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.
Claims 1-5, 7-8, 11-15, and 17 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 12, and 18 of U.S. Patent No 12,594,752. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘752 patent anticipate claims 1-5 and 7-8 of the instant application. Claim 11 is anticipated by claim 18 of the ‘752 patent and claims 12-15 and 17 of the instant application are obvious in view of a simple combination of claim 18 of the ‘752 patent and claims 3-8 and 12. The courts have held that combining prior art elements according to known methods to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to combine claim 18 with other claims such as 3-8 or 12 with a reasonable expectation of success as disclosed in the ‘752 patent.
Claims 1, 3-5, and 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 8, and 15 of U.S. Patent No. 12,296,571. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘571 patent anticipate claims 1, 3-5, and 8 of the instant application.
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.
Claims 1-8 and 11-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wei (US 2022/0332106, made of record on the IDS dated 6/29/2026.)
Regarding claim 1, Wei meets the claimed, An in-line process of producing a thermoplastic composite article using an in-line system, the in-line process comprising: combining reinforcing materials and a thermoplastic material in an aqueous solution; (Wei [0079] describes combining thermoplastic material and reinforcing fibers together in an aqueous solution) disposing the aqueous solution with the combined reinforcing materials and the thermoplastic material onto a moving support; (Wei [0080] describes depositing the aqueous mixture onto moving support 410) removing water from the disposed aqueous solution on the moving support to form a web comprising open cell structures formed from the reinforcing materials and the thermoplastic material; drying the web on the moving support to provide a porous core layer; (Wei [0081] describes removing water with a vacuum and drying to form a core layer 512 with high porosity and open celled structures) heating the dried, porous core layer on the moving support to melt the thermoplastic material of the heated, porous core layer; (Wei [0081] describes further heating the core layer 512 above the melting temperature of the thermoplastic material) disposing a first skin layer on a first surface of the heated, porous core layer on the moving support, wherein the first skin layer comprises a printable surface; (Wei [0082] describes applying a skin layer such as a film layer 610, [0092] specifies the film 610 can be printed on) and applying pressure to the heated, porous core layer comprising the disposed first skin layer to provide the thermoplastic composite article (Wei [0086] describes applying pressure to the composite article to bond the film 610 to the core layer 512.)
Regarding claim 2, Wei meets the claimed, The in-line process of claim 1, further comprising printing a design onto the printable surface of the disposed first skin layer (Wei [0075] discloses printing a design onto the film after disposing the film on the core layer.)
Regarding claim 3, Wei meets the claimed, The in-line process of claim 1, further comprising disposing a second skin layer on a second surface of the heated, porous core layer on the moving support (Wei [0084] describes adding a second skin layer 620 to a second surface of the core layer 512.)
Regarding claim 4, Wei meets the claimed, The in-line process of claim 1, further comprising adding a lofting agent to the aqueous solution with the combined reinforcing materials and the thermoplastic material (Wei [0091] describes adding a lofting agent.)
Regarding claim 5, Wei meets the claimed, The in-line process of claim 1, further comprising configuring the first skin layer as a film layer (Wei [0082] describes a film layer 610 as the skin layer.)
Regarding claim 6, Wei meets the claimed, The in-line process of claim 5, wherein the film layer comprises reinforcement (Wei [0074] describes films may include fibers or other additives which meet the broadest reasonable interpretation of “reinforcement.”)
Regarding claim 7, Wei meets the claimed, The in-line process of claim 5, wherein the film layer comprises one or more of a polyolefin and a polyester (Wei [0092] describes a polyolefin film 610.)
Regarding claim 8, Wei meets the claimed, The in-line process of claim 1, wherein the thermoplastic material comprises a polyolefin and the reinforcing materials comprise inorganic fibers (Wei [0008], [0089], and [0092] describe the thermoplastic material is polyolefin and the reinforcing fibers are inorganic fibers.)
Regarding claim 11, Wei meets the claimed, An in-line process of producing a thermoplastic composite article using an in-line system, the in-line process comprising: combining reinforcing materials and a thermoplastic material in an aqueous solution; (Wei [0079] describes combining thermoplastic material and reinforcing fibers together in an aqueous solution) disposing the aqueous solution with the combined reinforcing materials and the thermoplastic material onto a moving support; (Wei [0080] describes depositing the aqueous mixture onto moving support 410) removing water from the disposed aqueous solution on the moving support to form a web comprising open cell structures formed from the reinforcing materials and the thermoplastic material; drying the web on the moving support to provide a porous core layer; (Wei [0081] describes removing water with a vacuum and drying to form a core layer 512 with high porosity and open celled structures) heating the dried, porous core layer on the moving support to melt the thermoplastic material of the heated, porous core layer; (Wei [0081] describes further heating the core layer 512 above the melting temperature of the thermoplastic material) disposing a first skin layer on a first surface of the heated, porous core layer on the moving support, wherein the first skin layer comprises a printable surface; (Wei [0082] describes applying a skin layer such as a film layer 610, [0092] specifies the film 610 can be printed on) and printing a design onto the printable surface of the first skin layer to provide the thermoplastic composite article (Wei [0075] discloses printing a design onto the film after disposing the film on the core layer.)
Regarding claim 12, Wei meets the claimed, The in-line process of claim 11, further comprising disposing a second skin layer on a second surface of the heated, porous core layer on the moving support (Wei [0084] describes adding a second skin layer 620 to a second surface of the core layer 512.)
Regarding claim 13, Wei meets the claimed, The in-line process of claim 11, further comprising adding a foam to the aqueous solution with the combined reinforcing materials and the thermoplastic material (Wei [0079] describes adding foam to the aqueous solution.)
Regarding claim 14, Wei meets the claimed, The in-line process of claim 11, further comprising adding a lofting agent to the aqueous solution with the combined reinforcing materials and the thermoplastic material (Wei [0091] describes adding a lofting agent.)
Regarding claim 15, Wei meets the claimed, The in-line process of claim 11, further comprising configuring the first skin layer as a film layer (Wei [0082] describes a film layer 610 as the skin layer.)
Regarding claim 16, Wei meets the claimed, The in-line process of claim 15, wherein the film layer comprises reinforcement (Wei [0074] describes films may include fibers or other additives which meet the broadest reasonable interpretation of “reinforcement.”)
Regarding claim 17, Wei meets the claimed, The in-line process of claim 15, wherein the film layer comprises one or more of a polyolefin and a polyester (Wei [0092] describes a polyolefin film 610.)
Regarding claim 18, Wei meets the claimed, The in-line process of claim 11, wherein the thermoplastic material comprises a polyolefin and the reinforcing materials comprise inorganic fibers (Wei [0008], [0089], and [0092] describe the thermoplastic material is polyolefin and the reinforcing fibers are inorganic fibers.)
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.
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.
Claims 9-10 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wei (US 2022/0332106) modified by Pervan (US 2019/0263101.)
Regarding claim 9, Wei describes printing but does not specify digital printing and does not meet the claimed, The in-line process of claim 2, wherein the printing comprises printing the design using a digital image and a digital printer.
Analogous in the field of composite laminates, Pervan also discloses a substrate 4 (film) applied onto a thermoplastic/fiber composite and meets the claimed, The in-line process of claim 2, wherein the printing comprises printing the design using a digital image and a digital printer (Pervan [0117]-[0119] describe a process of using a digital printer 40 and a digital image to print binder 30 onto a substrate 4 on the composite material, see also [0046].)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the printing method disclosed in Wei with the digital printing method and digital image disclosed in Pervan in order to provide an image with superior image quality, see Pervan [0117].
Regarding claim 10, Pervan further meets the claimed, The in-line process of claim 9, further comprising curing the printed design (Pervan [0118] discloses the binder 30 printed by the printer is cured.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the printing method of Wei with the step of curing the design as described in Pervan in order to bond ink particles to the biner on the substrate, see Pervan [0118].
Regarding claim 19, Wei describes printing but does not specify digital printing and does not meet the claimed, The in-line process of claim 11, wherein the printing comprises printing the design using a digital image and a digital printer.
Pervan meets the claimed, The in-line process of claim 11, wherein the printing comprises printing the design using a digital image and a digital printer (Pervan [0117]-[0119] describe a process of using a digital printer 40 and a digital image to print binder 30 onto a substrate 4 on the composite material, see also [0046].)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the printing method disclosed in Wei with the digital printing method and digital image disclosed in Pervan in order to provide an image with superior image quality, see Pervan [0117].
Regarding claim 20, Pervan further meets the claimed, The in-line process of claim 19, further comprising curing the printed design (Pervan [0118] discloses the binder 30 printed by the printer is cured.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the printing method of Wei with the step of curing the design as described in Pervan in order to bond ink particles to the biner on the substrate, see Pervan [0118].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2007/0137769: see the description beginning at [0035] describing collecting thermoplastic fibers on a forming belt, using a vacuum unit, applying heat, and applying a print to the surface of the formed web
US 2017/0129145: see [0086] describing forming a thermoplastic/fiber aqueous dispersion, [0087] describing disposing the dispersion onto a moving support and drying it, [0089] describes melting the thermoplastic material and adding a film
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA BARTLETT whose telephone number is (571)272-4953. The examiner can normally be reached Monday - Friday 9:00 am-5:00 pm EST.
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, Sam Zhao can be reached at 571-270-5343. 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.
/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744
Prosecution Insights