DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 10/14/25, claims 1-11, 13-17 are currently pending in the application, with claims 7-11, 13, 14, 16 and 17 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 103
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Shultz et al. (2015/0343455 A1), in view of Hardy et al. (US 3,049,509) (references of record).
Shultz teaches electret webs comprising as essential components, a thermoplastic resin and a charge-enhancing additive containing a divalent metal-containing compound of Formula I, wherein said electret webs comprise a non-woven fibrous web or a film. Disclosed genus of thermoplastic resins include polyolefins, polyvinyl chloride, polystyrene, polycarbonates and polyesters (Ab., [0001], [0007]-[0009], [0022]-[0028], ref. claims).
Shultz further teaches optional additives for blending into the thermoplastic resin composition, for example, light stabilizers and hindered amines [0040].
Shultz is silent on (A) an electret web consisting of a thermoplastic resin and a charge-enhancing additive comprising a compound of claimed Formula I, and (B) having antimicrobial properties as in the claimed invention.
With regard to (A), it is noted that Shultz teaches electret webs comprising a thermoplastic resin of overlapping scope, and a divalent metal-containing compound as charge-enhancing additive, as two essential components, and optionally, additives. It is further noted that the transitional phrase “comprising” in claim 1 is open to other charge-enhancing additives, in addition to that of the claimed Formula I.
The secondary reference to Hardy teaches polymeric resin compositions containing heterocyclic ultraviolet light absorbing compounds having high absorption capacities, wherein said polymeric resins include polystyrenes, polyvinyl chlorides, polyesters, etc. Disclosed ultraviolet light absorbing compounds having high absorption capacities throughout the near UV absorption range include compounds of the following formula:
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wherein, X may be NH or S, and R may be a monocyclic aromatic radical containing a hydroxy group at the ortho position (Ab., col. 3, line 10-col. 4, line 36, col. 5, lines 5-25, claims 1, 2).
Disclosed Example 1 teaches 2-(2-hydroxyphenyl)-benzothiazole (reads on Formula 1-claim 1, Formula 2-claim 5, Formula 1C-claim 6), and use thereof in a thermoplastic resin. Disclosed Example 2 teaches 2-(2--hydroxyphenyl) benzimidazole (reads on Formula 1-claim 1, Formula 2-claim 5, Formula 1A-claim 6), and use thereof in a thermoplastic resin. That is, ultraviolet light absorbing compounds of Examples 1 and 2 have the same chemical identity as the claimed charge-enhancing additive of formula I.
In light of the advantages taught in Hardy, and given the teaching in Shultz on suitable essential components and optional additives in the disclosed electret web, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare an electret web consisting of a thermoplastic resin of overlapping scope, a charge-enhancing additive comprising a divalent metal-based compound as prescribed by Schultz, and 2-(2-hydroxyphenyl)-benzothiazole and/or 2-(2--hydroxyphenyl) benzimidazole, thereby obviating the claimed compositional limitations. Disclosed 2-(2-hydroxyphenyl)-benzothiazole and/or 2-(2--hydroxyphenyl) benzimidazole that read on claimed compound of Formula I, must be capable of providing for all advantages thereof, i.e., function as ultraviolet light absorbing compounds and as charge-enhancing additives, absent evidence to the contrary. As such, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With regard to (B), given that the claimed compositional limitations are obviated by the combination of Schultz and Hardy, and noting that the original specification does not identify any feature that results in the claimed effect or physical property outside of the presence of the claimed components, it would have been obvious to a skilled artisan to reasonably expect the Shultz’s electret webs, as modified by Hardy, to have the claimed antimicrobial properties, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 10,724,171, in view of Hardy et al. (US 3,049,509) (references of record).
Patent claim 1 is drawn to an electret web comprising a thermoplastic resin as in the presently claimed invention, and a charge-enhancing additive comprising at least one substituted benzotriazole phenolate salt, i.e., two essential components therein. Patent claim 10 recites additives, such as light stabilizers, as a component in the electret web.
Although the patent claims are silent on an electret web consisting of claimed components, and having anti-microbial properties, incorporating the discussion on Hardy from paragraph 6 above, and noting that the transitional phrase “comprising” in instant claim 1 is open to other , it would have been obvious to one of ordinary skill in the art to include 2-(2-hydroxyphenyl)-benzothiazole and/or 2-(2-hydroxyphenyl)-benzimidazole in the electret webs of the patent claims. As discussed in paragraph 7 above, Hardy’s 2-(2-hydroxyphenyl)-benzothiazole and/or 2-(2--hydroxyphenyl) benzimidazole are chemically indistinct from claimed charge-enhancing additive of formula I, and must be capable of functioning as ultraviolet light absorbing compounds and as charge-enhancing additives, because "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Additionally, the discussion from paragraph 8 above on antimicrobial properties are incorporated herein by reference.
Response to Arguments
In view of the amendment dated 10/14/25, the rejections based on Ylitalo-Hardy combination are withdrawn, and the rejections based on Schultz-Hardy combination and US Patent 10/724,171-Hardy combination are rewritten herein above. The arguments dated 10/14/25 have been duly considered.
Applicants argue that if one were to modify the electret webs of Schultz with a light stabilizer, one would pick Hindered Amine Light Stabilizers (HALS), which is a different class of light stabilizers than UV absorbers of Hardy, picking Hardy’s UV absorbers would go against the teachings of Schultz to prepare an electret web, and that there is no motivation to combine Schultz and Hardy as suggested as there is motivation to combine Schultz and a HALS compound.
In response, it is noted that Shultz teaches various optional additives for with the thermoplastic composition, and nonlimiting thereof including light stabilizers and hindered amines, with HALS being particularly suitable [0040]. That is, while Shultz prescribes HALS as being preferred but it is also optional, and more importantly, Schultz does not teach away from ultraviolet light absorbing compounds, such as those of Hardy’s. Thus, in view of the advantages taught in Hardy, a skilled artisan to be motivated to modify Shultz’s compositions and electret webs with Hardy’s compounds.
Applicants argue that amended claim is more restrictive due to the recitation "consisting of", modification as suggested by Examiner would resultant in webs having a thermoplastic resin, the substituted- mercaptobenzimidazolate charge-enhancing additive as well as the UV absorbers of Hardy, as opposed to that of claim 1 which is limited to the thermoplastic resin and charge-enhancing additive of Formula 1. Applicant concludes that claim 1 is patentable over the combination of Schultz and Hardy, and likewise, the claims dependent upon claim 1 are patentable for the same reasons.
Examiner disagrees with Applicants’ conclusion. Amended claim 1 is restrictive due to the recitation “consisting of”, and is limited to a thermoplastic resin and a charge-enhancing additive of Formula 1. However, with the recitations “a thermoplastic resin comprising” and “a charge-enhancing additive comprising” in claim 1, the term “comprising” is open ended to other thermoplastic resins and charge-enhancing additives, in addition to those of claim 1. Therefore, including Hardy’s compound is i Shultz’s electret webs comprising a thermoplastic resin and a divalent metal compound-based charge-enhancing compound would meet the compositional limitations of the claimed electret web, i.e., would be patentably indistinct from that of claim 1. Hardy’s 2-(2-hydroxyphenyl)-benzothiazole and 2-(2--hydroxyphenyl) benzimidazole read on compounds of claimed formula I, and therefore, must be capable of functioning as ultraviolet light absorbing compounds and as charge-enhancing additives, absent evidence to the contrary. As stated previously, Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding the double patenting rejections, Applicants argue that U.S. Patent No. 10,724,171 teaches electret webs with charge-enhancing additives that are substituted benzotriazole phenolate salts or a combination thereof, and combining it with Hardy would not result in the current invention which does not include substituted benzotriazole phenolate salt or a combination thereof, and since there is no teaching in any reference suggesting that compounds of Formula 1 are useful charge- enhancing agents, without the current teachings that the compounds of Formula 1 as charge-enhancing agents, one would not use them as charge-enhancing agents or add these compounds as light absorbing agents, but one would still include whatever charge- enhancing agent they are already using.
Applicants’ arguments are not deemed persuasive. As stated above, 2-(2-hydroxyphenyl)-benzothiazole and 2-(2-hydroxyphenyl) benzimidazole read on claimed compounds of Formula I, Hardy provides a motivation to add such compounds in thermoplastic resins, such as those of the US patent claims. While the arguments focus on the functional language, Hardy’s 2-(2-hydroxyphenyl)-benzothiazole and 2-(2--hydroxyphenyl) benzimidazole meet the structural limitations of the claimed charge-enhancing additive. On this basis, Hardy’s compounds must be capable of providing for all advantages thereof, including that of UV absorption as well as of charge enhancement, absent evidence to the contrary. Regarding the argument that the current invention does not include substituted benzotriazole phenolate salt or a combination of substituted benzotriazole phenolate salts, as discussed previously, the transitional phrase “comprising” in instant claim 1 is open to other charge-enhancing agents, and Hardy’s compounds, although not explicitly taught as charge-enhancing agents, have the same chemical identity as claimed compounds of Formula I.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762