DETAILED CORRESPONDENCE
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 .
Response to Arguments
Applicant's arguments have been fully considered.
The arguments are addressed in turn below. In summary the arguments are not persuasive because if the present application was allowed then if a PHOSITA practiced claim 7 of US 12012474 B2 (a composite formed by a composition) then they would also infringe the present application (a composition for forming a composite). The present subject matter (the composition) would be obviously double patented.
Applicant argues that “the claims at issue, which are directed to a very specific polymerizable composition consisting of a very specific composition are very different to the composition material of the cited patent which are directed more broadly to a composite material obtained by impregnating a preform of a fibrous filler with a polymerizable composition containing fibrous filler and a hydrocarbon-based resin as a binder.”
Examiner does not find this persuasive the reference patent, US 12012474 B2, was allowed specifically because of the resin composition (see notice of allowance in US 12012474 B2).
The claims of US 12012474 B2, when read in light of the specification, cover the same combination of ingredients claimed (see table below). Thus, the claims fail the test for patentable distinctness.
A change in the preamble category (e.g., from a composition to a composite made from that composition) does not escape a double patenting rejection. The composite is merely the predictable cured state of the same mixture.
Feature
Claimed Composition
A composition consisting of:
US 12012474 B2A composite formed from a composition of:
Cycloolefin Monomer
Included
Included
Metathesis Catalyst
Included
Included
Radical Generator
Included
Included
Diisocyanate Compound
Included
Included
polyfunctional (meth)acrylate compound
Specific Species
Broad Genus (encompassing specific species)
Applicant argues that “A later-filed, later-expiring unrelated patent is not a proper reference patent for an obviousness-type double patenting rejection. Ex Parte Baurin 2024.”
Examiner does not find this persuasive because the anti-harassment rationale independently supports OTDP even without an extended patent term. This is an independent justification that guards against a scenario where closely related, patentably indistinct rights are split or assigned to separate entities. In this case, a person practicing the invention would face both the US 12012474 B2 patent and the present application.
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.
Claim 1 and 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. US 12012474 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the reference patent teaches a composite having a polymerizable composition that is the same as claimed.
The presently claimed composition is obviously the same as the composition claimed in claim 7 of the reference patent.
The issue is symbolically represented as
The pending patent application claims X consisting of Y and
The issued patent claims Z comprising X comprising Y where
X = polymerizable composition
Y = composition ingredients
Z = composite material
While "consisting of" (closed-ended) and "comprising" (open-ended) define different scopes, a narrower "consisting of" claim is often considered an obvious variation of a broader "comprising" claim if both cover the same core invention.
See claim 7 of the reference patent when read in light of the specification, e.g., the examples1, e.g., “the polymerizable composition containing 100 parts of RIM monomer (manufactured by Zeon Corporation) set at 20° C., 5 parts of trimethylolpropane trimethacrylate (TMPT), 5 parts of methylenediphenyl 4,4′-diisocyanate, 1.7 parts of di-t-butylperoxide (product name “Kayabutyl D (registered trademark)”, manufactured by Kayaku Akzo Co., Ltd.), and 0.04 parts of the above compound (7) as a metathesis polymerization catalyst,” (US 12012474 B2);
and compare to present claim 1 when read in light of the specification, e.g., the examples, e.g,.“100 parts by mass of RIM monomer manufactured by Nippon Zeon Co., Ltd., 5 parts by mass of trimethylolpropane trimethacrylate (TMPT), 5 parts by mass of 4,4′-methylenediphenyl diisocyanate, 1.7 parts by mass of di-t-butyl peroxide manufactured by Kayaku Akuzo Corporation under the manufactured product name of “Kayabutyl D(Registered Trademark), and 0.04 parts by mass of a metathesis polymerization catalyst the above compound (7)” (Present application)
The presently claimed composition is obviously the same as the composition claimed in claim 7 of the reference patent when read in light of the specification.
the reference patent, US 12012474 B2, was allowed specifically because of the resin composition (see notice of allowance in US 12012474 B2).
The claims of US 12012474 B2, when read in light of the specification, cover the same combination of ingredients claimed (see table below). Thus, the claims fail the test for patentable distinctness.
A change in the preamble category (e.g., from a composition to a composite made from that composition) does not escape a double patenting rejection. The composite is merely the predictable cured state of the same mixture.
Feature
Claimed Composition
A composition consisting of:
US 12012474 B2A composite formed from a composition of:
Cycloolefin Monomer
Included
Included
Metathesis Catalyst
Included
Included
Radical Generator
Included
Included
Diisocyanate Compound
Included
Included
polyfunctional (meth)acrylate compound
Specific Species
Broad Genus (encompassing specific species)
The anti-harassment rationale independently supports OTDP even without an extended patent term. This is an independent justification that guards against a scenario where closely related, patentably indistinct rights are split or assigned to separate entities. In this case, a person practicing the invention would face both the US 12012474 B2 patent and the present application.
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 KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Examiner has utilized USPTO approved search resources, such as EIC or external tools, beyond routine search tools and/or leveraged experts in the field. Examiner has cited and explained the relevance of prior art not used in rejections but pertinent to the claims or disclosure. Examiner has provided detailed search documentation through detailed Search Notes, such as annotated search results that identify which data sets were reviewed. When citing the prior art examiner has used annotations clearly in prior art rejections such as, using item-to-item matching to the prior art, pairing exact claim language to particular language used in the prior art, and/or clearly explaining examiner’s interpretation as to how a citation maps to claim language especially when there is not a one-to-one matching of terms.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 The example is not imported into the claim, but is merely referenced to illuminate that the the scope of the claim terms as they were intended by Applicant in the issued patent clearly overlap with the present claim.
