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 - 3, 9 and 11 - 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 3, 6, 8 - 11 and 15 of U.S. Patent No. 12,257,757. Although the claims at issue are not identical, they are not patentably distinct from each other because both the patented document and the claimed invention both discloses a method of extruding film through an extrusion die. The difference lies in that the patented document is more specific with regards to the method steps.
Claim Rejections - 35 USC § 102
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Polk, Jr. (US 2013/0193611).
With regards to claim 1, Polk, Jr. teaches a method comprising extruding a film through an extrusion die to an extrusion output (paragraphs 39 and 41), coordinated with the extrusion (paragraphs 37 – 39), translating a preform stack on the preform assembly platform relative to the extrusion output, such that the film falls onto a preform stack on the preform assembly platform (paragraphs 37 – 39, 43, 45 and 46), the film forming current layer of the preform stack on top of a previous layer of the preform stack, the previous layer also extruded through the extrusion die (paragraphs 54 and 60).
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.
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.
Claim(s) 2 - 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Polk Jr. (US 2013/0193611) in view of Yen et al (US 2014/0339722).
With regards to claim 2, the teachings of Polk, Jr. are presented above. Polk, Jr. discloses that the resin is fed to a feeder or hopper of the injection head of the extrusion device (paragraph 41). Polk, Jr. fails to explicitly disclose that the feeding the extrusion die is via multiple extrusion inputs.
Yen discloses a method of forming a multilayer porous membrane by extrusion (Abstract), in the same field of endeavor as Polk, Jr. where Yen discloses that the feedblock will have multiple inputs prior to exiting a single extrusion die as a single sheet (paragraph 72). While Yen does not explicitly state that 12 inputs are used, Yen states that multiple inputs are used for multiple extrusion lines which can be added for additional layers or regions (paragraph 72), where one of ordinary skill would appreciate that, depending on the needed layers, would require 12 inputs.
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have used multiple extrusion inputs to feed the extrusion die, as suggested by Yen, ion Polk, Jr.’s method. The rationale being that, as stated by Ye, the number of inputs depend on the needed layers for the sheet being extruded (paragraph 72).
With regards to claim 3, the teachings of Polk, Jr. and Yen are presented above. Additionally, Yen teaches that the feeding the extrusion die includes feeding the extrusion die via channels that force material form the multiple extrusion inputs into a single stream for the extrusion output to produce a multi-sublayer film at the extrusion output (paragraph 72).
With regards to claim 4, the teachings of Polk, Jr. and Yen are presented above. Additionally, Yen teaches that feeding the extrusion die includes feeding a subset of multiple extrusion inputs from a single material feed line to produce multiple same-material sublayers within the film (paragraphs 72 and 73).
With regards to claim 5, the teachings of Polk, Jr and Yen are presented above. Additionally, Yen teaches that the subset includes odd-film-sublayer extrusion inputs (paragraphs 72 and 73).
With regards to claim 6, the teachings of Polk, Jr. and Yen are presented above. Additionally, Yen teaches that feeding the extrusion die includes feeding a complement set of extrusion inputs from another single material feed line, the complement set including the complement set of the subset, where the complement set includes even-film-sublayer extrusion inputs (paragraphs 72 and 73).
With regards to claim 7, the teachings of Polk, Jr. and Yen are presented above. Additionally, Yen teaches that the method further includes applying a roller on top of the current layer to impart vertical pressure on preform stack (Figure 1 item 50).
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Polk Jr. (US 2013/0193611) in view of Yen et al (US 2014/0339722) as applied to claim 1 above, and further in view of Bogucki et al (US 2016/0082641).
With regards to claim 8, the teachings of Polk, Jr. and Yen are presented above. Polk, Jr. states that after forming a layer pressure is applied to form the product (Figure 6 item 612). Polk, Jr. and Yen fail to explicitly disclose that the method comprises cutting the layer after covering the previous layer.
Bogucki discloses a fiber reinforced polymer part fabricated by extrusion (Abstract), in the same field of endeavor as Polk, Jr., where Bogucki states a method comprising cutting the current layer after covering a previous layer (paragraphs 28 and 41), determining that the previous layer has been covered responsive to the preform assembly platform reaching a layer-end travel point (paragraphs 28 and 41); at the time the translation stage is at the layer-end travel point, causing a cutter to perform the cutting (paragraphs 28 and 41); determining a layer-begin point for the preform assembly platform (paragraphs 28 and 41); and after the cutting, causing the preform assembly platform to move to the layer-begin point (paragraphs 28 and 41).
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to cut the current layer after covering the previous layer, as suggested by Bogucki, in Polk Jr and Yen’s method. The rationale being that one of ordinary skills in the art before the effective filing date would appreciate that cutting is a well known process to separate one layer from another layer further defining the desired product.
With regards to claim 9, the teachings of Polk, Jr., Yen and Bogucki are presented above. Additionally, Bogucki teaches that the cutter includes an edge cutter, a laser cutter or a heater (paragraph 28).
Claim(s) 10 - 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Polk Jr. (US 2013/0193611) in view of Yen et al (US 2014/0339722) and Bogucki et al (US 2016/0082641) as applied to claim 9 above, and further in view of Brackman et al (US Patent 6,113,374).
With regards to claim 10, the teachings of Polk, Jr. and Yen are presented above. Polk, Jr. and Yen fail to explicitly disclose to shield the preform stack from dust while on the preform assembly stack.
Brackman discloses an extrusion system (Abstract), in the same field of endeavor as Polk, Jr. and Yen, where Brackman teaches that the system comprises an enclosure (Figure 1A item 40), which would shield he preform stack from dust while on the preform assembly stack.
It would have been obvious to one of ordinary skills in the art before the effective filing date of the claimed invention to have shielded the preform stack from dust while on the preform assembly stack, as suggested by Brackman, in Polk, Jr. and Yen’s method. The rationale being that, as stated by Brackman, it provides a high quality product (column 3 lines 28 – 43).
With regards to claim 11, the teachings of Polk, Jr., Yen and Brackman are presented above. Additionally, Brackman teaches further including closing an enclosure around the preform stack during preform generation, where the enclosure includes a dust resistant or moisture resistant enclosure, and the enclosure includes a vacuum-sealed-enclosure held at least at low vacuum (column 9 lines 1 – 30).
With regards to claim 12, the teachings of Polk, Jr., Yen and Brackman are presented above. Additionally, Brackman teaches heating the preform assembly platform to a layer-adhesion temperature (column 12 lines 8 – 13).
With regards to claims 13 – 15, the teachings of Polk, Jr. Yen and Brackman are presented above. Additionally, Yen teaches that extruding the film includes extruding a film between 10 microns and 1,000 microns thick (paragraph 59), the preform stack includes an optical filter preform stack (paragraph 59) and the extruding film includes extruding polymer material, glass material or both (paragraph 59).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
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, Michael Orlando can be reached at (571) 270-5038. 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.
/JOSHEL RIVERA/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
Prosecution Insights