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 17-18 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 17 and 18 recite the limitation "the pairs formed by the binding warps and upper surface side collapsing yarns" in line 3. There is insufficient antecedent basis for this limitation in the claim. There is no “collapsing yarn” limitation to establish antecedent basis for the limitation that refers to “the pair formed by the binding warps and upper surface side collapsing yarns”.
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.
Claim(s) 1-4, 12, 13, 15, 16 and 19 is/are rejected under 35 U.S.C. 102a(1) as being anticipated by US 4515853 (Borel).
Regarding claim 1, ‘853 discloses: industrial fabric [fabric in figs. 1 and 2 can function in industrial applications] in which an upper surface side fabric and a lower surface side fabric are bound [fabric layers in figs.1 and 2 are shown “bound” and disclosed in par. 3, “The upper layer 1 and the lower layer 2 are interconnected by binder threads, namely, by a binder warp 4 and a binder weft 5.”], wherein the upper surface side fabric and the lower surface side fabric are formed by interweaving warps and wefts [shown in fig. 1 and as disclosed in par. 2], wherein the wefts include: binding wefts [5, fig. 1] that bind the upper surface side fabric and the lower surface side fabric; upper surface side wefts that form a part of the upper surface side fabric [shown in figs. 1 and 2]; and lower surface side wefts that form a part of the lower surface side fabric [shown in figs. 1 and 2 and as disclosed in pars. 2 and 3]; wherein the warps include: binding warps [4 shown in figs. 1 and 2 and as disclosed in pars. 2 and 3] that bind the upper surface side fabric and the lower surface side fabric; upper surface side warps that are interwoven with the upper surface side wefts without being interwoven with the lower surface side wefts so as to form a part of the upper surface side fabric; and lower surface side warps that are interwoven with the lower surface side wefts without being interwoven with the upper surface side wefts so as to form a part of the lower surface side fabric [shown in figures 1 and 2 and inherent to the definition of “binder warp” and “binder weft” and the statement, “The upper layer 1 and the lower layer 2 are interconnected by binder threads, namely, by a binder warp 4 and a binder weft 5.”].
Regarding claim 2, ‘853 discloses: wherein in the pairs formed by the binding warps and the warps arranged vertically with the binding warps, the binding warps and the warps complement each other so as to form a weaving pattern for one upper surface side warp [the formation of a weaving pattern for one upper surface side warp inherently is affected by the binding warp and the vertical arranged warps in the fabric structure shown in figs. 1 and 2].
Regarding claim 3, ‘853 discloses: wherein in the pairs formed by the binding warps and the warps arranged vertically with the binding warps, the binding warps and the warps complement each other so as to form a weaving pattern for one lower surface side warp [the formation of a weaving pattern for one lower surface side warp inherently is affected by the binding warp and the vertical arranged warps in the fabric structure shown in figs. 1 and 2].
Regarding claim 4, ‘853 discloses: wherein the binding wefts are not adjacent to one another in the warp direction [fig. 1 shows binding wefts 5 not adjacent to each other].
Regarding claim 12, ‘853 discloses: wherein the binding wefts have a diameter smaller than that of the lower surface side wefts [seen clearly in fig. 1].
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Regarding claim 13, ‘853 discloses: wherein a diameter of the upper surface side warps and a diameter of the binding warps are the same [seen clearly in fig. 4].
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Regarding claim 15, ‘853 discloses: wherein the upper surface side warps and the binding warps are interwoven with the upper surface side wefts and the binding wefts so as to form the upper surface side fabric formed in a predetermined weaving pattern for each warp row [This statement is an inherent result of the woven fabric structure shown in figs. 1 and 2; all weaving patterns are predetermined periodic repeating patterns].
Regarding claim 16, ‘853 discloses: wherein the lower surface side warps and the binding warps are interwoven with the lower surface side wefts so as to form the lower surface side fabric formed in a predetermined weaving pattern for each warp row [This statement is an inherent result of the woven fabric structure shown in figs. 1 and 2; all weaving patterns are predetermined periodic repeating patterns].
Regarding claim 19, ‘853 discloses: wherein in the pairs formed by the binding warps and the binding warps arranged vertically with the binding warps, the binding warps and the binding warps complement each other so as to form a weaving pattern for one lower surface side warp [see annotated figs. 1 and 2 below; the pattern of the lower surface side warp is inherently affected by binding warps vertically arranged in pairs].
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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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,344,967. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations in claims 1-19 are fully disclosed by the patented claims. In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. In this type of nonstatutory double patenting situation, an obviousness analysis is not required for the nonstatutory double patenting rejection. The species or sub-genus claimed in the conflicting patent anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus.
Table below shows specific mapping of instant claims to the patented claims that disclose the limitations of the instant claims.
Instant claims
Patented claims that disclose the instant claimed scope
1
Patented claims 1 and 2 both fully disclose instant claim 1.
2
Patented claims 1 and 2 both fully disclose instant claim 1.
3
Patented claims 1 and 2 both fully disclose instant claim 1.
4
Patented claim 1 fully discloses instant claim 4.
5
Patented claims 1 and 2 both fully disclose instant claim 5.
6
Patented claims 3 and 8 both fully disclose instant claim 6.
7
Patented claim 2 fully discloses instant claim 7.
8
Patented claim 2 fully discloses instant claim 8.
9
Patented claim 2 fully discloses instant claim 9.
10
Patented claim 2 fully discloses instant claim 10.
11
Patented claim 2 fully discloses instant claim 11.
12
Patented claim 9 fully discloses instant claim 12.
13
Patented claim 10 fully discloses instant claim 13.
14
Patented claim 11 fully discloses instant claim 14.
15
Patented claim 2 fully discloses instant claim 15.
16
Patented claim 2 fully discloses instant claim 16.
17
Patented claim 4 fully discloses instant claim 17.
18
Patented claim 2 fully discloses instant claim 18.
19
Patented claim 1 fully discloses instant claim 19.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Various papermaking fabrics are attached to establish the general state of the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H MUROMOTO JR whose telephone number is (571)272-4991. The examiner can normally be reached M-Th 730-1730.
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, Alissa Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT H MUROMOTO JR/Primary Examiner, Art Unit 3732