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 2 is objected to because of the following informalities: “less bristle” should read “less brittle.”
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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 14 of US Patent No. 12,252,843. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 6 and 14 of US Patent No. 12,252,843 anticipate each and every limitation of claim 1 of the instant application.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of US Patent No. 12,252,843 in view of Erlendsson (US PG Pub 2014/0345098). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US Patent No. 12,252,843 anticipates each and every limitation of claim 1 of the instant application, except wherein the method further comprises the step of adhering the outer sheath to the strength member via a fourth synthetic substance.
However, Erlendsson teaches a method for forming a synthetic rope (see Figs. 1-3 and at Abstract and paragraphs 0030-0053), comprising at least the steps of: providing a core (2, 3), enclosing the core within a flow shield (5), forming a hollow strength member (7) around the core, enclosing the strength member within an outer sheath (10; see Figs. 1-3 and paragraphs 0030-0053), wherein the method further comprises the step of adhering the outer sheath to the strength member via a synthetic adhesive substance (13; see Figs. 1-3 and at least paragraphs 0041-0045, 0050, and 0053-0060), so as to enhance the strength, durability, and longevity of the synthetic rope (see at least paragraphs 0043-0044 and 0048).
Therefore, based on Erlendsson’s teachings, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have modified the method of claim 1 of US Patent No. 12,252,843 to further include the step of adhering the outer sheath to the strength member via a fourth synthetic substance, as doing so would enhance the strength, durability, and longevity of the synthetic rope.
Dependent claims 2-21 of US Patent No. 12,252,843 further anticipate the limitations of depending claims 2-22 of the instant application.
Allowable Subject Matter
Claims 1-22 are allowable over the prior art of record, pending resolution of the double patenting rejection(s) above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For example, Erlendsson (US PG Pub 2012/0160082) teaches a method of forming a braided synthetic rope with a synthetic core, a strength member, and an outer cover formed from a plurality of braided cover strands, and Gladenbeck et al. (US Patent No. 4,022,010) teaches a method of forming a high-strength rope comprising a core, a plurality of primary strands surrounding the core, and a plurality of sheaths that surround each respective primary strand.
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/JOCELYN BRAVO/Primary Examiner, Art Unit 3732
