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 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 15-19 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 pre-AIA the applicant regards as the invention.
Claim 15 recites the limitation “the step of producing” in line 1. There is insufficient antecedent basis for this limitation in the claim because there is no earlier recitation of the limitation. MPEP 2173.05(e). For compact prosecution, the limitation has been examined as if it read --a step of producing--. Claims 16-19 which depend from claim 15 are similarly rejected.
Claim 15-18 recites the limitation “a component” and “the component.” There is insufficient antecedent basis for this limitation in the claim because it is unclear which of the different various component recited earlier in the claim 1 was intended.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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:
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.
Claims 1-6 and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Harada (JP2002283473A - of record) in view of Dua (US 2010/0199520 A1 - of record).
Regarding claims 1-3, 6 and 9-10, Harada teaches a method for recycling a shoe, the shoe comprising various components, the method comprising milling the shoe to obtain a plurality of particles, the particles having different material densities; mixing the particles; applying heat to the mixed particles to obtain a melt of molten particles; extruding the melt; wherein the method further comprises adding new material to the mixed particles, to the melt, or to the mixed particles and the melt; wherein the new material is from a different material class than the same material class; and wherein the new material is unrecycled material of the same material class as the shoe. (¶0013-0032).
Harada does not specify a method wherein the shoe comprises various components made from the same material class with varying densities nor wherein the particles having different material densities.
However, in the same field of endeavor, shoe comprises various components made from the same material class with varying densities, Dua teaches non-woven textile 100 having a variety of densities and formed from various thermoplastic polymer materials (¶0177).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to substitute the material taught by Harada with the non-woven textile having a variety of densities taught by Dua such that the various components are made from the same material class with varying densities and, thus, wherein the particles having different material densities, since the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP 2144.07.
Regarding claims 4-5, as applied to claim 1, while Harada in view of Dua does not disclose wherein the extruding the melt comprises a plurality of extrusion steps with different processing parameters nor applying heat and pressure to the shoe prior to the milling, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the combination to include a plurality of extrusion steps with different processing parameters and applying heat and pressure to the shoe prior to the milling with a reasonable expectation of success in order to manage the physical transformation of the raw materials.
Regarding claims 11-14, as applied to claim 1, while Harada in view of Dua disclose a shoe comprising a boot body and a lining, the combination does not explicitly disclose wherein at least 70% of the weight of the shoe is made from the same material class; wherein at least 80% of the weight of the shoe is made from the same material class; wherein at least 90% of the weight of the shoe is made from the same material class; nor wherein at least 95% of the weight of the shoe is made from the same material class.
However, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable range by routine experimentation. MPEP 2144.05(II). It would have been routine optimization to arrive at the claimed invention with a reasonable expectation of success since the combination teaches boot main body 1 and the lining 2 are integrated. The boot body 1 is a synthetic resin layer including an upper and a shoe sole injection-molded using a shoe material (for example, PVC), and the lining 2 is integrally laminated on the inner surface of the synthetic resin layer of the boot body 1. It is a back cloth. (¶0013).
The limitation “wherein extruding the melt comprises extruding an intermediate product for thermoplastic processing” and “wherein the thermoplastic processing comprises a melt-blowing process to manufacture a melt-blown non-woven fabric” is a recitation of intended result of the process step of “extruding the melt.” A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited. MPEP 2114.04(I).
Regarding claims 15-18, as applied to claim 1, the combination teaches further comprising the step of producing a component for a new shoe using the extruded melt (injection molded shoe raw material) (¶0031).
Although the combination does not specify wherein the component for the new shoe comprises a padding, a cushioning element, or a padding and a cushioning element; wherein the component for the new shoe comprises at least one of a sockliner, a strobel board, a lining, a reinforcement element, or combinations thereof; and wherein the component comprises a composite construction, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the combination such that the component for the new shoe comprises a padding, a cushioning element, or a padding and a cushioning element; the component for the new shoe comprises at least one of a sockliner, a strobel board, a lining, a reinforcement element, or combinations thereof; and the component comprises a composite construction, since it has been held that the change in form or shape, without any new or unexpected results, is an obvious engineering design. MPEP 2144.04(IV)(A)-(B).
Regarding claim 19, as applied to claim 15, while Harada in view of Dua does not disclose wherein the extruding the melt comprises a plurality of extrusion steps with different processing parameters, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the combination to include a plurality of extrusion steps with different processing parameters with a reasonable expectation of success in order to manage the physical transformation of the raw materials.
Regarding claim 20, as applied to claim 1, the combination teaches sieving the milled particles and/or the melt (the mud, dirt, and the like that are in sufficient contact with and adhere to the coarse particles are removed from the coarse particles and sent to the dehydrator 9) (Harada ¶0025).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Harada (JP2002283473A - of record) in view of Dua (US 2010/0199520 A1 - of record), as applied to claim 6, and in further view of Haseyama (US 6,849,667 B2 - of record)
Regarding claim 7-8, as applied to claim 6, the combination does not specify wherein the new material is a reactive system, wherein the new material comprises an additive comprising a bi-functional isocyanate, a trifunctional isocyanate, a bifunctional epoxide, a trifunctional epoxide, or a multifunctional epoxide nor wherein the new material comprises an additive comprising a bi-functional isocyanate, a trifunctional isocyanate, a bifunctional epoxide, a trifunctional epoxide, or a multifunctional epoxide.
However, reasonably pertinent to the particular problem with which the applicant was concerned (state problem; see MPEP 2141.01(a)), Haseyama discloses the known material of a bifunctional or more multi-functional isocyanate, used as the starting material for common polyurethane resin, is suitably used for the crosslinking agent (c12,ln65-68).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to substitute the material taught by the combination with the bifunctional or more multi-functional isocyanate taught by Haseyama since the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP 2144.07.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,263,619 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1-4 and 6-19, the limitations recited in claims 1-13 of the reference patent disclose a similar method.
Regarding claim 5, as applied to claim 1, one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the method disclosed in the reference patent such that applying heat and pressure to the shoe prior to the milling with a reasonable expectation of success in order to manage the physical transformation of the raw materials.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,263,619 (reference patent), as applied to claim 1, in and view of Harada. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 20, as applied to claim 1, the limitations recited in claims 1-13 of the reference patent disclose a similar method.
Harada teaches sieving the milled particles and/or the melt (the mud, dirt, and the like that are in sufficient contact with and adhere to the coarse particles are removed from the coarse particles and sent to the dehydrator 9) (Harada ¶0025).One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the reference patent by applying the known technique of Harada with predictable results and resulting in an improved method. MPEP 2143(D).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JaMel M Nelson whose telephone number is (571)272-8174. The examiner can normally be reached 9:00 a.m. to 5:00 p.m..
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/JAMEL M NELSON/Primary Examiner, Art Unit 1743
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