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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lalikoğlu et al. “Investigation of Lactic Acid Separation by Layered Double Hydroxide: Equilibrium, Kinetics, and Thermodynamics”, J. Chem. Eng. Data 2015, 60, 3159-3165 (of record).
Regarding claims 1 and 2, Lalikoğlu teaches a lactic acid adsorbent comprising a layered double hydroxide (LDH) in including magnesium ions (divalent metal ions) and aluminum ions (trivalent metal ions) with chemically bound water held between layeres. See the abstract and the fifth paragraph in the Introduction section on page 3159. The molar ratio of Mg:Al (M2+/M3+) is 3. See Section 2.
The claim recitation, “the lactic acid adsorbent being brought into contact…” is not being given patentable weight because the instant claim is a product claim and the recitation is simply a statement of intended use. Further, Lalikoğlu teaches contact and adsorption of lactic acid. See Section 3.
Regarding claim 3, the claim limitations are drawn to an intended use of the adsorbent product and are not being given patentable weight except that the product claimed is required to be capable of the use claimed. The LDH in Lalikoğlu is the same as that claimed and thus could also be used in the manner claimed.
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.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 6-8 of copending Application No. 17/179643 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application render obvious the instantly claimed product. Claim 1 of ‘643 teaches a double layered hydroxide/oxide, claims 7-8 teaches divalent (a genus which includes Mg and Ca) and trivalent metals at the ratio instantly required. Further, the claims of ‘643 recite the instantly claimed intended use limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The 112(b) rejections presented in the Non-Final Rejection are withdrawn due to amendment.
After further consideration, the indication of allowable subject matter is withdrawn and new prior art rejections are made as detailed above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J ZIMMER whose telephone number is (571)270-3591. The examiner can normally be reached Monday - Friday, 9:30 AM - 6 PM EST.
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ANTHONY J. ZIMMER
Supervisory Patent Examiner
Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736