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 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.
Claims 1-12 and 17-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1 as amended, applicants’ originally filed supporting disclosure does not set forth or identify, nor has such been made evident by applicants, possession of a “configuration” of the porogen of the claims in the ink compositions defined by the claims that renders it capable of being removed from the cured ink in the manner as now set forth by the claims.
This is a new matter rejection.
Regarding newly submitted independent claim 17, applicants’ originally filed supporting disclosure, including para [0167], does not set forth or identify, nor has such been made evident by applicants, possession of relative concentrations of siloxane macromer and porogen in the ink compositions defined by the claims that renders it to be for or capable of forming bicontinuous morphologies as now set forth by this claim.
This is a new matter rejection.
Regarding newly submitted claim 18, applicants’ originally filed supporting disclosure does not set forth or identify, nor has such been made evident by applicants, possession of storage modulus or shea-thinning effects as now set forth by this claim.
This is a new matter rejection.
Regarding newly submitted claim 19, applicants’ originally filed supporting disclosure does not set forth or identify, nor has such been made evident by applicants, possession of yield stress characteristics as now set forth by this claim.
This is a new matter rejection.
Regarding newly submitted claim 20, applicants’ originally filed supporting disclosure does not set forth or identify, nor has such been made evident by applicants, possession of arrangements, make-ups and/or physical characteristics of its ink compositions that render is capable of being extruded to form filaments having recited qualities as claimed.
This is a new matter rejection.
Regarding newly submitted independent claim 21, applicants’ originally filed supporting disclosure does not set forth or identify, nor has such been made evident by applicants, possession of curing agents that possess the characterization inducing curing in response to the chemistry(s) referred to by the recitations of this claim.
This is a new matter rejection.
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 1-12 and 17-22 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 1 as amended, claims are confusing as to intent because it can not be definitely determined what arrangement of the porogen of the claims in the ink composition of the claims are intended to be included or excluded by the recited “configured” requirement set forth by this claim.
Appropriate correction is required.
For purposes of examination, claims 1-12 and 18-22 have been treated as if the porogen being present in the ink composition is sufficient to meet the configuration requirements of these claims.
Regarding new claim 21, claim is confusing as to intent because it can not be determined what type of curing capability is intended to be defined, included and/or excluded by the capability being referred to as a field of chemistry.
Appropriate correction is required.
In light of the above ambiguity and new matter issues, this claim has not been further examined on its merits.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-7, 9-11 and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 101010391.
CN 101010391 discloses an ink comprising a siloxane macromer {para [0113]}, including vinyl-terminated siloxane macromer [note: claim 2]{para [0114]}, glycerine/glycerol meeting the porogen requirements of the claims [note: claim 3]{para [0323]}, and surfactant {para [0169]}. Regarding the now required effect of being “curable”, though not particularly recited, it is held that, owing to the closeness of the material make-ups and their application in ink applications, the compositions of CN 101010391 inherently possess the capability of being cured. Further, as to the capability language of applicants' claims, it has been held that the recitation that an element is capable of performing a function is not a positive limitation but only requires the ability to so perform. Stating that the composition is "capable of” curing does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138. It is seen that arrangement of the composition and the materials constituting its make-up would inherently realize a composition that is capable of curing as now recited by applicants' claims.
Regarding independent claim 1, from the standpoint of patentability, in that difference beyond presence/inclusion and/or in that no definitive distinction {see rejection above under 35USC112} beyond presence/inclusion is evident through the configuration recitations associated with the porogen of the claims, it is held that these configuration effects now set forth by claim 1 are inherently possessed by the included glycerine/glycerol/porogen of CN 101010391.
Regarding newly set forth independent claim 17, though not particularly referred to as having a “bicontinuous morphology, owing to the closeness of the material make-ups, combinational arrangement and amounts, and in that the materials are uniformly mixed and combined together, it is held that the preparations of CN 101010391 inherently possess concentrations of materials capable of forming a bicontinuous morphology to any degree that may be claimed. Hereto, it applies that stating that the composition is "capable of” forming a bicontinuous morphology does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138. It is seen that arrangement of the composition and the materials constituting its make-up would inherently realize a composition that is capable of forming a bicontinuous morphology to any degree that may be required by applicants' claims.
Regarding claims 5 and 6, polymers from vinyl pyrrolidone monomers sufficient to meet the polyvinyl pyrrolidone requirements of the claims are disclosed in amounts meeting the requirements of the claims {paras [0100]-[0103] & [0169]}. Regarding claim 7, CN 101010391 discloses curing and initiators sufficient to meet the curing agent requirements as claimed {paras [0147], [0148], [0303], [0312] and [0345]}. Regarding claim 9, the glycerol of CN 101010391 is sufficient to meet the rheology modifying additive requirements of this claim {para [0323]}. Regarding claims 10 and 11, the sugar disclosed by CN 101010391 is sufficient to meet the porogen particle requirements of these claims as particle form is the most readily envisioned means of presentation of sugar.
Regarding newly set forth claims 18 and 19, though CN 101010391 does not particularly referred to storage modulus, shear-thinning and yield stress features as claimed, owing to the closeness of the material make-ups of the arrangements and CN 101010391 being concerned with good ink compositions, it is held that the preparations of CN 101010391 would inherently possess storage modulus, shear-thinning and yield stress features as claimed.
Regarding newly set forth claim 20, though CN 101010391 does not particularly refer filament forming capabilities as claimed, owing to the closeness of the material make-ups of the arrangements and CN 101010391 being concerned with good ink compositions, it is held that the preparations of CN 101010391 would inherently possess this capability as claimed. Moreover, hereto it is held that stating that the composition is "capable of” being extruded to an arrangement as claimed does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138. It is seen and held/maintained that arrangement of the composition and the materials constituting its make-up would inherently possess this capability as claimed.
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.
Claim(s) 4 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 101010391 as applied to claims 1-3, 5-7, 9-11 and 17-20 above.
CN 101010391 differs from claim 4 in that it does not specify employment of glycerol in amounts set forth by this claim. However, it would have been obvious for one having ordinary skill in the art to have utilized the glycerol provided for by CN 101010391 in any amount for the purpose of providing effective dispersion of ink components 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.
CN 101010391 differs from claim 12 in that it does not particularly recite employment of its siloxane macromers in amounts set forth by this claim. However, it would have been obvious for one having ordinary skill in the art to have utilized the siloxane macromers provided for by CN 101010391 in any amount for the purpose of realizing acceptable and effective ink jet formulations 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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 101010391 as applied to claims 1-3, 5-7, 9-11 and 17-20 above and further in view of Gould et al.(2015/0299483).
CN 101010391 differs from claim 8 in that it does not particularly recite employment of untreated silica (i.e. fumed silica). However, Gould et al. discloses fumed silica {paras [0017]-[0019]} to be known in ink jet compositions for shear thinning benefits. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the fumed silica of Gould et al. in the inks of CN 101010391 for the purpose of imparting shear thinning 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) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 101010391 as applied to claims 1-3, 5-7, 9-11 and 17-20 above and further in view of EP-0,337,705.
CN 101010391 differs from claim 20 in that it does not particularly recite employment of crosslinker. However, EP-0,337,705 discloses crosslinkers {abstract and claims} to be known in ink jet compositions for facilitating cure. Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized the crosslinker of EP-0,337,705 in the inks of CN 101010391 for the purpose of facilitating cure 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.
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 1-12 and 17-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,689,491. Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in overlap of material make-up and relative proportions 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.
Response to Arguments
Applicants’ remarks on reply have been considered. However, rejections as set forth above are maintained for all of the reasons laid out above.
Previous rejection under 35USC112 is withdrawn in light of applicants’ amendments to the claims.
Regarding the rejection under 35USC102, applicants’ arguments are addressed in the body of the rejection above. Moreover, it is not agreed that the claims are so limited or defined as alleged in the arguments on reply. Additionally, newly introduced claim 17 is not so limited in the manner discussed in applicants’ remarks on reply.
Regarding the rejections under 35USC103, no arguments specific to the positions laid out in these rejections are set forth in the remarks on reply. Accordingly, no further response in their regard is necessary at this time. Positions under 35USC102 are already addressed in rejection under 35USC102 and accompanying remarks directed thereto.
Regarding rejection under the Double Patenting heading, it is held that rejection is properly set forth and maintained. Hereto, it is held that it is not agreed that the claims are so limited or defined as alleged in the arguments on reply, and the features discussed are not distinguishing of the claims in the patentable sense.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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