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 Objections
Claims 5, 7, and 8 are objected to because of the following informalities: there seem to be grammatical issues with the claims; for instance, claim 5 recites “the passage has a central axis an angle” and claims 7 and 8 recite “wherein the stretch at break of the cord . . . .” Appropriate correction is required.
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 4-8, 11, 12, and 13 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 pre-AIA the applicant regards as the invention.
Regarding claims 4-8, 11, 12, and 13, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The above list is not an exhaustive list and there may be other claims that have indefiniteness issues.
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 1-20 of U.S. Patent No. 12,486,088. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are substantially similar other than the number of turns per meter of the twisted paper strip. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the number of turns per meter of a twisted paper strip to be within a certain desired range for composition qualities of strength and durability. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
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 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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Najjar et al. (WO 2022/216202 A1) [202] in view of Strawn (U.S. 1,972,607) [607].
Regarding Claim 1, Reference [202] discloses - a cord (101) having a first end (102) and a second end (103), and - a locking head (104) fixedly attached to the first end, said locking head being adapted to receive the second end and retain the cable tie (100) in a closed loop configuration, wherein the locking head defines (a) wall(s) (105) that encircles a passage (106) having an inlet (107) and an outlet (108), and comprises a protrusion (109) that extends into the passage for engaging the cord and which is arranged to allow displacement of the cord in a first direction towards the outlet while preventing displacement of the cord in a second direction towards the inlet, but does not explicitly disclose wherein the cord comprises a paper strip twisted along its length, the number of turns per meter of the twisted paper strip being 55-75.
Nevertheless, Reference [607] teaches the cord comprises a paper strip (kraft paper) twisted along its length.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the cable tie assembly of Reference [202] with the composition of a cord being twisted paper strips of kraft paper as taught by Reference [607] in order to produce a product with great strength, toughness, and resistance.
Further, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the number of turns per meter of a twisted paper strip of Reference [202] / [607] to be within a certain range of 63-68 turns for composition qualities of strength and durability. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e a cable tie, does not depend on its method of production, i.e. the cord being twisted a certain numbers of turns per meter. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Regarding Claim 2, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein the number of turns per meter of the twisted paper strip is 60-70.
Regarding Claim 3, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein the number of turns per meter of the twisted paper strip is 63-68.
Regarding Claim 4, as best understood, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein the protrusion is a blade, such as a metal blade.
Regarding Claim 5, as best understood, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein the passage has a central axis an angle (α) between the direction of the extension of the blade and the central axis being 47°-62°, such as 50°-59°, such as 52°-57.
Regarding Claim 6, as best understood, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein a diameter (d) of the cord is 1.0-8.0 mm, such as 1.5-5.0 mm, such as 1.75-2.10 mm, such as 1.80-2.00 mm.
Regarding Claim 7, as best understood, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein the stretch at break of the cord is 2.0%-6.0%, such as 2.5%-4.0% when measured according to ISO 2062:1993.
Regarding Claim 8, as best understood, the combination of Reference [202] / [607] as previously modified and reasoning above discloses the claimed invention, but does not explicitly disclose wherein the stretch at break of the paper strip after untwisting is 1.5%-3.5%, such as 2.0%-2.9%, when measured according to ISO 1924-3:2005.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the stretch at break of the paper strip after untwisting of Reference [202] / [607] to be within a certain desired range of 2.0%-2.9% in order to have a user’s preference of qualities of strength and durability of the paper strip. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 7, paragraph [0054], applicant has not disclosed any criticality for the claimed limitations.
Regarding Claim 9, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein the paper strip is a waxed paper strip.
Regarding Claim 10, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein the paper strip is made of kraft paper.
Regarding Claim 11, as best understood, the combination of Reference [202] / [607] as previously modified and reasoning above discloses the claimed invention, but does not explicitly disclose wherein the paper strip is made of a paper having a grammage measured according to ISO 536:2019 of 55-85 g/m², preferably 60-80 g/m², such as 65-75 g/m².
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the paper strip is made of a paper having a grammage measured according to ISO 536:2019 of 55-85 g/m², preferably 60-80 g/m², such as 65-75 g/m² of Reference [202] / [607] to be 60-80 g/m² in order to have a user’s preference of qualities of strength and durability of the paper strip. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 5, paragraph [0038], applicant has not disclosed any criticality for the claimed limitations.
Regarding Claim 12, as best understood, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein the locking head comprises a body of a biodegradable material, such as a bio composite of a biodegradable and/or renewable polymer and an organic fiber material.
Regarding Claim 13, as best understood, the combination of Reference [202] / [607] as previously modified and reasoning above discloses wherein the inlet of the passage is funnel-shaped, such as trumpet-shaped.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Haase et al. (US 2010/0212117) [117] in view of Strawn (U.S. 1,972,607) [607].
Regarding Claim 1, Reference [117] discloses - a cord (16) having a first end (10 left) and a second end (10 right), and - a locking head (12) fixedly attached to the first end, said locking head being adapted to receive the second end and retain the cable tie (10) in a closed loop configuration, wherein the locking head defines (a) wall(s) (sides of 18) that encircles a passage (18) having an inlet and an outlet, and comprises a protrusion (20) that extends into the passage for engaging the cord and which is arranged to allow displacement of the cord in a first direction towards the outlet while preventing displacement of the cord in a second direction towards the inlet, but does not explicitly disclose wherein the cord comprises a paper strip twisted along its length, the number of turns per meter of the twisted paper strip being 55-75.
Nevertheless, Reference [607] teaches the cord comprises a paper strip (kraft paper) twisted along its length.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the cable tie assembly and body of Reference [117] with the composition of a cord being twisted paper strips of kraft paper as taught by Reference [607] in order to produce a product with great strength, toughness, and resistance.
Further, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the number of turns per meter of a twisted paper strip of Reference [117] / [607] to be within a certain range of 63-68 turns for composition qualities of strength and durability. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e a cable tie, does not depend on its method of production, i.e. the cord being twisted a certain numbers of turns per meter. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Regarding Claim 2, the combination of Reference [117] / [607] as previously modified and reasoning above discloses wherein the number of turns per meter of the twisted paper strip is 60-70.
Regarding Claim 3, the combination of Reference [117] / [607] as previously modified and reasoning above discloses wherein the number of turns per meter of the twisted paper strip is 63-68.
Regarding Claim 4, as best understood, the combination of Reference [117] / [607] as previously modified and reasoning above discloses wherein the protrusion is a blade.
Regarding Claim 5, as best understood, the combination of Reference [117] / [607] as previously modified and reasoning above discloses the claimed invention, but does not explicitly disclose wherein the passage has a central axis an angle (α) between the direction of the extension of the blade and the central axis being 47°-62°, such as 50°-59°, such as 52°-57.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the hole having a central axis and an angle between the direction of the extension of the engagement teeth and the central axis of Reference [117] / [607] to be 52°-57 when measured according to ISO 2062 in order to have the body engaged with a certain strength and preventing the body from being pulled out. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 4, paragraph [0022], applicant has not disclosed any criticality for the claimed limitations.
Regarding Claim 6, as best understood, the combination of Reference [117] / [607] as previously modified and reasoning above discloses the claimed invention, but does not explicitly disclose wherein a diameter (d) of the cord is 1.0-8.0 mm, such as 1.5-5.0 mm, such as 1.75-2.10 mm, such as 1.80-2.00 mm.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified a diameter (d) of the body of Reference [117] / [607] to be 1.80-2.00 mm in order to have a desired attachment strength when the body is connected to the engagement teeth. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 5, paragraph [0031], applicant has not disclosed any criticality for the claimed limitations.
Regarding Claim 7, as best understood, the combination of Reference [117] / [607] as previously modified and reasoning above discloses the claimed invention, but does not explicitly disclose wherein the stretch at break of the cord is 2.0%-6.0%, such as 2.5%-4.0% when measured according to ISO 2062:1993.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the stretch at break of the body of Reference [117] / [607] to be as 2.5%-4.0% when measured according to ISO 2062 in order to have a user’s preference of qualities of strength and durability of the paper strip. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 5, paragraph [0031], applicant has not disclosed any criticality for the claimed limitations.
Regarding Claim 8, as best understood, the combination of Reference [117] / [607] as previously modified and reasoning above discloses the claimed invention, but does not explicitly disclose wherein the stretch at break of the paper strip after untwisting is 1.5%-3.5%, such as 2.0%-2.9%, when measured according to ISO 1924-3:2005.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the stretch at break of the paper strip after untwisting of Reference [117] / [607] to be within a certain desired range of 2.0%-2.9% in order to have a user’s preference of qualities of strength and durability of the paper strip. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 7, paragraph [0054], applicant has not disclosed any criticality for the claimed limitations.
Regarding Claim 9, the combination of Reference [117] / [607] as previously modified and reasoning above discloses wherein the paper strip is a waxed paper strip (treated product).
Regarding Claim 10, the combination of Reference [117] / [607] as previously modified and reasoning above discloses wherein the paper strip is made of kraft paper (kraft).
Regarding Claim 11, as best understood, the combination of Reference [117] / [607] as previously modified and reasoning above discloses the claimed invention, but does not explicitly disclose wherein the paper strip is made of a paper having a grammage measured according to ISO 536:2019 of 55-85 g/m², preferably 60-80 g/m², such as 65-75 g/m².
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the paper strip is made of a paper having a grammage measured according to ISO 536:2019 of 55-85 g/m², preferably 60-80 g/m², such as 65-75 g/m² of Reference [117] / [607] to be 60-80 g/m² in order to have a user’s preference of qualities of strength and durability of the paper strip. Further it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, page 5, paragraph [0038], applicant has not disclosed any criticality for the claimed limitations.
Regarding Claim 12, as best understood, the combination of Reference [117] / [607] as previously modified and reasoning above discloses wherein the locking head comprises a body of a biodegradable material, such as a bio composite of a biodegradable (biodegradable) and/or renewable polymer and an organic fiber material.
Regarding Claim 13, as best understood, the combination of Reference [117] / [607] as previously modified and reasoning above discloses wherein the inlet of the passage is funnel-shaped.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. GB 2411205 A discloses a similar tie fastener that has a locking head. US 2,808,356 discloses a related piece of prior art of twisted paper yarn in the form of a cord.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON W SAN whose telephone number is (571)272-6531. The examiner can normally be reached on M-F 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Namrata Boveja can be reached on 571-272-8105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON W SAN/SPE, Art Unit 3677
Prosecution Insights