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 Group I. in the reply filed on 12/2/2025 is acknowledged.
Claims 11-13 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected grouping of invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/2/2025.
Initial Comments
In that the pending claims are not supported by the U.S. Provisional Application No. 63/312,855, applicants’ disclosure supported, effective filing date has been treated as being 2/23/2023.
The claims, particularly claim 1 and 13 and any claims that may depend therefrom, have been treated as if “ethylene terephthalate moieties” are the only elements being referred to as optional. The instant claims are sufficiently clear from the standpoint of 35USC112(b) in this regard.
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 1-10 and 14-16 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.
Claims are confusing as to intent because it cannot definitively be determined what materials are being referred to by the expressions/abbreviations “HFOs” and “HFCOs” that are set forth by the claims without the actual intended material/claim element being recited along with the recited expressions/abbreviations on their first use in the claims.
Appropriate correction is required.
Further, regarding claims 1-10, the term “low” in claims 1-10 is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims are confusing as to intent because it cannot be definitively ascertained what, if any, density values are intended to be excluded by the recitation “low”.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3, 4, 7-10 and 14 are is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Al-Farhood et al. (2020/0172661) in view of Singh et al. (2009/0305876).
Al-Farhood et al. discloses thermoplastic foams that include poly(ethylene furanoate) copolymer in their composition and comprising blowing agents that cause an expansion thus forming a gaseous cell in the thermoplastic copolymer, wherein the foam has a cell structure which is expressed in terms of the quantity of open cells and closed cells, and has an open cell fraction of <20.0% (>80.0% closed) which corresponds with the possession of closed cells to any degree that may be required by applicants’ claims (see paragraphs [0042]-[0046] and [0059]).
Regarding claims 4, Al-Farhood et al. discloses amounts of poly(ethylene furanoate) copolymer and inclusion of ethylene terephthalate(PET) having make-up sufficient to meet the requirements of these claims {see paras [0010]-[0019] and Examples}.
Al-Farhood et al. differs from applicants’ claims in that it does not require the HFO’s and/or HCFO’s inclusion as claimed. However, Singh et al. discloses inclusion of these, including HFO-1234ze(E), in thermoplastic foam formation for the purpose of imparting its foam forming effect to be known {paras [0294]-[0296]}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized any of the HFO’s and/or HCFO’s of Singh et al., including the HFO-1234ze(E) of Singh et al., in the preparations of Al-Farhood et al. for the purpose of imparting its foam expansion effects in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Claim(s) 2, 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Al-Farhood et al.(2020/0172661) in view of Singh et al.(2009/0305876) as applied to claims 1, 3, 4, 7-10 and 14 above, and further in view of EP-3450500.
Al-Farhood et al. differs from applicants’ claims in that it does not require the crystallinities as claimed. However, EP-3450500 discloses variation in crystallinity in ranges in overlap with those of the claims in forming thermoplastic materials to be known for purposes of forming a diverse array of good and acceptable materials for damping applications {see Abstract and paras [0005], [0130]}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized any crystallinity provided for by EP-3450500 in forming the preparations of Al-Farhood et al. for the purpose of achieving acceptable polymer arrangement and accompanying strength, stiffness and damping effects in products formed in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Additionally, regarding claims 5 & 6, Al-Farhood et al. discloses amounts of poly(ethylene furanoate) copolymer and inclusion of ethylene terephthalate(PET) having make-up sufficient to meet the requirements of these claims {see paras [0010]-[0019] and Examples}.
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Al-Farhood et al.(2020/0172661) in view of Singh et al.(2009/0305876) as applied to claims 1, 3, 4, 7-10 and 14 above, and further in view of Mitsuoka et al.(2011/0031758).
Al-Farhood et al. differs from applicants’ claims in that it does not particularly require application of their foams in a turbine/turbine blade as claimed. However, Mitsuoka et al. discloses it to be known to employ thermoplastic foams in turbine blade facer materials {see abstract and paras [0038] and [0112]}. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the foam of Al-Farhood et al. as the thermoplastic material in forming the composite blades of Mitsuoka et al. for the purpose of imparting acceptable structural content in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results. Further, in that a turbine blade is resolved a turbine containing the same is resolved as well.
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 1-10 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 31-50 of copending Application No. 18/030,080 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in make-up and overlap of material effects, including blowing agent selection, closed cell make-up, crystallinity and turbine/turbine blade structure requirements, in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 4, 7-10 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-30 of copending Application No. 18/199,885 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in make-up and overlap of material effects, including blowing agent selection, closed cell make-up, and turbine/turbine blade structure requirements in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 4, 7-10 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/946,114 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in make-up and overlap of material effects, including blowing agent selection, closed cell make-up, and turbine/turbine blade structure requirements in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 4, 7-10 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/946,122 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in make-up and overlap of material effects, including blowing agent selection, closed cell make-up, and turbine/turbine blade structure requirements in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 4, 7-10 and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/946,192 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in make-up and overlap of material effects, including blowing agent selection, closed cell make-up, and turbine/turbine blade structure requirements in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765