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 .
Objections
1. The instant claims 20, 22, and 24 are objected to as not being of proper form because they do not end with a period. See MPEP 608.01(m) Form of Claims [R-10.2019], particularly the first paragraph thereof.
Appropriate correction is required.
Rejections
Double Patenting
2. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
3. 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.
4. Claims 13-16, 18-19, 21, and 23-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-20 of copending Application No. 18/023746. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the copending claims are not identical, they overlap to the extent that one practicing the copending claimed inventions would practice the instantly claimed inventions and vice versa. The organic fibers of copending claim15 are particularly noted as falling within the scope of the instantly claimed component (B). The copending claimed component (B) falls within the scope of the instantly claimed component (A).
The copending claims do not recite the amounts of the instant claim 15. The copending claims encompass the amounts of the instant claim 15, noting the amounts of copending claims 14 and the unlimited amounts of organic fiber of copending claim 15 which encompasses the amounts of the instant claim 15. It would have been obvious to one of ordinary skill in the art to make the compositions of the copending claims having the amounts of the instant claim 15 because these amounts are encompassed by the copending claims and the instantly claimed amounts would have been expected to give only predictable results considering copending claims 14 and 15.
The copending claims do not recite the amounts of the instant claim 18. Based on the amounts of copending claim 14 and the unlimited amounts of organic fibers of copending claim 15, the copending claims encompass the amounts of the instant claim 18. It would have been obvious to one of ordinary skill in the art to make the compositions of the copending claims having the amounts of the instant claim 18 because these amounts are encompassed by the copending claims, the ordinary skilled artisan would have understood that using less than 30 wt% of fibers would not give the maximum possible reinforcement from the fibers and using above 90 wt% fibers would have made mixing the composition difficult and would not have sufficient resin to adhere the fibers together maximally, and the instantly claimed amounts would have been expected to give only predictable results considering copending claims 14 and 15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 13-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the disclosed substituents, does not reasonably provide enablement for all of the substituted compounds encompassed by the various recitations of “substituted” in the instant claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
A. The instant claims 13-27 recite various instances of “substituted” without specifying the substituents. Therefore, the claims encompass all possible substituents. The instantly claimed “substituted” reads on an infinite number of compounds resulting from the potentially infinite number of substitutions which can be performed on the recited compounds. In re Wands has 8 criteria, (MPEP 2164.01(a)), as shown below.
(A)The breadth of the claims;
(B)The nature of the invention;
(C)The state of the prior art;
(D)The level of one of ordinary skill;
(E)The level of predictability in the art;
(F)The amount of direction provided by the inventor;
(G)The existence of working examples; and
(H)The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
It is noted that the instant claims read on all potential substitutions of the recited compounds which encompasses an infinite number of compounds (Wands factors A and B). The specification does not describe how to make all such substituents, how to add them to the claimed compounds, nor how to select those substituents from the infinite list thereof which will function as required in the instant invention (Wands factors B, F, G). It would require an infinite amount of experimentation to determine how to make all of the substituents encompassed by the instant claims and another infinite amount of experimentation to determine which of these substituted compounds would function in the instantly claimed invention as required (Wands factors B and H). Chemistry is an unpredictable art (Wands factors B and E). The ordinary skilled artisan has not imagined nor figured out how to make all of the substitutions encompassed by the instant claim of “substituted” yet (Wands factors B, C, D, E, F, G, and H). The enabling disclosure is not commensurate with the full scope of the claimed “substituted”.
See Sitrick v Dreamworks, LLC (Fed Cir, 2007-1174, 2/1/2008), particularly
“Before MICHEL, Chief Judge, RADER and MOORE, Circuit Judges.
MOORE, Circuit Judge.
112(1) Enablement - The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation
We review the grant of summary judgment de novo. LiebeI-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1377 (Fed. Cir. 2007). Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112, ¶ 1 is a question of law, reviewed de novo, based on underlying facts, which are reviewed for clear error. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). The evidentiary burden to show facts supporting a conclusion of invalidity is one of clear and convincing evidence because a patent is presumed valid. Id. The “enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” Id. at 1244.
112(1) Enablement - The full scope of the claimed invention must be enabled.
A patentee who chooses broad claim language must make sure the broad claims are fully enabled.
The full scope of the claimed invention must be enabled. See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007). The rationale for this statutory requirement is straightforward. Enabling the full scope of each claim is “part of the quid pro quo of the patent bargain.” AK Steel, 344 F.3d at 1244. A patentee who chooses broad claim language must make sure the broad claims are fully enabled. “The scope of the claims must be less than or equal to the scope of the enablement” to “ensure[] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.” Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999).”
It is noted that the instantly claimed “polyolefins substituted by carboxylic acid anhydride groups” is not a subject of this rejection because the substituent is specified.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 13-14, 16, 19, 21, 23, 25, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/002611 Sherman et al.
Regarding claims 13-14, 16, 21, 23, and 25:
Sherman discloses compositions containing an organosilicon compound which falls within the scope of the instantly claimed general formula (I). Note Sherman, page 2, lines 21-26 where R2 is the groups defined at page 3, lines 2-3. Note that the non-hydrocarbon groups fall within the scope of the instantly claimed “substituted” groups. Note Sherman, page 2, lines 21-26 where B is a covalent bond as defined at page 3, line 7. It is noted that r of Sherman, page 3, lines 3-10, particularly lines 9-10, is not limited to integers. See also Sherman, page 15, lines 8-9. The variable r can therefore be numbers less than 3, which encompasses mixtures with polysiloxanes having linear structure which fall within the scope of the instantly claimed general formula (I). Additionally, the substituted variables attached to the silicon atoms of the instantly claimed general formula (I) encompass the branches of the polysiloxanes of Sherman, such as at Sherman, page 9, lines 3-17.
The open ranges which recite “greater than” of Sherman, page 18, lines 31-32 and page 19, lines 3-5, read on large excesses of Formula II which necessitate unreacted Formula II molecules, particularly for the lower functional amines. These unreacted Formula II-a molecules fall within the scope of the instant claim general formula (I) with the branched polysiloxanes being encompassed by the instantly claimed open language “comprising” even if the instantly claimed recitations of “substituted” are modified to exclude the branches of Sherman.
The subscripts of Sherman’s Formula II-a encompass the molecular weights of the instant claim 14 and the subscripts of the instantly claimed organosilicon compounds.
Sherman discloses using their polysiloxanes discussed above as plastics additives, noting Sherman, page 3, line 31. Sherman discloses adding their polysiloxanes discussed above to thermoplastics, including copolymers of polyolefin such as ethylene-vinyl acetate copolymer. See Sherman, page 26, lines 24-29, particularly noting the ethylene-vinyl acetate copolymer of line 29.
Sherman, page 29, lines 5-16, particularly line 12, discloses the use of organic fibers, particularly nylon and Kevlar, in their compositions in amounts of up to 100 parts per 100 parts of the sum of the branched polydiorganosiloxane polyamide segmented polymeric component.
The method of making the above discussed compositions of Sherman would necessarily be the method of the instant claims 21 and 25.
Sherman encompasses the inventions of the instant claims 13, 14, 16, 21, 23, and 25 but does not disclose them with sufficient specificity to anticipate the instant claims.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to use the combinations of the above discussed polysiloxanes, thermoplastics, including ethylene-vinyl acetate copolymers, and organic fibers of Sherman because such combinations are encompassed by Sherman and would have been expected to give the properties of the compositions of Sherman including those properties explicitly discussed by Sherman, such as at page 39, lines 29-31, noting the surface modification of line 30, and page 40, lines 1-2, noting the perfect smoothness, lubricity, and pleasant tactile sensations, and the properties inherent to the compositions of Sherman.
Regarding claims 19 and 26:
Sherman discloses using additives falling within the scope of the instant claims 19 and 26 in their compositions at page 29, lines 5-21, particularly noting the UV and HALS absorbers of lines 6-7, the pigments of line 7, the slip agents of line 8, which fall within the scope of lubricants, the glass and mineral fibers of line 12, the flame retardants of line 17, the antimicrobials which are biocides of line 18, and the tackifiers of page 29, lines 25 and 26-27 and page 30, line 1 to page 32, line 13, which necessarily promote adhesion.
Sherman does not disclose these additives with compositions and methods which fall within the scope of the instant claims.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to use the additives of Sherman, page 29, lines 5-21 and page 30 line 1 to page 32, line 13, in the above discussed compositions and methods of Sherman, which fall within the scope of the instantly claimed compositions and methods because they are encompassed by Sherman and would have been expected to give the properties implied by their names to the compositions of Sherman in proportion to the amounts used.
9. Claims 15, 17, 18, 20, 22, 24, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009/002611 Sherman et al. in view of Hristov et al., “Thermoplastic Silicone Elastomer Lubricant in Extrusion of Polypropylene Wood Flour Composites”, Wiley Periodicals, Inc., Adv Polym Techn, Vol. 26, No. 2, 2007, pages 100-108, Published online in Wiley InterScience (www.Interscience.wiley.com), DOI 10.1002/adv.20090.
The entire discussion of paragraph 8 above is repeated here.
Regarding claims 15, 17, 18, 20, 22, 24, and 27:
Hristov discloses compositions of thermoplastic, wood fibers, and silicone elastomer lubricant. See the entire document. The silicone elastomer lubricant is for reducing the surface defects in the extrusions of the wood filled thermoplastic. See the abstract of page 100. The wood fibers fall within the scope of the instant claim 17. Hristov discloses the use of 50 wt% wood fibers which falls within the scope of the instant claim 18. See the abstract of page 100. Hristov uses low concentrations of the silicone lubricant, such as 1 wt%. See the abstract of page 100. This amount falls within the scope of the instant claim 15.
The extrusions of Hristov, noting the abstract and the entire document, fall within the scope of the extrudable molding of the instant claims 20, 22, 24, and 27.
Hristov does not disclose the instantly claimed organosilicon compounds.
Sherman does not disclose the above discussed particulars of the instant claims 15, 17, 18, 20, 22, 24, and 27. Sherman, page 3, lines 29-31 discloses using their polydiorganosiloxanes as plastics additives. Sherman, page 39, lines 29-31 discloses their polydiorganosiloxanes as being useful as melt process aids and for surface modification and slip aids. Sherman, page 40, lines 1-2, shows their polydiorganosiloxanes as giving a perfect smoothness, lubricity, and pleasant tactile sensations.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the thermoplastic/wood fiber composites and extrusions of Hristov using the amounts of Hristov and the polydiorganosiloxane of Sherman in place of the silicone elastomer lubricant of Hristov because the polydiorganosiloxane of Sherman would have been expected to give the lubricant function of Hristov’s silicone and the properties imparted by Sherman’s polydiorganosiloxane, including the perfect smoothness, lubricity, and pleasant tactile sensations described in Sherman. This makes the instant claims 15, 17, 18, 20, 22, 24, and 27 obvious.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PATRICK D NILAND/Primary Examiner, Art Unit 1762