DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9,546,263. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a genus of that which the patent claims.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 8,864,893. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a genus of that which the patent claims.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 9,718,729. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a genus of that which the patent claims.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10-15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pacorel (US 2012/0133073) in view of USPN. 6,331,350 to Taylor.
Pacorel teaches a binder based on molasses which incorporates polymeric carboxylic acid such as polyacrylic acid and/or polycarboxylic acid such as citric acid (Pacorel, abstract, paragraph [0027]- [0029], claim 6, 10). Pacorel further teaches the molasses may be partially or completely substituted by maltodextrin (Id., paragraph [0024]) which a dextrose equivalent of 5-100 (Id., paragraph [0025]), and wherein molasses meets the limitations of a dye (Id.). Furthermore, the term maltodextrin is well known in the art as referring to Dextrin having a D.E. value between 3 and 20 and a molecular weight between 505 and 5775 g/mol which overlaps the claimed ranges. It would have been obvious to the person having ordinary skill in the art to utilize maltodextrin instead of molasses because Pacorel specifically teaches all of the molasses may be substituted by maltodextrin. The DE number taught by Pacorel overlaps that of claim 1. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Pacorel further teaches the range for the carbohydrate component is from 38-76%, the amount of the polymeric polycarboxylic acid is from 0-38%, the total of the monomeric polycarboxylic acid is from 3-57% (Table 1). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Pacorel does not teach the pH of between 1 and 2.5. However, Taylor teaches a binder composition for inorganic fibers comprising polycarboxylic acid and polyols containing at least two hydroxyl groups, and further comprising a pH adjuster utilized to adjust the pH down to below 3.5, such as preferably less than 2 (Taylor, abstract, column 3, lines 56- column 4, line 15, column 6, lines 10-28). Taylor teaches that the low pH provides a product with excellent recovery, rigidity, and processing requirements (Id.). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the binder of Pacorel and to adjust the pH such as within the claimed range, as taught by Taylor, motivated by the desire to form a conventional binder composition containing a polyol and acid components and possessing a pH which is demonstrated in the art as being suitable for binding inorganic fibers and resulting in improved properties and processability.
With respect to claims 13-15, Pacorel teaches glycerol may be included in the polyacrylic acid (Id., paragraph [0029]).
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 VINCENT A TATESURE whose telephone number is (571)272-5198. The examiner can normally be reached Monday-Friday 7:30AM-4PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Chriss can be reached at 5712727783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786