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 U.S.C. § 112(e)
Claim Objections – 37 C.F.R. § 1.75(c)
The following is a quotation of 35 U.S.C. § 112(e):
(e) REFERENCE IN MULTIPLE DEPENDENT FORM.—A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
The following is a quotation of 37 C.F.R. § 1.75(c):
(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers to more than one other claim ("multiple dependent claim") shall refer to such other claims in the alternative only. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim. In addition to the other filing fees, any original application which is filed with, or is amended to include, multiple dependent claims must have paid therein the fee set forth in § 1.16(j). Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.
Claims 3-14 are rejected under 35 U.S.C. § 112(e) and are objected to under 37 C.F.R. § 1.75(c) as being of improper multiple dependent form.
Claim 3 (which precedes claims 4-14) is dependent upon claim 1 or claim 2, and thus claim 3 is a multiple dependent claim.
Each of claims 4-14 is either dependent upon “any one of the preceding claims” or else is singly dependent upon a claim which is dependent upon “any one of the preceding claims”. Claim 3 is thus a multiple dependent claim that serves as a basis for other multiple dependent claims; and each of claims 4-14 is a multiple dependent claim which depends upon a multiple dependent claim.
Claims 3-14 therefore do not comply with the requirement in 35 U.S.C. § 112(e) and 37 C.F.R. § 1.75(c) that a multiple dependent claim shall not serve as a basis for any other multiple dependent claim.
See MPEP § 608.01(n) regarding appropriate forms of dependent claims.
Claim Rejections – 35 U.S.C. § 112(b)
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.
Claims 1-14 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites a chemical formula NR1R2R3 “wherein R1, R2, and R3 may be the same or different and at least one of R1, R2, and R3 is a linear or branched, saturated or unsaturated carbon group comprising backbones comprising at least 8 carbon atoms, which optionally may comprise heteroatoms.”
The claim thus recites a definition of the moieties R1-R3 which includes features for “at least one” of the moieties. This limitation encompasses amines in which only one or in which only two of the moieties have the defined carbon group. In such instances, the remaining one or two moieties are left undefined.
Because the claim does not fully define the scope of the moieties R1-R3, the claim does not set forth the scope of the recited amines with reasonable clarity. Claims 2-14 are ultimately dependent upon independent claim 1, and they are indefinite for the same reason.
Claim 1 recites “at least one fluoroorganic acidic compound” and “at least one alkylamine” in step (i). The claim subsequently recites two instances of “the fluoroorganic acidic compound” and two instances of “the alkylamine” in step (ii).
Because the latter limitations (“the fluoroorganic acidic compound” and “the alkylamine”) refer to the cited compounds in the singular, whereas the former limitations (modified by the phrase “at least one”) encompass a plurality of each of the cited compounds, the latter limitations disagree in number with the former limitations.
The latter limitations therefore lack proper antecedent basis. Claims 2-14 are ultimately dependent on claim 1, and they are indefinite for the same reasons.
Claim 10 refers to “the at least one first protic solvent”. The preceding claim do not recite a “first” protic solvent. The reference in claim 10 to a “first” protic therefore lacks proper antecedent basis.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claims 3, 4, 6, 9, and 12 recite limitations drawn to amounts, carbon atoms, amines, and pH values, which are the broader statements of the limitations, and the claims also recite limitations modified by the term “preferable”, which are the narrower statements of the limitations. The claims are considered indefinite because there is a question or doubt as to whether the features introduced by such narrower ‘preferable’ language is (a) merely exemplary of the remainder of the claims, and therefore not required, or (b) required features of the claims.
Claims 5, 7-8, 10-11, and 13-14 are dependent on one of the claims cited above, and they are indefinite for the same reasons.
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, 6-12, and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-15 of copending application serial no. 18/007,066 in view of GB 2481985 A (herein “Pothapragada”).
As to claims 1 and 12: US ‘066 claims a process for removing fluoroorganic acidic compounds from an emulsion of fluoroorganic polymer particles (see claim 1 of US ‘066), and this process includes steps corresponding to the presently recited steps (i)-(iv) and alkylamine.
US ‘066 does not claim the pH value of the emulsion comprising the fluoroorganic polymer particles and the fluoroorganic acidic compounds.
Pothapragada describes a process for removing fluoroorganic acidic compounds from an aqueous solution using an organoammonium compound (see the abstract and ¶ [0024]). Pothapragada discloses (see ¶ [0050]) that depending on the source of the aqueous solution and its components, the pH of the aqueous phase may need to be adjusted to deprotonate the fluoroorganic anions and/or protonate at least some of the amine to enable ion pairing. The pH of the aqueous phase could have a pH within the range of less than 9, 7, 6.8, 6.5, 6, 5.5, or 5 and more than 0, 1, 2, 3, or 4; or the pH of the aqueous phase is between 4 to 6.8. These ranges of pH values overlap the presently recited range of less than 6.
In light of Pothapragada, one of ordinary skill in the art would have been motivated to adjust the pH of the emulsion of US ‘066 in order to enable ion pairing between the fluoroorganic acidic compounds and the alkylamine claimed in US ‘066.
It would have been obvious to one of ordinary skill in the art to have adjusted the pH of the emulsion of US ‘066 to values within the scope of the presently recited range.
The further limitations of present claims 3, 6-11, and 14 are adequately set forth in claims 5-6, 9-10, 12, and 14-15 of US ‘066.
This is a provisional nonstatutory double patenting rejection.
Claim Objections
Claim 2 is objected to because of the following informalities: the claim recites “at least ionic one surfactant”. The words “ionic” and “one” appear to be transposed.
Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764