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.
Claim 2 is 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.
Claim 2 recites the limitation “the sealing element further comprises a first side surface with a first retaining surface and a first securing element, and a second side surface with a second retaining surface and a second securing element”. These recitations are indefinite as it is unclear whether they are inclusive or exclusive of the prior claimed “at least one retaining surface” and “at least one securing element”. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “the sealing element further comprises a first side surface with a first of the at least one retaining surfaces and a first of the at least one securing elements, and a side surface with a second of the at least one retaining surfaces and a second of the at least one securing elements”.
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.
Claims 1-3, 6-8, 11, as best understood, is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akimoto et al. (US 5,934,323).
With regard to claim 1, Akimoto discloses a sealing element (11) for introduction into a cutout with a lubricant or without a lubricant (as seen in Figs. 2, etc. it is capable of this intended use limitation in the preamble), wherein the sealing element comprises a longitudinal extent direction (i.e. the into the page direction in Figs. 2, etc.); and a sealing cross section of the sealing element that is arranged substantially orthogonal to the longitudinal extent direction (i.e. the cross-section shown in Figs. 2, etc.), wherein the sealing cross section comprises: a stabilizing surface (as labeled in Examiner annotated Fig. 2 below) configured to retain the sealing element in the cutout and to secure the sealing element in the cutout against tilting (i.e. as seen in Figs. 2, etc. the stabilizing surface is capable of this function as its shape and size relative to the cutout/groove allows for such when used in a specific groove size/shape (e.g. versus if the stabilizing surfaces were smaller)); and at least one retaining surface (i.e. the surface of 18) comprising at least one securing element (i.e. the tip of the projection 18), which projects from the stabilizing surface (as seen in Figs. 2, etc. as it projects beyond such), wherein the retaining surface is configured to secure the sealing element against sliding out of the cutout by the securing element (as seen in Figs. 2, etc. the retaining surface is capable of this functional/intended use limitation as when used with a specific size/shape groove/cutout it is capable of contact therewith).
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With regard to claim 2, Akimoto discloses that the sealing element further comprises a first side surface (e.g. the right-hand side surface as seen in Fig. 2) with a first retaining surface (i.e. the first retaining surface on the right-hand side as seen in Fig. 2) and a first securing element (i.e. the first securing element on the right-hand side as seen in Fig. 2), and a second side surface (e.g. the left-hand side surface as seen in Fig. 2) with a second retaining surface (i.e. the second retaining surface on the left-hand side as seen in Fig. 2) and a second securing element (i.e. the second securing element on the left-hand side as seen in Fig. 2).
With regard to claim 3, Akimoto discloses that the sealing element further comprises a transverse extent direction (i.e. the up/down direction in Fig. 2, etc.), wherein a tip (i.e. the radially outermost part of 11d) of the securing element is spaced apart from the stabilizing surface in the transverse extent direction (as seen in Figs. 2, etc.).
With regard to claim 6, Akimoto discloses that the retaining surface is closer to a bottom of the cutout than the stabilizing surface when the sealing element is arranged in the cutout (as seen in Figs. 2, etc. depending on how the sealing element is installed and in what size/shape groove/cutout it is installed in it meets this functional/intended use limitation and has this capability).
With regard to claim 7, Akimoto discloses that the sealing element further comprises, between the stabilizing surface and the retaining surface, an undercut element (defined by 11c as seen in Fig. 3) which is configured to at least partially deflect the securing element in order to simplify insertion of the sealing element into the cutout (as seen in Figs. 2, etc. it is capable of such as it provides an area for the securing element at 18 to deflect/compress when installed with certain size/shaped grooves).
With regard to claim 8, Akimoto discloses that the securing element extends over a total extent length of the sealing element in the longitudinal extent direction (as seen in Figs. 1-2, etc. as it has a constant cross-sectional shape).
With regards to claim 9, Akimoto discloses the sealing element of claim 1 being made by an extrusion process using a tool (Examiner notes this is a product-by-process limitation and it has been held that the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). As Akimoto’s sealing element would be the same it is unpatentable over Akimoto), wherein the tool is configured to substantially simultaneously form the stabilizing surface and the retaining surface (Examiner notes this is a further narrowing of the product-by-process limitation that does not impart additional structure to the sealing element and thus is still unpatentable over Akimoto), wherein the retaining surface has the securing element which projects from the stabilizing surface (as detailed in the rejection of claim 1 above as this limitation is identical thereto).
With regards to claim 10, Akimoto discloses that the sealing element is configured for use in a vehicle or a plant (i.e. by virtue of its disclosed shape/structure it is capable of such an intended use).
With regard to claim 11, Akimoto discloses a sealing element (11) for introduction into a cutout with a lubricant or without a lubricant (as seen in Figs. 2, etc. it is capable of this intended use limitation in the preamble), wherein the sealing element comprises a longitudinal extent direction (i.e. the into the page direction in Figs. 2, etc.); and a sealing cross section of the sealing element that is arranged substantially orthogonal to the longitudinal extent direction (i.e. the cross-section shown in Figs. 2, etc.), wherein the sealing cross section comprises: a stabilizing surface (as labeled in Examiner annotated Fig. 2 above) configured to retain the sealing element in the cutout and to secure the sealing element in the cutout against tilting (i.e. as seen in Figs. 2, etc. the stabilizing surface is capable of this function as its shape and size relative to the cutout/groove allows for such when used in a specific groove size/shape (e.g. versus if the stabilizing surfaces were smaller)); and at least one retaining surface (i.e. the surface of 18) comprising at least one securing element (i.e. the tip of the projection 18), which projects from the stabilizing surface (as seen in Figs. 2, etc. as it projects beyond such), wherein the retaining surface is configured to secure the sealing element against sliding out of the cutout by the securing element (as seen in Figs. 2, etc. the retaining surface is capable of this functional/intended use limitation as when used with a specific size/shape groove/cutout it is capable of contact therewith); a first side surface (e.g. the right-hand side surface as seen in Fig. 2) with a first retaining surface (i.e. the first retaining surface on the right-hand side as seen in Fig. 2) and a first securing element (i.e. the first securing element on the right-hand side as seen in Fig. 2), and a second side surface (e.g. the left-hand side surface as seen in Fig. 2) with a second retaining surface (i.e. the second retaining surface on the left-hand side as seen in Fig. 2) and a second securing element (i.e. the second securing element on the left-hand side as seen in Fig. 2); a transverse extent direction (i.e. the up/down direction in Fig. 2, etc.), wherein a tip (i.e. the radially outermost part of 11d) of the securing element is spaced apart from the stabilizing surface in the transverse extent direction (as seen in Figs. 2, etc.); an undercut element (defined by 11c as seen in Fig. 3) between the stabilizing surface and the retaining surface (as seen iN Figs. 2-3, etc.), which is configured to at least partially deflect the securing element in order to simplify insertion of the sealing element into the cutout (as seen in Figs. 2, etc. it is capable of such as it provides an area for the securing element at 18 to deflect/compress when installed with certain size/shaped grooves), a bottom surface (as labeled in Examiner annotated Fig. 2 above the compound surface including at least three different portions) that is adjacent to the first retaining surface and the second retaining surface (as seen in Fig. 2 as they are next to such), wherein the bottom surface is curved outwards (i.e. as seen in Fig. 2 as in the cross-section view it is curved and projects out from the center of the body of the sealing element), and wherein the retaining surface is closer to a bottom of the cutout than the stabilizing surface when the sealing element is arranged in the cutout (as seen in Figs. 2, etc. depending on how the sealing element is installed and in what size/shape groove/cutout it is installed in it meets this functional/intended use limitation and has this capability).
With regard to claim 11, Akimoto discloses a bottom surface (as labeled in Examiner annotated Fig. 2 above the compound surface including at least three different portions) that is adjacent to the first retaining surface and the second retaining surface (as seen in Fig. 2 as they are next to such), wherein the bottom surface is curved outwards (i.e. as seen in Fig. 2 as in the cross-section view it is curved and projects out from the center of the body of the sealing element), and wherein the retaining surface is closer to a bottom of the cutout than the stabilizing surface when the sealing element is arranged in the cutout (as seen in Figs. 2, etc. depending on how the sealing element is installed and in what size/shape groove/cutout it is installed in it meets this functional/intended use limitation and has this capability).
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.
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.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Akimoto et al. (US 5,934,323) alone.
With regard to claim 4, Akimoto discloses a first ratio between a first width of the sealing element at the stabilizing surface and a second width at the retaining surface (as seen in Fig. 3 in the uncompressed state) that is less than 1 (i.e. as the second width is clearly greater than the first width), but is silent as to the exact value of the ratio and thus fails to explicitly disclose it is between 0.7 and 0.9.
However as one of ordinary skill in the art would at least recognize that Akimoto discloses at least a similar value to the ratio of the first width to the second width it would have been considered obvious to one of ordinary skill in the art to have modified Akimoto such that a first ratio between a first width of the sealing element at the stabilizing surface and a second width at the retaining surface is between 0.7 and 0.9 as it is not considered inventive to discover the optimum or workable ranges by routine experimentation absent some showing of criticality. See In re Aller, 105 USPQ 233, 235 (CCPA 1955). Such a modification would have merely provided the expected benefit of allowing the sealing element to be installed in a desired groove with sufficient pullout resistance while balancing the required insertion force required to install such. Additionally and/or alternatively it would have been considered obvious to one of ordinary skill in the art to have modified Akimoto such that a first ratio between a first width of the sealing element at the stabilizing surface and a second width at the retaining surface is between 0.7 and 0.9 as a change in the proportion of the prior art is generally recognized as an obvious matter of design choice/routine skill in the art. See MPEP §21440.05 and Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In reKulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."), etc.. Such a modification would have merely provided the expected benefit of allowing the sealing element to be installed in a desired groove with sufficient pullout resistance while balancing the required insertion force required to install such.
With regard to claim 5, Akimoto discloses a second ratio between a first length of the stabilizing surface and a second length of the retaining surface that is at least substantially greater than 1 (i.e. as seen in Fig. 3 as the radial overall length of 18 is plural times smaller than the overall radial length to the stabilizing surface), but is silent as to the exact value of the second ration and thus fails to explicitly disclose it is between 2.5 and 3.
However as one of ordinary skill in the art would at least recognize that Akimoto discloses at least a similar value to the second ratio it would have been considered obvious to one of ordinary skill in the art to have modified Akimoto such that a second ratio between a first length of the stabilizing surface and a second length of the retaining surface is between 2.5 and 3 as it is not considered inventive to discover the optimum or workable ranges by routine experimentation absent some showing of criticality. See In re Aller, 105 USPQ 233, 235 (CCPA 1955). Such a modification would have merely provided the expected benefit of allowing the sealing element to be installed in a desired groove with sufficient pullout resistance while balancing the required insertion force required to install such. Additionally and/or alternatively it would have been considered obvious to one of ordinary skill in the art to have modified Akimoto such that a second ratio between a first length of the stabilizing surface and a second length of the retaining surface is between 2.5 and 3 as a change in the proportion of the prior art is generally recognized as an obvious matter of design choice/routine skill in the art. See MPEP §21440.05 and Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In reKulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."), etc.. Such a modification would have merely provided the expected benefit of allowing the sealing element to be installed in a desired groove with sufficient pullout resistance while balancing the required insertion force required to install such.
Response to Arguments
Applicant's arguments with respect to claims 1-12 have been considered but are moot in view of the new/amended grounds of rejection. In so much as they may apply to the current grounds of rejection, Applicant’s arguments filed 03 March 2026 have been fully considered, but are not persuasive.
Applicant’s first argument is related to the unclaimed intended use of the instant sealing element (e.g. being able to be used in a “straight” groove) as opposed to the groove with plural width as shown in Akimoto and as Akimoto shows a gap between the stabilizing surfaces and the wall of the groove. This argument is not persuasive as the argued limitations are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore the seal of Akimoto would also be capable of such a use in a “straight” groove and even with a gap present the stabilizing surfaces of Akimoto would prevent at least some tilting in the groove. Additionally Examiner notes the original specification and drawings do not appear to disclose the groove shape that the instant sealing element is for use with or that there is no gap between the stabilizing surfaces and the wall of the groove, which would lead to potential issues if Applicant attempts to later claim such.
Regarding the new limitations in claims 11 and 12, such arguments are not persuasive as these claims are fully rejected in the new grounds of rejection above. Specifically see Examiner’s interpretation of the compound bottom surface of Akimoto which by virtue of the curved corner portions is curved in the claimed manner. It appears Applicant is arguing a more specific shape than what is recited in the rejected claims (e.g. the surface being entirely arcuate). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner’s Recommendations
In the interest of advancing prosecution Examiner recommends claiming additional structural details such as the bottom surface being entirely arcuate (though such would likely be obvious in combination with references such as Matsuo (US 8,783,694)), the apparent angled surfaces of 20 that meet adjoin the arcuate bottom surface, the undercuts being structured as seen in Fig. 1 (e.g. comprising only curved surface(s)), the securing elements projecting out substantially flat, and the ratios as claimed in claims 4 and 5. Though such a combination of elements may overcome the present grounds of rejection additional search and consideration would be required, and as this art is crowded, additional grounds of rejection are possible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at (571) 272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS L FOSTER/Primary Examiner, Art Unit 3675