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 .
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 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.
Claims 1-2, 5-9, 12-21 are pending. Applicant’s previous election of Group I, and the organic powder material/vinyl polysiloxane coating species, claims 1, 2, 5-9, 12-14 still applies and claims 15-21 remain withdrawn.
Response to Amendment
Applicant’s amendment of 11/06/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
It is noted that there are some changes to the present claims that lack proper markups. Applicant has provided a properly annotated version of the claim amendment (see interview summary). Any discrepancies between this office action and the provided claims due to an amendment that is not properly annotated will not be held against this office action.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1, 2, 6, 7, 8-9, 13, 14 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims have been amended to recite “bead” instead of “microbead” which broadens the claimed scope beyond the original disclosure, which only ever described the invention with “microbead”. Claims 5-7 and 12-14 are not rejected under this issue because they recite the size of the bead to be the same as previously disclosed for a microbead.
Claims 6 and 13 recites a 0.01 endpoint which does not appear supported.
Claims 7 and 14 recite a 14 endpoint which does not appear supported.
Claims 7 and 14 recite amounts of “reactive” benzoyl peroxide which is not supported.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same new matter issue(s) via their dependency.
Claim Rejections - 35 USC § 112(b)/second paragraph
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(s) 1, 2, 5-7, is/are 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “A carrier for delivering powdered peroxide material adhered to…a coating” but then recites in the body of the claim that the claim includes the coating as well as the carrier, such that the preamble of the claim appears to conflict with the body of the claim and is therefore vague. It would appear remedial to recite something like “A coating comprising…a carrier for delivering…”.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1, 2, 5-9, 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laroche (GB 2,208,078), with evidence from the Silquest NPL document.
Regarding claims 1, 2, 5-9, 12-14, Laroche teaches a carrier for benzoyl peroxide powder initiator/catalyst that is made of a glass bead, as in claims 2 and 9, having a size overlapping claims 5 and 12, and with the bead first being provided with a vinyl silane coating (A-151 is vinyltriethoxysilane, see the NPL document, and the condensation of the ethoxysilane groups will form polysiloxane bonds between vinyltriethoxysilane molecules and between vinyltriethoxysilane and the glass bead surface, such that the coating is a vinyl polysiloxane as claimed before being impregnated with the benzoyl peroxide powder (see pages 3-6), such that the benzoyl peroxide would stick to the exterior surface of the coating which is provided on the exterior surface of the beads and then the beads are further applied to the exterior surface of the coating after the polymerizable coating has already been applied to the substrate.
The amount of vinyl polysiloxane coating is not explicitly disclosed as claimed, however, the coating is disclosed as helping the initiator/catalyst to stick to the beads (i.e., affinity as claimed) and is also disclosed as promoting coupling between the beads and the polymer that the beads are later mixed into, thereby improving breaking strength (pages 3-4). The examples also show that an exemplary amount of the silane coating on the beads is within the range of claims 6 and 13 (page 14, Example 8 uses 0.7g of silane per 1000g of beads, corresponding to 0.07wt% silane), such that it would have been obvious to have tried such an amount for the general amount of silane (not just the particular ingredients used in the examples) because the examples show it to be an exemplary amount for achieving the inventive effects of Laroche discussed above (i.e., making initiator/catalyst stick and improved breaking strength). Even without the amount of coating disclosed in the examples, the disclosed benefits of the coating discussed above make the amount of coating on the beads obvious to adjust to within the claimed range as part of optimizing the benefits discussed above.
See MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
The amount of benzoyl peroxide is not explicitly disclosed as claimed, however, the peroxide is disclosed as being a catalyst for a subsequent polymer, with the amount of catalyst provided by the carrier/bead being adjusted based on the desired polymerization speed and/or polymerization temperature being catalyzed, and with the amount of catalyst adhered to the beads being adjustable based on the surface roughness of the bead (page 6). The examples also show that an exemplary amount of the catalyst on the beads is within the range of claims 7 and 14 (page 11, Example 1 uses 8g of catalyst per 1000g of beads, corresponding to 0.8wt% catalyst), such that it would have been obvious to have tried such an amount for the general amount of catalyst (not just the particular ingredients used in the examples) because the examples show it to be an exemplary amount for achieving the inventive effects of Laroche discussed above (i.e., achieving desirable polymerization speed and/or polymerization temperature). Even without the amount of catalyst disclosed in the examples, the disclosed benefits of the amount of catalyst discussed above make the amount of catalyst on the beads obvious to adjust to within the claimed range as part of optimizing the benefits discussed above.
Since the catalyst is intended to catalyze the polymerizable coating upon which it is provided, the catalyst stuck onto the beads is considered “reactive” (i.e., catalytically active) as in claims 7 and 14.
See MPEP 2144.05 II A. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
In light of the overlap between the claimed product and that disclosed by Laroche, it would have been obvious to one of ordinary skill in the art to use a product that is both disclosed by Laroche and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that beads are supported because the specification provides sizes bigger than 999 microns. However, “beads” encompasses sizes much bigger than the sizes cited by Applicant, while “microbead” may still be interpreted as having sizes cited by Applicant (e.g., around 2mm). The rejection is therefore maintained. If Applicant wishes to clarify that the “microbeads” have an upper endpoint of more than just 999 microns, then the range of claim 5 could be recited in the independent claims (along with reverting to “microbeads” instead of “beads”).
Applicant argues that the present vinyl polysiloxane coating is formed from a different monomer than the one used in Laroche and thereby avoids alcohol formation. This is not persuasive because the claims do no limit the type of monomer used to form the vinyl polysiloxane coating, and even if the claims were amended to recite this aspect it would be directed to an immaterial product by process limitation because the final product includes the cured vinyl polysiloxane coating in either case (alcohol formation occurs during the intermediate product formation and is not present/relevant in the final product). Furthermore, Applicant has not provided evidence that the vinyl polysiloxane coating in the present application actually avoids alcohol formation (merely attorney arguments). Reference in the specification to alcohol appear to be related to solvent, not the byproduct of the silane reaction. Furthermore, Laroche teaches that the beads may be coated with the vinyl siloxane coating prior to impregnation with the catalyst, such that any alcohol produced during condensation of the alkoxysilane compounds would not be present when the coated beads are impregnated with the catalyst.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787