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 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 1-20 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 1, 10 and 15 recite the limitation “the primary blowing agent” in the 5th line. There is insufficient antecedent basis for this limitation in the claims.
The claims’ reference back to “the primary blowing agent” along with accompanying amounts dissipated is confusing as to intent because the claims do not previously define a “primary blowing agent” to be dissipated. Additionally, even assuming arguendo that there is a “blowing agent” to be dissipated, claims are confusing as to intent because it can not be definitively be ascertained what blowing agent(s) are intended to be included or excluded by the expression “primary”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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, 4-10, 13-15, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the INSULTEX Technical Data Sheet as evidenced by INSULTEX House Wrap Testimonials, 2022.
The INSULTEX Technical Data Sheet discloses INSULTEX foam that is a closed-cell Low Density Polyethylene foam comprising a three-dimensional network of evacuated micro-cells that reduce heat transfer by forming a tortuous path of energy transport within the foam, the disclosed INSULTEX foam has an insulating R-value of 6 {see page 1 and the Table on page 2}. According to the INSULTEX house wrap Testimonials, INSULTEX foam material was available to purchase in 2014, which is sufficiently before the November 18, 2022 earliest effective filing date of any claims of the instant invention (in this regard it is noted that various dependent claims are subject to an effective filing date of April 10, 2023, supported only by the disclosures of the instant application). Though the INSULTEX Technical Data Sheet does not specifically identify “primary” blowing agent blowing agent to the degree that may be defined by the claims {see, also, rejection(s) under 35USC112 above}, in light of the closeness of the make-up and structure of the evacuated materials disclosed by the INSULTEX Technical Data sheet, including its disclosed good thermal conductivity properties, it is held that the foam materials disclosed by the INSULTEX Technical Data Sheet would inherently possess the “primary” blowing agent dissipation degrees, as well as degassing degrees [note: claims 4-6, 13, 14, 19 and 20] to whatever degree that may be defined by the claims {see again rejection(s) above under 35USC112} and pore volume criteria [note: claims 7-9] defined by applicants’ claims.
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) 2, 3, 11, 12 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over the INSULTEX Technical Data Sheet as evidenced by the INSULTEX House Wrap Testimonials, 2022 as applied to claims 1, 4-10, 13-15, 19 and 20 above, and further in view of Riccelli et al.(2010/0154338).
Regarding claims 2, 3, 11, 12 and 16-18, the INSULTEX Technical Data Sheet differs in that it does not disclose articles which include additional layer materials to whatever degree that may be required by these claims {Note: rejections under 35USC112 above}. However, Riccelli et al. discloses it to be known to form a house wrap for a building that comprises multiple layers inclusive of non-woven and barrier-type layers that may be employed in conjunction with INSULTEX foam material for purposes of making effective, insulative house wrap materials {see abstract, paras [0023], [0030] & [0038] and Figure 1}. Accordingly, it would have been obvious for one having ordinary skill in the art through the combined teachings and fair suggestions of the INSULTEX Technical Data Sheet and Riccelli et al. to have utilized the INSULTEX foam of the INSULTEX Technical Data Sheet in forming the house wrap materials of Riccelli et al. for the purpose of forming useful, insulative, reinforcing and resilient wrap products from the INSULTEX foam materials of the INSULTEX Technical Data Sheet in order to arrive at the multilayered products to the degree as defined by these 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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-9 and 11-13 of copending Application No. 17/989,913 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending claims are directed towards materials and layered products having make-ups that differ in a manner which would have been obvious 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.
Response to Arguments
Applicants’ arguments have been considered. However, rejections as set forth above are maintained.
Regarding rejections under 35USC112, any rejection not set forth above is withdrawn in light of applicants’ amendments and remarks. The remaining rejection maintained has not been addressed in applicants’ remarks on reply and is accordingly maintained for all of the reasons as set forth above {correction of typographical error in rejection is noted – it is clear from body of rejection and line(s) pointed to in the claims as they were presented that the concern of the rejection is the language “the primary blowing agent”.
Regarding the rejections under 35USC102 and 103, positions are maintained as proper for the reasons set forth above. It is maintained based on the current preponderant evidence of record that possession of the invention/inventive features pointed to in the rejections above prior to the grace period referred to is evident. The current evidence of record is insufficient in establishing that the materials alleged to be different are, in fact, different as stated in applicants’ remarks on reply.
Regarding the rejection under the Double Patenting heading, it is held in response to applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, that it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
THIS ACTION IS MADE FINAL. 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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