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 .
Specification
The disclosure is objected to because of the following informalities: all patent applicants should use the metric (S.I.) units followed by the equivalent English units when describing their inventions in the specifications of patent applications. The initials S.I. stand for “Le Système International d’ Unités,” the French name for the International System of Units, a modernized metric system adopted in 1960 by the International General Conference of Weights and Measures based on precise unit measurements made possible by modern technology [see MPEP 608.01]. Appropriate correction is required.
Claim Objections
Claim 7 is objected to because of the following informalities: metric (S.I.) units should be included in claim 7. Appropriate correction is required.
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) 7 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 2005/0154070).
Regarding claims 7, 9 and 11: Suzuki et al. (US ‘070) discloses a method of making coated moldings [abstract], wherein Example 26 [Ex. 26; 0492-0498] molds a mixture of recycled PET bottles and ABS resin pellets {binder} (in the same manner as Ex. 18 [0459-0468]), coats the molding with paint #10, crushes the coated moldings, and subsequently extrudes the crushed coated moldings at 265 oC (509 oF) [Ex. 26; 0492-0498]. Suzuki et al. (US ‘070) discloses paint #10 contains [0339; 0807-0808; Tables 5-6] varnish C, titanium dioxide, iron oxide yellow, carbon black, calcium carbonate, and talc [0339; 0807-0808; Tables 5-6]. Suzuki et al. (US ‘070) discloses talc and silica as pigments [i.e. exchange talc with silica in paint #10; see MPEP 2131.02]. Suzuki et al. (US ‘070) discloses heating at a 235 oC (455 oF) [0392] and 200-220 oC (392-428 oF) [0719].
Suzuki et al. (US ‘070) does not specifically disclose heating Ex. 26 at 204-218 oC (400-425 oF). However, differences in tempera-ture will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such tempera-ture is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02; 2144.07].
Regarding claim 10: Suzuki et al. (US ‘070) discloses yellow pigments (ex. iron oxide yellow) [0193].
Suzuki et al. (US ‘070) does not specifically disclose C.I. Pigment Yellow 83. However, matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) [see MPEP 2144.04].
Regarding claim 12: Suzuki et al. (US ‘070) discloses glass beads [0312].
Suzuki et al. (US ‘070) does not specifically disclose paint #10 containing glass beads. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included glass beads based on the invention of Suzuki et al. (US ‘070), and would have been motivated to do so since Suzuki et al. (US ‘070) suggests that the composition can contain glass beads as pigment [0312]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/500,813 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the method of manufacturing a road marking compound by combining PET from pulverized plastic, silica, filler, pigment, binder and heating the composition of claims 1-20 of Application No. 18/500,813 substantially overlaps in scope with the instant claimed method of claims 7-12. While claims 1, 3 and 16 of Application No. 18/500,813 do not heat the composition to 400-425 oF, it would have been obvious to heat the composition to 400-425 oF, as Application No. 18/500,813 claims heating to 400-425 oF [claims 11 and 20]. While Application No. 18/500,813 does not specifically employ a clear PET, it would have been obvious to have employed a clear PET, as Application No. 18/500,813 claims a clear PET [claim 5]. While Application No. 18/500,813 does not specifically claim the road marking compound, the resulting road marking compound substantially overlaps in scope with the paint composition of instant claims 1-6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Terminal Disclaimer
The terminal disclaimers filed on 8/15/25 and 8/20/25 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,840,638. The terminal disclaimer has been recorded. Note: The terminal disclaimer filed 8/20/25 lists the instant application (Application No. 17/705,326) as opposed to the application number (Application No. 18/500,813) recited in the nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 8/15/25 have been fully considered but they are not persuasive.
The objections to the specification and claims for not using S.I. units are maintained. All patent applicants should use the metric (S.I.) units followed by the equivalent English units when describing their inventions in the specifications of patent applications [see MPEP 608.01].
The rejection of claims based upon Suzuki et al. (US 2005/0154070) is maintained. Suzuki et al. (US ‘070) was relied on for disclosing a method of making coated moldings [abstract], wherein Example 26 [Ex. 26; 0492-0498] molds a mixture of recycled PET bottles and ABS resin pellets {binder} (in the same manner as Ex. 18 [0459-0468]), coats the molding with paint #10, crushes the coated moldings, and subsequently extrudes the crushed coated moldings at 265 oC (509 oF) [Ex. 26; 0492-0498]. Suzuki et al. (US ‘070) discloses paint #10 contains [0339; 0807-0808; Tables 5-6] varnish C, titanium dioxide, iron oxide yellow, carbon black, calcium carbonate, and talc [0339; 0807-0808; Tables 5-6]. Suzuki et al. (US ‘070) discloses talc and silica as pigments [i.e. exchange talc with silica in paint #10; see MPEP 2131.02]. Suzuki et al. (US ‘070) discloses heating at a 235 oC (455 oF) [0392] and 200-220 oC (392-428 oF) [0719].
While Suzuki et al. (US ‘070) does not specifically disclose heating Ex. 26 at 204-218 oC (400-425 oF), the reference must be considered for all that it discloses and must not be limited to preferred embodiments [see MPEP 2123]. Applicants can rebut a prima facie case of obvious-ness based on overlapping ranges by showing the crit-icality of the claimed range. “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other vari-able within the claims. . . . In such a situation, the applicant must show that the particular range is criti-cal, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 716.02 - § 716.02(g) for a discussion of criticality and unex-pected results [see MPEP 2144.05].
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). [see MPEP 716.02(d)].
Objective evidence which must be factually sup-ported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991) [see MPEP 716.01(c)].
While Suzuki et al. (US ‘070) does not disclose a road marking paint composition, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02; 2144.07].
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767