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 21 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.
Regarding claim 21, it is unclear whether the layers are made from both polyethylene and EVA or cam be made from just one of them. The word “including” suggests a group from which at least is selected but the next part of the claim suggests that the polyethylene must be present.
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 16 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,565,034. Although the claims at issue are not identical, they are not patentably distinct from each other because it includes all the method steps of claim 16.
Regarding claim 24, see claim 5
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.
Claim(s) 16-20, 22, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin(TW M556168U).
Lin discloses a method of making a mat comprising making three foamed sheets and bonding them together as a stack using thermocompression bonding.(machine translation) Lin does not disclose cutting the sheets after joining to form the mat. It would have been obvious to one of ordinary skill at the time of filing to cut the sheets after joining to form the mat since this would allow forming multiple mats from the sheet and would allow trimming of excess material, both of which are extremely well-known and conventional in the manufacturing arts.
Regarding claims 17-20, the properties of the layers relative to one another are an obvious design choice within the abilities of one of ordinary skill in the art to determine, absent unexpected results particularly since there are only a limited number of choices for the relationship between the three layers of porosity, thickness, and hardness.
Regarding claim 22, for thermocompression bonding, one of the two layers must melt. There are only two choices and thus the middle or exterior or exterior layers having the lower melting point are obvious alternatives in the art.
Regarding claim 24, while Lin is silent as to whether the layers are all joined at the same time or sequentially, these are the only two choices and thus are obvious alternatives in the art.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin as applied to claim 16 above, and further in view of Hing(US Publication 2007/0020449).
Lin does not disclose whether the foam is open or closed cell. Hing discloses that foam layers used in yoga mats are typically closed cell foam.[0004] It would have been obvious to one of ordinary skill at the time of filing to make all the foam layers of Lin from closed cell foam since Hing discloses that yoga mats lie that of Lin are typically made of closed cell foam.[0004]
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin as applied to claim 16 above, and further in view of Mechling et al.(US Publication 2013/0017372).
Lin does not disclose the yoga mat having interlocking teeth along the edge so it can be joined to a plurality of other mats. Mechling discloses it is known to make foam mats with teeth along the edges so they can interlock with other foam mats for exercise mats.([0003], Figure 5) It would have been obvious to one of ordinary skill at the time of filing to include teeth on the edges of the mats of Lin so they can interlock with others to cover a larger surface than a single yoga mat.
Claim(s) 16, 25, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lerman(US Patent 3,616,029).
Lerman discloses a method of making a mat comprising making three foamed sheets and bonding them together as a stack using thermocompression bonding.(Col. 1, ll. 66- Col. 2, ll. 38) Lerman does not disclose cutting the sheets after joining to form the mat. It would have been obvious to one of ordinary skill at the time of filing to cut the sheets after joining to form the mat since this would allow forming multiple mats from the sheet and would allow trimming of excess material, both of which are extremely well-known and conventional in the manufacturing arts.
Regarding claim 25, while Lerman uses heated rollers to heat the foam layers, the use of a heat gun to apply heat to melt material is well-known and conventional in general in the manufacturing arts and would have bene obvious for this reason and since it is a known technique for applying heat.
Regarding claim 26, Lerman shows the foam layers are joined together by rollers.(Figure 2) One in the art would appreciate that a resilient pad(abstract) would be capable of being rolled up.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lerman as applied to claim 16 above, and further in view of Kao(US Publication 2018/0222147).
Lerman does not disclose the specifics of the foam layer compositions. Kao discloses a three layer foam pad wherein one exterior layer has cured polyethylene particles mixed with EVA foam and the other exterior layer has a mix of PE and EVA foam.[0016] The two layer have different properties so one in the art would expect they have different ratios of the polymers. It would have been obvious to one of ordinary skill at the time of filing to use the foam compositions of the two exterior layers in Kao made of PE and EVA as the two exterior foam layers in Lerman with them having different amount of PE since these compositions would provide the laminate with anti-skid wear-resistant effects as taught by Kao[0001] and since the different amounts of PE and EVA is suggested by the different properties of the layer and the PE being particles versus part of the foam.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BARBARA J MUSSER whose telephone number is (571)272-1222. The examiner can normally be reached 7:30-4:30 M-Th; 7:30-3:30 second Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BARBARA J. MUSSER
Primary Examiner
Art Unit 1746
/BARBARA J MUSSER/ Primary Examiner, Art Unit 1746
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