DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-13 and 17-18 in the reply filed on September 22, 2026 is acknowledged. The traversal is on the ground(s) that (i) the process clearly cannot be practiced by another and materially different apparatus as claim 14 requires the apparatus of claim 1 and (ii) that B29C 51/10 and B29C 51/18 “are in the same classification group of shaping by thermoforming” and therefore would not be a serious search and/or consideration burden. This is not found persuasive because (i) the Examiner cited the alternative reasoning that the apparatus could be used to practice another and materially different process, and that reasoning does not appear to be addressed or disputed, and (ii) if the burden were not serious as Applicant’s arguments suggest, it is unclear why thermoforming apparatus would be classified differently than processes when the classification schedule was designed. The restriction is maintained. The requirement is still deemed proper and is therefore made FINAL.
U.S. Patent Application 17/802,818
Although no information disclosure statement was filed in the instant case, the prior art in U.S. Patent Application 17/802,818 was considered.
35 U.S.C. 102(b)(1)(A) Exception for EP 3587093 A1
EP 3587093 A1 is technically prior art with respect to the instant application under 35 U.S.C. 102(a)(1), but includes the instant inventor and was published less than 1 year before the priority date of the instant application. The instant application is assumed to satisfy the 35 U.S.C. 102(b)(1)(A), but Applicant should affirm that this exception is satisfied to avoid additional rejections in the next action. Additionally, since this EP 3587093 A1 document does not appear to have been cited on any Information Disclosure Statement in this (or the parent) case, Applicant should bring any other versions of the EP 3587093 A1 document or containing the same figures to the Examiner’s attention.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent 12,278,183. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons below:
Claim 1 contains only a few differences in wording from claim 1 of the ‘183 Patent, namely the “downward” extending flow distribution regulator, and that the regulating mask is at a bottom “end” of the flow distribution regulator. However, the regulator could only extend in a finite number of directions, and downward would be the most obvious and first selected by the ordinary artisan. Additionally, when the mask is placed at the bottom of the flow distribution regulator, it would obviously be placed at the end.
Claims 2 and 3 are substantial duplicates of those in the ‘183 Patent. Claims 4, 6, and 7 recite the same features as claim 5 of the ‘183 Patent. Claim 5 is a duplicate of claim 4 in the ‘183 Patent. Claim 8 recite the same features as claim 6 of the ‘183 Patent. Claim 9 recites the same features as claim 7 of the ‘183 Patent. Claim 10 recites the same features as claim 8 of the ‘183 Patent. Claim 11 would be obvious over the concentric arrangement in claim 6 or 7 of the ‘183 Patent. Claims 12 and 13 recite the same features as claims 9 and 10 of the ‘183 Patent.
Claim 17 contains only a few differences in wording from claim 18 of the ‘183 Patent, namely the “downward” extending flow distribution regulator, and that the regulating mask is at a bottom “end” of the flow distribution regulator. However, the regulator could only extend in a finite number of directions, and downward would be the most obvious and first selected by the ordinary artisan. When the mask is placed at the bottom of the flow distribution regulator, it would obviously be placed at the end.
Claim 18 recites the same features as claim 19 of the ‘183 Patent.
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.
Claims 1, 2, 5-9, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 5,075,256) in view of Kim (US 20150064595).
As to claim 1, Wang teaches a device that could be used as a thermoforming machine. The Wang machine includes a chamber (Fig. 1, item 6) capable of introducing heated air at a controlled pressure through an inlet (Fig. 1, item 42). Wang teaches a distribution regulator (Fig. 1, item 40) extending into the chamber and holding a flow regulating mask at an end thereof (Fig. 1, item 30). The Wang flow regulating mask receives gas flow and has a plurality of flow restricting elements (Fig. 1, items 34) which would control distribution of the gas flow within the chamber. In the Wang device, the gas inlet would cooperate with the gas flow distributor to control the temperature and flow of the gas.
Wang is silent to a plurality of flow restricting elements providing different air flow restrictions to control a distribution of the heated gas within the chamber.
Kim teaches a first fluid tube connected to a second tube with a flow velocity equalizer which increases a uniformity of fluid flow. The flow velocity equalizer has flow restricting elements providing different air flow restrictions which control a distribution of gas passing therethrough (Figs. 7-8, for example).
It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Kim flow velocity equalizer into the Wang device because this is the use of a known technique to improve a similar device in the same way. Wang teaches a base device without the claimed improvement of flow restricting elements providing different gas flow restrictions. However, Kim teaches a comparable device (fluid tube which adjusts flow using different size flow restrictions) improved in the same way with differing size gas flow restrictions. One could have applied this same flow velocity equalizer to Wang in order to equalize the flow of gas within the Wang chamber.
As to claims 2 and 5, Kim provides a plurality of flow restricting elements distributed in a predetermined manner from the periphery to the center of the mask (Figs. 7-8), at least one of the flow restricting elements (the larger) would restrict the air flow less than another. The second flow restricting elements (the smaller) are closer to the center than the first flow restricting elements (Figs. 7 and 8), which meets claim 5. As to claims 6-9 and 11, Wang already teaches a plurality of flow restricting elements distributed in a center and concentric circles (Fig. 2) where the restricting elements on each circle have the same size and are interpreted to be equidistant from one another. As to claim 12, Wang already teaches that flow restricting elements can be circular (Fig. 2, item 34).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 5,075,256) in view of Kim (US 20150064595) and Burke (US 6,042,929).
As to claim 17, Wang teaches an apparatus that could be used as a thermoforming machine comprising a chamber (Fig. 1, item 6) having a gas inlet capable of introducing heated air flows into the chamber at a controlled pressure. Wang teaches a distribution regulator (Fig. 1, item 40) extending into the chamber and holding a flow regulating mask at an end thereof (Fig. 1, item 30). The flow regulating mask receives gas flow and has a plurality of flow restricting elements (Fig. 1, items 34) which would control distribution of the gas flow within the chamber. In the Wang device, the gas inlet would cooperate with the gas flow distributor to control the temperature and flow of the gas.
Wang is silent to (i) a plurality of flow restricting elements providing different gas flow restrictions to control a distribution of the heated gas within the chamber, and (ii) one or more of a film, patch, active film, and adhesive positioned below the gas flow regulating mask in the chamber, the second surface of the gas flow regulating mask to generate uniform heat distribution within the film, film patch, active film, and adhesive.
Regarding (i), Kim teaches a first fluid tube connected to a second tube with a flow velocity equalizer which increases a uniformity of fluid flow. The flow velocity equalizer has flow restricting elements providing different air flow restrictions which control a distribution of gas passing therethrough (Figs. 7-8, for example). It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Kim flow velocity equalizer into the Wang device because this is the use of a known technique to improve a similar device in the same way. Wang teaches a base device without the claimed improvement of flow restricting elements providing different gas flow restrictions. However, Kim teaches a comparable device (fluid tube which adjusts flow using different size flow restrictions) improved in the same way with differing size gas flow restrictions. One could have applied this same flow velocity equalizer to Wang in order to equalize the flow of gas within the Wang chamber.
Regarding (ii), Burke teaches providing a polymeric film in a plasma etching device in order to provide a roughened microprofile surface while retaining mechanical properties (3:43-55). While Wang teaches a different material, one of ordinary skill in the art would have found it prima facie obvious before the time of filing to incorporate the Burke polymeric film into the Wang device because Wang teaches/suggests plasma etching of a material (1:14) and Burke teaches that a polymeric film can also be plasma etched in order to improve bonding to the film.
Allowable Subject Matter
Claims 3, 4, 10, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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:
For claim 3, the pertinent prior art (Kim) does not show first/larger flow restricting elements closer to the center of the mask than the second/larger flow restricting elements. Claim 4 is allowable by dependence.
For claim 10, the pertinent prior art (Wang or Kim) does not show 5 concentric shapes.
For claim 18, the pertinent prior art (Wang or Kim) does not show the same shape as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J DANIELS whose telephone number is (313)446-4826. The examiner can normally be reached Monday-Friday, 8:30-5:00 pm.
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/MATTHEW J DANIELS/ Primary Examiner, Art Unit 1742
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