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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-17 in the reply filed on 8/26/25 is acknowledged.
Claims 18-21 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/26/25.
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 1-17 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.
Claim 1: Claim 1 recites the limitation "the solution" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 1: Claim 1 recites the limitation "the casting compound" in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
Claim 1: Claim 1 recites the limitation “biologically based” which renders the claim indefinite because one of ordinary skill in the art would not be able to determine the metes and bounds of the limitation.
Claim 3: 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, claim 3 recites the broad recitation ground fruit stones and/or fruit shells, and the claim also recites “olive stones, peach stones, apricot stones, cherry stones, almond shells, argan shells, walnut shells, or a mixture thereof” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 6: Claim 6 recites the limitation “plant oil-based” which renders the claim indefinite because one of ordinary skill in the art would not be able to determine the metes and bounds of the limitation.
Claim 7: Claim 7 recites the limitation "the polymer matrix of the molding" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7: Claim 7 recites the limitation "biobased reactive compound" in 2. There is insufficient antecedent basis for this limitation in the claim.
The limitation appears to refer to “the hydrophobizing and activating biologically based reactive compound” of claim 1.
Claim 8: Claim 8 recites the limitation "the hydrophobizing and activating reactive compounds" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The limitation appears to refer to “the hydrophobizing and activating biologically based reactive compound” of claim 1.
Claim 8: Regarding claim 8, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 8: Claim 8 recites the limitation "the monomer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 9: Claim 9 recites the limitation "the monomer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 9: Claim 9 recites the limitation "the hydrophobizing and activating, biobased reactive compounds" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The limitation appears to refer to “the hydrophobizing and activating biologically based reactive compound” of claim 1.
Claim 9: Regarding claim 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 10: Claim 10 recites the limitation "the monomer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 10: Claim 10 recites the limitation "the hydrophobizing and activating, biobased reactive compounds" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The limitation appears to refer to “the hydrophobizing and activating biologically based reactive compound” of claim 1.
Claim 10: Regarding claim 10, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 11: Claim 11 recites the limitation "the monomer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 11: Claim 11 recites the limitation "the hydrophobizing and activating, biobased reactive compounds" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The limitation appears to refer to “the hydrophobizing and activating biologically based reactive compound” of claim 1.
Claim 11: Regarding claim 11, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 12: Claim 12 recites the limitation "the oil" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 12: Claim 12 recites the limitation “the oil used is a plant oil” which renders the claim indefinite because it is unclear how the oil is “used” based on the recitation.
For the purpose of examination, the limitation is being interpreted to mean that the plant oil based methacryloyl of claim 6 is reacted product of a plant oil.
Claim 14: Claim 14 recites the limitation "the oil" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 14: Claim 14 recites the limitation “the oil used is an essential oil” which renders the claim indefinite because it is unclear how the oil is “used” based on the recitation.
For the purpose of examination, the limitation is being interpreted to mean that the plant oil based methacryloyl of claim 6 is reacted product of an essential oil.
Claim 16: Claim 16 recites the limitation "the oil" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 16: Claim 16 recites the limitation “the oil used is an animal fat and/or oil” which renders the claim indefinite because it is unclear how the oil is “used” based on the recitation.
For the purpose of examination, the limitation is being interpreted to mean that the plant oil based methacryloyl of claim 6 is reacted product of an animal fat and/or oil.
Claim 16: Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “animal fat and/or oil” in claim 16 is used by the claim to mean “a species of plant oil,” while the accepted meaning is “fat or oil from animals and not plants.” The term is indefinite because the specification does not clearly redefine the term.
Claim 16: Regarding claim 16, the phrase "this may be" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 17: Claim 17 recites the limitation "the monomer" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 17: Claim 17 recites the limitation "the polymer matrix of the molding" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 17: Claim 17 recites the limitation "the hydrophobizing and activating, biobased reactive compounds" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The limitation appears to refer to “the hydrophobizing and activating biologically based reactive compound” of claim 1.
Claim 17: 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, claim 17 recites the broad recitation 1-20 wt%, and the claim also recites “preferably from 3 to 17.5 wt%, more particularly from 5 to 15 wt%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-17: Claims 2-17 are rejected as being indefinite because they depend from a rejected claim and do not remedy the issues in the claims from which they depend from.
Claim Objections
Claims 8-11, 13, 15, & 16 are objected to because of the following informalities: the lists are missing “or”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-13, 16, & 17 are rejected under 35 U.S.C. 103 as being unpatentable over Fraser et al. (US PG Pub 2009/0131571; hereafter ‘571) in view of Voronov et al. (US PG Pub 2017/0226050; hereafter ‘050).
Claim 1: ‘571 is directed towards a process for producing hydrophobic and reactive inorganic fillers (title & abstract), comprising the steps of:
providing a filler having a defined surface area (see abstract);
mixing the filler with a solution of a reactive compound in a mixing assembly (see abstract & ¶s 133-174);
evacuating the hydrophobized and activated inorganic filler in a storage bag box, drum, or directly in the casting compound (¶ 174).
‘571 does not teach the claimed concentration of the filler.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to use the filler at the claimed concentration because generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
‘571 does not teach the claimed mixing speed or time.
However, speed and time of mixing are result effective variables based on the desired degree of mixing and it is obvious to optimize the speed and time of mixing to obtain the desired result.
"Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(B).
‘571 teaches reacting methyl methacrylate to form the hydrophobized and activated filler (see abstract & ¶ 174).
‘571 does not teach using a biologically based reactive compound.
However, ‘050, which is directed bio-based acrylic monomers (title & abstract) discloses that said acrylic monomers can be used directly in the production of plastics and thermoplastics (¶ 6) as substitutes for petroleum-based monomers (¶ 6). ‘050 further notes that the bio-based acrylic monomers are more environmentally friendly (¶ 71).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the bio-based acrylic monomers of ‘050 for the acrylic monomers of ‘571 because they are art recognized alternatives to the petroleum-based acrylic monomers of ’571 which would have predictably produced the same desired product which is also more environmentally friendly.
Claim 2: The filler is SiO2 (¶ 36).
Claim 3: As noted above, ‘571 teaches silica as the filler. Claim 1 recites inorganic or organic fillers and claim 3 is contingent on the selection of organic fillers which is an optional choice and therefore the combination renders obvious the claim. See MPEP § 2111.04.
Claim 4: The inorganic and organic fillers are used in the desired mixing ratio.
Claim 5: The limitation of claim 5 is optional. See MPEP § 2111.04.
Claim 6: ‘050 teaches that the hydrophobizing and activating, biologically based reactive compound is represented by:
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(see ¶ 10) wherein the fatty chain is form a plant or animal oil or fat (¶ 11).
Claim 7: The compound is dissolved in at least one monomer present in the polymer matrix of the molding (see ¶ 174).
Claim 8: ‘571 teaches adding methyl acrylate as a dispersant (solvent; ¶s 19-24).
Claim 9: ‘571 teaches adding methyl methacrylate as a dispersant (solvent; ¶s 19-24).
Claim 10: ‘571 teaches adding hexanediol diacrylate as a dispersant (solvent; ¶s 19 & 29).
Claim 11: ‘571 teaches adding hexanediol dimethacrylate as a dispersant (solvent; ¶s 19-24).
Claim 12: The oil is a plant oil (¶ 11).
Claim 13: The plant oil can be coconut oil (¶ 15).
Claim 16: ‘050 teaches using an animal fat (¶ 11).
Claim 17: ‘571 does not teach the claimed concentration.
However, it would have been obvious to one of ordinary skill in the art at the time of filing to use the claimed concentration because generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Claims 14 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over ‘571 in view of ‘050 as applied above, and further in view of Nava et al. (US PG Pub 2008/0154002; hereafter ‘002).
Claims 14 & 15: ‘050 teaches that any plant oil is suitable (¶ 54).
‘050 does not teach that the plant oil is an essential oil.
However, as noted above, ‘571 & ‘050 are directed towards plastics.
‘002, which is directed towards molding resins using renewable resource components (title) such as monomers comprised of plant or animal oil moieties (abstract) teaches that coffee oil and soybean oil are suitable alternative plant oils for the process (see abstract & ¶ 26).
It would have been obvious to one of ordinary skill in the art at the time of filing to use coffee oil in place of the plant or animal oils because as noted by ‘002 coffee oil is a suitable alternative and it is prima facie obvious to use art recognized alternatives.
The Examiner notes that claim 15 recites coffee oil as an essential oil.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759