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 17 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation 10 to 3000 µm, and the claim also recites 100 to 600 µm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1-5, 9-11, 20-22, 24-27, and 29 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Dove et al. (WO0127501A1).
Regarding claims 1 and 24, the Dove et al. (hereinafter Dove) reference discloses a selectively densified composite sealant (140), comprising:
a porous layer (141) having a first major surface (upper surface of 141) and an opposing second major surface (lower surface of 141), the porous layer comprising a porous membrane (Figs. 11,12) and having alternating densified portions (145) and undensified portions (141,142), the densified and undensified portions forming respective valleys and peaks in at least one of the first and second major surfaces of the porous layer (Figs. 11,12);
at least one elastomeric layer (146a-d) disposed on one or both of the first and second major surfaces, the at least one elastomeric layer comprising an elastomeric material that fills the valleys in the first and/or second major surfaces of the porous layer (Figs. 11,12), wherein the undensified portions are disconnected from each other and separated by the densified portions (Figs. 11,12). The method of claim 24 is obvious in view of the rejection of claim 1.
Regarding claims 2 and 25, the Dove reference discloses the at least one elastomeric layer comprises a first elastomeric layer disposed on the first major surface, the first elastomeric layer comprising a first elastomeric material that fills the valleys in the first major surface and a second elastomeric layer disposed on the second major surface, the second elastomeric layer comprising a second elastomeric material that fills the valleys in the second major surface (Figs. 11,12). The method of claim 25 is obvious in view of the rejection of claim 2.
Regarding claim 3, the Dove reference discloses the first and second elastomeric material are different elastomeric materials or wherein the first and second elastomeric materials are the same elastomeric material (Page 16, Lines 7-27).
Regarding claim 4, the Dove reference discloses the porous membrane comprises expanded polytetrafluoroethylene (ePTFE) (Page 16, Lines 7-27).
Regarding claim 5, the Dove reference discloses the elastomeric material comprises a fluoroelastomers (Page 14, Line 28-Page 15, Line 8).
Regarding claim 9, the Dove reference discloses the elastomeric material is partially imbibed into the undensified portions (Figs. 11,12).
Regarding claim 10, the Dove reference discloses the undensified portions have substantial remaining porosity (Figs. 11,12).
Regarding claim 11, the Dove reference discloses the porous layer comprises a repeating pattern of the undensified portions and densified portions (Figs. 11,12).
Regarding claim 20, the Dove reference discloses the at least one elastomeric layer comprises a first elastomeric layer disposed on the first major surface, the first elastomeric layer comprising a first elastomeric material that fills the valleys in the first major surface and; a second elastomeric layer disposed on the second major surface, the second elastomeric layer comprising a second elastomeric material that fills the valleys in the second major surface, and wherein the first elastomeric material and/or the second elastomeric material comprises a plurality of elastomeric layers (Figs. 11,12).
Regarding claim 21, the Dove reference discloses the densified portions of the porous layer and the elastomeric material of the elastomeric layer are liquid impermeable (Page 16, Lines 33-36).
Regarding claim 22, the Dove reference discloses the densified portions of the porous layer are configured to prevent liquid ingress into the sealant and thus are configured to render a mechanical connection comprising the sealant liquid tight (Figs. 11,12).
Regarding claim 26, the Dove reference discloses coating the second major surface with a second elastomeric material, optionally the same as the first elastomeric material, to form a second elastomeric layer disposed on the second major surface, the second elastomeric layer comprising the second elastomeric material covering the densified and undensified portions (Figs. 11,12).
Regarding claim 27, the Dove reference discloses the first major surface is coated with the first elastomeric material without imbibing the first elastomeric material into the undensified regions (Figs. 11,12).
Regarding claim 29, the Dove reference discloses heating the composite comprising a coated elastomeric material to at least partially cure the elastomeric material (Page 19, Lines 1-11).
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.
Claim(s) 6-8, 13, 15-17, 19, 28, and 32-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dove in view of Dove (2007/0040338).
Regarding claims 6, 28, and 32, the Dove reference discloses the invention substantially as claimed in claims 1 and 24.
However, the Dove reference fails to explicitly disclose further comprising at least one barrier layer disposed between the porous layer and the at least one elastomeric layer.
The Dove ‘338 reference, a seal, discloses using multiple layers (Fig. 3).
It would have been obvious to one of ordinary skill in the art at the time of filing to provide multiple layers to the Dove reference in view of the teachings of the Dove ‘338 reference in order to ensure an optimal sealing barrier. The methods of claims 28 and 32 are obvious in view of the rejection of claim 6.
Regarding claim 7, the Dove reference, as modified in claim 6, discloses the porous layer is free from the elastomeric material from the at least one elastomeric layer (Dove, Figs. 11,12).
Regarding claim 8, the Dove reference, as modified in claim 7, discloses the barrier layer is selected from the group comprising densified expanded polytetrafluoroethylene (ePTFE) and biaxially oriented polypropylene (BOPP) (Dove ‘338, Para. [0070]).
Regarding claim 13, the Dove reference, as modified in claim 1, discloses the densified portions comprise a grid of compressed ePTFE having a density from 0.66 g/cm3 to 2.20 g/cm3 (Para. [0071]).
Regarding claim 15, the Dove reference, as modified in claim 1, discloses the densified portions comprise a grid of compressed ePTFE, the grid having a grid line width from 0.25 to 5.00 mm (Dove ‘338, Para. [0079]).
Regarding claim 16, the Dove reference, as modified in claim 1, discloses the densified portions comprise a grid of compressed ePTFE, the grid having a grid line spacing from 1 mm to 10 mm (Dove ‘338, Para. [0079]).
Regarding claim 17, the Dove reference, as modified in claim 1, discloses the sealant has a total thickness from 10 to 3000 µm, preferably a total thickness from 100 to 600 µm (Dove, Example 1).
Regarding claim 19, the Dove reference, as modified in claim 1, discloses the structural limitations and would be capable of being structurally sound at a range of temperatures from -50 °C to at least 100 °C.
Regarding claim 33, the Dove reference, as modified in claim 24, discloses applying adhesive an outer surface of the first elastomeric material and/or on an outer surface of the second elastomeric material (Dove ‘338, Para. [0074]).
Regarding claim 34, Dove reference, as modified in claim 33, discloses the adhesive is applied discontinuously, optionally wherein the adhesive is applied as discrete dots; or wherein the adhesive is applied as a continuous layer (Dove ‘338, Para. [0074]).
Claim(s) 12, 14, 18, 23, 30, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dove.
Regarding claim 12, the Dove reference discloses the invention substantially as claimed in claim 11.
However, the Dove reference fails to explicitly disclose the repeating pattern comprises undensified portions arranged in a rectangular grid and separated from one another by the densified portions.
It would have been obvious to one of ordinary skill in the art at the time of filing to provide the claimed shape, a change in the shape of a prior art device is a design consideration within the skill of the art and in order to allow for optimal sealing for different shaped environments. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claims 14, 18, and 30, the Dove reference discloses the invention substantially as claimed in claims 1 and 24.
However, the Dove reference fails to explicitly disclose the densified portions comprise a grid of compressed ePTFE compressed to a pressure from about 12 to at least 60 MPa; the sealant compresses to a strain of 10 to 90 % or 30 to 70% under stress of 60 MPa; or at least partially curing the elastomer(s) by heating the composite at a temperature of from about 100 °C to about 200 °C for about 5 to about 10 minutes.
It would have been obvious to one of ordinary skill in the art at the time of filing to use the claimed ranges, since 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 and in order to provide optimal sealing life. In re Aller, 105 USPQ 233.
Regarding claim 23, the Dove reference discloses the invention substantially as claimed in claim 1.
However, the Dove reference fails to explicitly disclose the densified portions of the porous layer and the elastomeric material of the elastomeric layer are resistant to chemical attack by jet fuel and phosphate ester hydraulic fluid.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to a material resistant to jet fuel and phosphate ester hydraulic fluid, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious mechanical expedience and in order to ensure a proper seal. In re Leshin, 125 USPQ 416.
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 1-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of U.S. Patent No. 12,404,930. Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claims of the current disclosure are more generic than ‘930 and claims 35 and 36 was the allowable subject matter for ‘930.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GILBERT Y LEE whose telephone number is (571)272-5894. The examiner can normally be reached Monday-Friday 8am-430pm.
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, Christine Mills can be reached on (571)272-8322. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GILBERT Y LEE/Primary Examiner, Art Unit 3675