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 § 112
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.
Claims 11, 12, 14-17, and 20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 11, claim 11 recites the limitation "the water-soluble additional polymer" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as the water-soluble polysaccharide.
Regarding claim 12, claim 12 recites the limitation "the water-soluble additional polymer" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as the water-soluble polysaccharide.
Regarding claim 14, this claim attempts to claim a process, but does not set forth any steps involved in the process and therefore raises an issue of indefiniteness. A claim is indefinite if it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). MPEP 2173.05(q). For the purpose of further examination, the claim will be interpreted as “utilizing” the puncture sealing agent of claim 1 for the claimed use, as “utilizing” has been held as not indefinite.
Regarding claim 15, this claim attempts to claim a process, but does not set forth any steps involved in the process and therefore raises an issue of indefiniteness. A claim is indefinite if it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). MPEP 2173.05(q). For the purpose of further examination, the claim will be interpreted as “utilizing” the puncture sealing agent of claim 1 for the claimed use, as “utilizing” has been held as not indefinite.
Regarding claim 16, this claim attempts to claim a process, but does not set forth any steps involved in the process and therefore raises an issue of indefiniteness. A claim is indefinite if it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). MPEP 2173.05(q). For the purpose of further examination, the claim will be interpreted as “utilizing” the puncture sealing agent of claim 1 for the claimed use, as “utilizing” has been held as not indefinite.
Regarding claim 17, this claim attempts to claim a process, but does not set forth any steps involved in the process and therefore raises an issue of indefiniteness. A claim is indefinite if it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). MPEP 2173.05(q). For the purpose of further examination, the claim will be interpreted as “utilizing” the puncture sealing agent of claim 1 for the claimed use, as “utilizing” has been held as not indefinite.
Regarding claim 20, claim 20 recites the limitation "the puncture sealing sealant" in line 7. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be treated as the puncture sealing agent.
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.
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.
Claims 1, 3-5, and 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Maki et al. (US 2020/0063003) in view of Ichikawa (US 2015/0344743).
Regarding claims 1, 3-5, and 9-11, Maki et al. teaches a puncture sealing agent comprising, based on 100% by weight of the puncture sealing agent, from 15 to 35% by weight of natural rubber latex (¶17), 30 to 70% by weight of an antifreezing agent (¶20), and 1 to 10% by weight of a carbohydrate that is preferably a monosaccharide, a polysaccharide, or an oligosaccharide (¶26, 27).
Maki et al. does not teach that the puncture sealing agent comprises an additional polymer that is a water-soluble cellulose ether present in 0.1 to 2.5% by weight of the puncture sealing agent. However, Ichikawa teaches a puncture sealant comprising a natural rubber latex, a tackifier, an antifreezing agent, and a thixotropy-imparting agent (¶16, 18, 19). The thixotropy-imparting agent is a water-soluble polymer such as methyl cellulose or hydroxyethyl cellulose (¶29) and present in an amount of 1 to 30% by mass (¶37). Maki et al. and Ichikawa are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of puncture sealing agents comprising natural rubber latex and an antifreezing agent. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 1 to 30% by weight of methyl cellulose or hydroxyethyl cellulose, as taught by Ichikawa, to the composition, as taught by Maki et al., and would have been motivated to do so to improve injectability and puncture sealing performance of the composition (¶37).
Regarding claim 12, methyl cellulose and hydroxyethyl cellulose are highly soluble in water and therefore should have a water solubility of at least 5 g/L at 20° C. Additionally, they are listed in the instant specification as examples of cellulose ethers suitable for use as the additional polymer in the composition (¶34, 35 of PG-PUB).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Maki et al. (US 2020/0063003) in view of Ichikawa (US 2015/0344743).
Regarding claims 18 and 19, Maki et al. teaches a puncture sealing agent comprising, based on 100% by weight of the puncture sealing agent, from 15 to 35% by weight of natural rubber latex (¶17), 30 to 70% by weight of an antifreezing agent (¶20), and 1 to 10% by weight of a carbohydrate that is preferably a monosaccharide, a polysaccharide, or an oligosaccharide (¶26, 27).
Maki et al. does not teach that the puncture sealing agent comprises an additional polymer that is a water-soluble cellulose ether containing a hydroxyethyl group. However, Ichikawa teaches a puncture sealant comprising a natural rubber latex, a tackifier, an antifreezing agent, and a thixotropy-imparting agent (¶16, 18, 19). The thixotropy-imparting agent is a water-soluble polymer such as hydroxyethyl cellulose (¶29). Maki et al. and Ichikawa are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of puncture sealing agents comprising natural rubber latex and an antifreezing agent. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add hydroxyethyl cellulose, as taught by Ichikawa, to the composition, as taught by Maki et al., and would have been motivated to do so to improve injectability and puncture sealing performance of the composition (¶37).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Maki et al. (US 2020/0063003) in view of Ichikawa (US 2015/0344743).
Maki et al. teaches a puncture sealing agent comprising, based on 100% by weight of the puncture sealing agent, from 15 to 35% by weight of natural rubber latex (¶17), 30 to 70% by weight of an antifreezing agent (¶20), and 1 to 10% by weight of a carbohydrate that is preferably a monosaccharide, a polysaccharide, or an oligosaccharide (¶26, 27).
Maki et al. does not teach that the puncture sealing agent comprises an additional polymer that is a water-soluble cellulose ether present in 0.55 to 5% by weight of the puncture sealing agent. However, Ichikawa teaches a puncture sealant comprising a natural rubber latex, a tackifier, an antifreezing agent, and a thixotropy-imparting agent (¶16, 18, 19). The thixotropy-imparting agent is a water-soluble polymer such as methyl cellulose or hydroxyethyl cellulose (¶29) and present in an amount of 1 to 30% by mass (¶37). Maki et al. and Ichikawa are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of puncture sealing agents comprising natural rubber latex and an antifreezing agent. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 1 to 30% by weight of methyl cellulose or hydroxyethyl cellulose, as taught by Ichikawa, to the composition, as taught by Maki et al., and would have been motivated to do so to improve injectability and puncture sealing performance of the composition (¶37).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Maki et al. (US 2020/0063003) in view of Ichikawa (US 2015/0344743) as applied to claim 1 above, and further in view of Li et al. (CN 108531108). For convenience, the citations below for Li et al. are taken from an English language equivalent included herewith.
Maki et al. and Ichikawa teach the puncture sealing agent of claim 1 including the natural rubber latex. Maki et al. does not teach that the natural rubber latex is free of ammonia. However, Li et al. teaches a low ammonia tire repair liquid (Page 1, lines 12-14) comprising ammonia-free natural rubber latex (Page 1, lines 48-49). Maki et al. and Li et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of tire repair/puncture sealing compositions containing natural rubber latex. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use an ammonia-free natural rubber latex, as taught by Li et al., in the composition, as taught by Maki et al., and would have been motivated to do so in order to reduce the odor of ammonia for the customer and lowering the alkalinity of system which reduces corrosion of the tire parts (Page 4, line 57 to Page 5, line 1).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Maki et al. (US 2020/0063003) in view of Ichikawa (US 2015/0344743) as applied to claim 1 above, and further in view of Dowel (EP 3370949).
Regarding claims 6 and 7, Maki et al. and Ichikawa teach the puncture sealing agent of claim 1 as set forth above. Maki et al. does not teach that the composition comprises from 0.1 to 10% by weight of a biomass-derived material that is different from the additional polymer, the carbohydrate, and the rubber latex. However, Dowel teaches a sealing composition for sealing punctures in pneumatic tires (¶32) comprising a natural rubber latex (¶40) and from about 0.0025 to about 1% by weight of a polysaccharide suspending agent that can be bacterial microfibrous cellulose (biomass derived polymeric material) (¶44-45). Maki et al. and Dowel are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of tire repair/puncture sealing compositions containing natural rubber latex. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 0.0025 to 1% by weight of a bacterial microfibrous cellulose, as taught by Dowel, to the composition, as taught by Maki et al., and would have been motivated to do so in order to prevent flotation of the latex solids over long storage periods (¶49).
Regarding claim 8, Ichikawa teaches that the water-soluble polymer such as methyl cellulose or hydroxyethyl cellulose (additional polymer) (¶29) and present in an amount of 1 to 30% by mass (¶37). Dowel teaches that the biomass-derived polymeric material is present in from about 0.0025 to about 1% by weight (¶48). If both components are present in 1% by weight of the composition, their ratio would be 1:1, which falls into the claimed range.
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Maki et al. (US 2020/0063003) in view of Ichikawa (US 2015/0344743) as applied to claim 1 above, and further in view of Takahashi (US 2019/0105858).
Regarding claims 13-17, Maki et al. and Ichikawa teach the puncture sealing agent of claim 1 as set forth above. Maki et al. does not teach that the composition is used to repair bicycle tires, tubeless tires, and tires having an inner tube. Generally speaking, bicycle tires use an inner tube and pneumatic tires for automobiles do not. Takahashi teaches a tire puncture sealing agent (¶19) comprising natural rubber latex (¶27) and is used to repair punctures in automobile tires and bicycle tires (¶54). Maki et al. and Takahashi are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of tire puncture sealing agents comprising natural rubber latex. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use the puncture sealing agent, as taught by Maki et al., to seal punctures in automobile and bicycle tires, as taught by Takahashi, and would have been motivated to do so because it is beneficial for a tire sealant to work on many types of tires.
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 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of U.S. Patent No. 11,472,986 (“the ‘986 patent”) in view of Ichikawa (US 2015/0344743).
Regarding claims 18 and 19, claims 1 and 12 of the ‘986 patent teach a puncture sealing agent comprising natural rubber latex, an aqueous solution of an adhesive wherein the adhesive is a carbohydrate, and an antifreezing agent. The carbohydrate is a sugar which means it is either a monosaccharide, disaccharide or oligosaccharide.
The ‘986 patent does not teach that the puncture sealing agent comprises an additional polymer that is a water-soluble cellulose ether containing a hydroxyethyl group. However, Ichikawa teaches a puncture sealant comprising a natural rubber latex, a tackifier, an antifreezing agent, and a thixotropy-imparting agent (¶16, 18, 19). The thixotropy-imparting agent is a water-soluble polymer such as hydroxyethyl cellulose (¶29). The ‘986 patent and Ichikawa are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of puncture sealing agents comprising natural rubber latex and an antifreezing agent. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add hydroxyethyl cellulose, as taught by Ichikawa, to the composition, as taught by the ‘986 patent, and would have been motivated to do so to improve injectability and puncture sealing performance of the composition (¶37).
Regarding claim 20, claims 1 and 12 of the ‘986 patent teach a puncture sealing agent comprising natural rubber latex, an aqueous solution of an adhesive wherein the adhesive is a carbohydrate, and an antifreezing agent. The carbohydrate is a sugar which means it is either a monosaccharide, disaccharide or oligosaccharide.
The ‘986 patent does not teach that the puncture sealing agent comprises an additional polymer that is a water-soluble cellulose ether present in 0.55 to 5% by weight of the puncture sealing agent. However, Ichikawa teaches a puncture sealant comprising a natural rubber latex, a tackifier, an antifreezing agent, and a thixotropy-imparting agent (¶16, 18, 19). The thixotropy-imparting agent is a water-soluble polymer such as methyl cellulose or hydroxyethyl cellulose (¶29) and present in an amount of 1 to 30% by mass (¶37). The ‘986 patent and Ichikawa are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of puncture sealing agents comprising natural rubber latex and an antifreezing agent. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 1 to 30% by weight of methyl cellulose or hydroxyethyl cellulose, as taught by Ichikawa, to the composition, as taught by the ‘986 patent, and would have been motivated to do so to improve injectability and puncture sealing performance of the composition (¶37).
Claims 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 10,836,126 (“the ‘126 patent”) in view of Ichikawa (US 2015/0344743).
Regarding claims 18 and 19, claims 1 and 10 of the ‘126 patent teach a puncture sealing agent comprising natural rubber latex, an aqueous solution of an adhesive wherein the adhesive is a carbohydrate, and an antifreezing agent. The carbohydrate is sucrose, which is a disaccharide.
The ‘126 patent does not teach that the puncture sealing agent comprises an additional polymer that is a water-soluble cellulose ether containing a hydroxyethyl group. However, Ichikawa teaches a puncture sealant comprising a natural rubber latex, a tackifier, an antifreezing agent, and a thixotropy-imparting agent (¶16, 18, 19). The thixotropy-imparting agent is a water-soluble polymer such as hydroxyethyl cellulose (¶29). The ‘126 patent and Ichikawa are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of puncture sealing agents comprising natural rubber latex and an antifreezing agent. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add hydroxyethyl cellulose, as taught by Ichikawa, to the composition, as taught by the ‘126 patent, and would have been motivated to do so to improve injectability and puncture sealing performance of the composition (¶37).
Regarding claim 20, claims 1 and 10 of the ‘126 patent teach a puncture sealing agent comprising natural rubber latex, an aqueous solution of an adhesive wherein the adhesive is a carbohydrate, and an antifreezing agent. The carbohydrate is sucrose, which is a disaccharide.
The ‘126 patent does not teach that the puncture sealing agent comprises an additional polymer that is a water-soluble cellulose ether present in 0.55 to 5% by weight of the puncture sealing agent. However, Ichikawa teaches a puncture sealant comprising a natural rubber latex, a tackifier, an antifreezing agent, and a thixotropy-imparting agent (¶16, 18, 19). The thixotropy-imparting agent is a water-soluble polymer such as methyl cellulose or hydroxyethyl cellulose (¶29) and present in an amount of 1 to 30% by mass (¶37). The ‘126 patent and Ichikawa are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of puncture sealing agents comprising natural rubber latex and an antifreezing agent. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 1 to 30% by weight of methyl cellulose or hydroxyethyl cellulose, as taught by Ichikawa, to the composition, as taught by the ‘126 patent, and would have been motivated to do so to improve injectability and puncture sealing performance of the composition (¶37).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767