controllers for heater control systems at the time of the invention.
Regarding claim 16, IZARD does not teach the battery is a lithium-ion polymer battery. However, IZARD teaches utilizing a battery pack 255 (para. 26), where it would have been obvious to one of ordinary skill in the art at the time of the invention to use a well-known lithium-ion polymer battery as the battery pack of IZARD.
Regarding claim 20, IZARD does not explicitly disclose softening the tape, it would have been obvious to one of ordinary skill in the art at the time of the invention that the carpet seaming tape softens in order to perform an adhesive function intended by seaming tape.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over IZARD as applied to claim 7 above, and further in view of PAPULSKI (US 5,294,284).
Regarding claims 9-10, IZARD does not teach the heat shield comprising a membrane. PAPULSKI teaches a carpet heating iron comprising a polytetrafluoroethylene (Teflon), wherein it would have been obvious to include such a membrane in the heat shield in order to improve the heat resistance of the shield and prevent air gaps (col. 1, lines 10-19; col. 2, lines 15-32).
Allowable Subject Matter
Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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: the prior art of record does not teach or fairly suggest a carpet seaming iron as claimed wherein the heat shield system comprises at least one heat shield slab comprising phenol formaldehyde resin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nickolas R Harm whose telephone number is (571)270-7605. The examiner can normally be reached 10:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICKOLAS R HARM/Examiner, Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
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