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 § 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.
Claims 1-17 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kolbe, EP 310903 as evidenced by Bench Chem, Methodologic and Application, Bismuth Oxide as Anode Material.
Regarding claims 1-4, 6-8, 10-12, 14-16-17, 19-20, Kolbe discloses a conveyor belt comprising a polymeric material [jacket] with elastic properties and an embedded tension member in the form of ropes [plurality]running parallel in the longitudinal direction of the conveyor belt wherein the ropes are made of steel [0001]. Reference claim 1 discloses that the tensioned member is formed of steel and an adhesive mixture including at least one corrosion reducing substance. Paragraph 0006 discloses an adhesive mixture based on one elastomer [compressible jacket] such as thermoplastic elastomer such as polyurethane. Paragraph 0007 discloses that the adhesive mixture includes a corrosion reducing substance, bismuth oxide. Reference claim 2 discloses that the corrosion reducing substance is present in the amount of 0.1 to 10 wt%. Bench Chem, Methodologic and Application, bismuth Oxide as Anode Material provides evidence that bismuth oxide is an anodic material.
Regarding claim 5, the claim depends on claim 1 which recites that the corrosion inhibiting substance can be anodic, cathodic or organic material. Kolbe discloses an anodic material bismuth oxide which satisfies the limitations of claim 5.
Regarding claim 9, Kolbe discloses a belt. A belt has a rectangular cross-section.
Regarding claim 13, the claim depends on claim 12 which recites that the corrosion inhibiting substance can be anodic, cathodic or organic material. Kolbe discloses an anodic material bismuth oxide which satisfies the limitations of claim 13.
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 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,358,203. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both the present application and the patented reference recite
A load-bearing elevator suspension member, comprising: a plurality of tension members; and a compressible jacket at least partially encasing the plurality of tension members, the jacket including a jacket base material mixed with a corrosion inhibitor, wherein the corrosion inhibitor establishes a corrosion-inhibiting coating on the tension members, and wherein the corrosion inhibitor comprises at least one of sulfur, tryptamine, caffeine, vanillin, thymol, or carvacrol as per present claims 1 and 18 and patented reference claim 1.
A load-bearing elevator suspension member wherein the plurality of tension members are uncoated prior to being encased within the compressible jacket as per present claim 1 and patented reference claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786
