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 .
Foreign Priority
Receipt is acknowledged of certified copies of papers (in the parent application) required by 37 CFR 1.55.
Drawings
The drawings were received on July 7, 2025. These drawings are accepted.
Specification
The disclosure is objected to because of the following informalities:
(i) The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The claims are now directed to the gramophone record, itself. The Abstract should also be directed to a gramophone record (product).
(ii) With regard to page 1 (line 31), page 3 (line 22, lines 26-27, and line 34), the term “US 1 353 953 A” should be changed to the term --GB 1 353 053--.
(iii) With regard to page 2 (line 22), the term “So if you e.g. injects faster” should be changed to the term --So if you, e.g., inject faster--.
(iv) With regard to page 3 (lines 1-2) , the term “1,5 en 2,5%, preferably this amount is about 1,8%” should be changed to the term --1.5 and 2.5%, preferably this amount is about 1.8%--. Moreover, the percentages (%) should be expressed in terms of a unit, such as a mole (mol%) or a weight precent (wt%) – without adding new matter.
(v) With regard to page 4 (line 19), the term “1,5 en 2,5%” should be changed to the term --1.5 and 2.5%--. Moreover, the percentages (%) should be expressed in terms of a unit, such as a mole (mol%) or a weight precent (wt%) – without adding new matter.
Claim Objections
Claims 1-3 are objected to because of the following informalities:
(i) With regard to claim 1, the preamble “Gramophone records” should be changed to the term --A gramophone record,--.
(ii) With regard to claim 1 (line 12), the term “modified copolymer is between 1.5 and 2.5 %” should include a particular unit associated with the percentage. That is, the percentages (%) should be expressed in terms of a unit, such as a mole (mol%) or a weight precent (wt%) – without adding new matter.
(iii) With regard to claims 2-3, the preamble “The gramophone records according to claim 1” should be changed to the term –The gramophone record according to claim 1--.
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 1-3 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.
The following phrase(s) lack clear antecedent basis within the claim(s), i.e., either the particularly recited passage fails to be properly introduced prior to its appearance at that point in the claim or the structure recited in the passage is not an inherent part of or component of the previously recited structure:
(i) Claim 1 (lines 7-8), "the moulding surfaces".
(ii) Claim 1 (line 8), "the moulding parts".
(iii) Additionally, since claim 2 and 3 depend from claim 1, they too are rejected under 35 USC 112(b) due to their dependence upon claim 1.
Examiner Comments
The Examiner has cited particular columns and line numbers, paragraphs, or figures in the reference(s) as applied to the claims for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the Applicant, in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
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 (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 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 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Bosman (GB 1 353 053) in view of Price (US 2012/0082811 A1).
As per claim 1, Bosman (GB 1 353 053) discloses “gramophone records” (e.g., 14 – see Fig. 5) comprising polymeric material (e.g., see, inter alia, page 1, ll. 37-60; page 3, ll. 9-11), wherein said polymeric material consists mainly of a polyethylene terephthalate (e.g., see, inter alia, page 1, ll. 37-60; page 3, ll. 9-11).
As per claim 1, however, Bosman (GB 1 353 053) remains silent with regard to wherein the polymeric material of polyethylene terephthalate, includes isophthalic acid modified copolymer; and wherein the amount of monopolymer isophthalic acid in the polyethylene terephthalate isophthalic acid modified copolymer is between 1.5 and 2.5 %.
Price (2012/0082811) discloses an injection molded articles and process including the use of copolymer of polyethylene terephthalate and isophthalic acid [0024] for injection forming an injection molded article defining an exterior surface having a surface area, in which the use of a copolymer of polyethylene terephthalate with isophthalic acid had shown dramatically improved surface characteristics - abstract.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date on the instant invention, to improve the Bosman (GB 1 353 053) method and final gramophone record product, by replacing a polyethylene terephthalate melt with a copolymer of polyethylene terephthalate with isophthalic acid as taught by Price (US 2012/0082811 A1), in order to advantageously to improve surface characteristics of the forming gramophone record disc.
Regarding claim 1, as it pertains to wherein the amount of monopolymer isophthalic acid in the polyethylene terephthalate isophthalic acid modified copolymer is between “1.5 and 2.5 %,” Price (US 2012/0082811 A1) discloses that the isophthalic acid is present in the copolymer in an amount from about 0.25 mol percent to about 10 mol percent, such as from about 1 mol percent to about 7 mol percent, such as from about 2 mol percent to about 5 mol percent [0024] and that the polymer mixture is introduced into the mold cavity at around 265C [0026]. Since it is obvious to one of ordinary skill in the art to optimize these operating conditions to obtain predictable results, it would be obvious to one of ordinary skill in the art at the time the invention was effectively filed, to provide the amount of monopolymer isophthalic acid in the polyethylene terephthalate isophthalic acid modified copolymer as between 1.5 and 2.5 %, in the course of routine experimentation, to achieve particular improve surface characteristics of the forming gramophone record disc.
Moreover, as per claim 1, the limitation “injected into a space with an injection nozzle; wherein said injection nozzle is provided with a nozzle piece and an inlet opening and a pouring channel extending between said inlet opening and said nozzle piece such that the polymeric material is provided with a single stream from the inlet opening into the space and does not split into sub-streams, and wherein said polymeric material is supplied in a direction perpendicular to the moulding surfaces of the mould parts” and dependent claim 3 “wherein the polymeric material is supplied through a completely straight line along said pouring channel” are considered product-by-process limitations.
The product by process limitations are directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17(footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessman, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al, 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final structure of the product “gleaned” from the process limitations or steps, which must be determined in a “product by process” claim limitation, and not the patentability of the process limitations. Moreover, an old or obvious product produced by a new method is not a patentable product, whether claimed in “product-by-process” claim limitation or not. Note that the applicant has the burden of proof in such cases, as the above case law makes clear.
The final product limitation derived from the claimed “process limitation” of claims 1 and 3, fail to result in a structural difference between the combined teachings of Bosman (GB 1 353 053) in view of Price (US 2012/0082811 A1) and the claimed product, at least at it applies to the product limitation(s) “gleaned” from the process limitation(s). As such, Bosman (GB 1 353 053) in view of Price (US 2012/0082811 A1) is seen to meet these process limitations (in the final product form of the product claim) as it applies to the patentability of the final structure.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Bosman (GB 1 353 053) in view of Price (US 2012/0082811 A1), as applied to claim 1 above, and further in view of Arai et al. (US 5,470,691).
See the description of Bosman (GB 1 353 053) in view of Price (US 2012/0082811 A1), supra.
Bosman (GB 1 353 053) and Price (US 2012/0082811 A1) remain silent with regard to wherein a label is printed directly on the polyethylene terephthalate isophthalic acid modified copolymer material by means of a UV-printer (i.e. in final product form, a UV-printed label).
Arai et al. (US 5,470,691) disclose an optical information medium providing with a protective layer having label with letters or pattern UV-printed on the protective layer – col. 1, lines 53-56, and a UV-curable hydrophilic resin film is applied to the UV-curable protective layer, so that a boundary integrity between these layers and which allows to decrease in deflection or eccentric revolution of the medium and maintain the recording and reproducing properties effectively – col. 3, line 1 to col. 4, line 9 of Arai et al. (US 5,470,691).
It would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed, to provide Bosman (GB 1 353 053), in combination with Price (US 2012/0082811 A1), with a UV-print label in between the forming layers and the protective layers as taught by Arai et al. (US 5,470,691) et al. in order to improve the quality of the forming gramophone record disc, such as to decrease in deflection or eccentric revolution of the medium and maintain the recording and reproducing properties effectively (as suggested by Arai et al. (US 5,470,691)).
Citation of Prior or Relevant Art on enclosed PTO-892
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The cited art made of record (see the enclosed PTO-892), not applied to the rejection of the claims, supra, each disclose aspects of the claimed invention, including wherein gramophone records have polymeric compositions and/or injection molded polyethylene terephthalate resin with modifiers including isophthalic acid
The best prior art has been applied to the claimed invention (see the rejection of the claims on the applied prior art, supra). However, if Applicant chooses to amend the claims in a manner to obviate the applied prior art, as noted in the rejection, supra, the Applicant is advised to not only carefully review the applied prior art for all it teaches and/or suggests, but also the cited prior art of record in order to obviate any potential rejections based on potential amendment(s); by doing so, compact prosecution on the merits can be enhanced.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William J Klimowicz whose telephone number is (571)272-7577. The examiner can normally be reached Monday-Thursday, 8:00AM-6PM, ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached at (571)270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J KLIMOWICZ/Primary Examiner, Art Unit 2688
