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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission has been entered.
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 polymerizable composition of the reference patent is obvious to the present claim and results in an unjustified or improper timewise extension of the “right to exclude” granted by a patent.
Conclusion
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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.
Prosecution Insights