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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/6/26 has been entered.
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 1-11, 15-20, 25-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20, 41-46 of copending Application No. 18/134,241 (reference application) in view of Rebar et al, U.S. Patent Application Publication No. 2014/0117288. Although the claims at issue are not identical, they are not patentably distinct from each other because each claims a radiation shielding material and composition comprising heavy metals in a matrix polymer. While the claims of 18/134,241 are free of lead while the instant claims require lead, Rebar teaches that it was known to both include and exclude lead from radiation-shielding compositions. See paragraph 0009.
Therefore, it would have been obvious to have selected to have included or excluded lead in view of the teaching of Rebar that both lead-free and lead-including compositions were known in the art to be useful for radiation shielding compositions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1, 3-9, 11, 15-20, 26, 27, 30 is/are rejected under 35 U.S.C. 103 as obvious over Rebar et al, U.S. Patent Application Publication No. 2014/0117288 in view of Liu et al, U.S. 2012/0012793.
Rebar discloses a filled composition for radiation shielding. The composition can be used to form garments. See paragraph 0002. The garments can comprise a filled composition including at least one polymer and one metal containing filler. See paragraph 0005. The polymers can be polyolefins including polyolefin copolymers and elastomeric polyolefins. See paragraph 0005. The metal filler can comprise Sb, W, Ba, Pb, Bi, and alloys, oxides and salt thereof or can be substantially free of Pb. See paragraph 0009. The polymer component can be from 0.4-35 Wt% and the metal containing filler can comprise 50-95.5 wt%. See paragraph 0011. The composition can further comprise additives paraffinic oil, aromatic oil, antioxidants, compatibilizers, adhesion promoters and processing aids. See paragraph 0014. When the composition is formed into a garment, the structure can further comprise at least one layer of fabric. See paragraph 0015. The composition can be crosslinked or uncrosslinked. See paragraph 0015. The fabric can nylon or polyester. See paragraph 0030. The layer of fabric can have a thickness of15-25 mils. See paragraph 0030. The metal containing fillers can be combined, for example Sb and Bi, Sb and W, Sb and BaSO4, Bi and BaSO4 and any other mixture. See paragraph 0047. The particles size can be 0.1-74 microns. Note that a 0.1 micron particle is construed as having nano dimensions. See paragraph 0047. The garments can block X-rays. See paragraph 0076. The structure can comprise a plurality of layers to provide improved properties. See paragraph 0072. The heavy metals have a Z number of greater than 50. See paragraph 0046.
With regard to the claims as amended 11/17/25, the particles can have a range of sizes. See examples, especially paragraphs 0082-0086.
The composition can further comprise fiber fillers such as microfibers of nylon, polyester or PTFE which corresponds to the limitations of claim 6. See paragraph 0051.
With regard to claim 7, either the filler fibers or the fabric onto which the composition is applied can correspond to a fiber onto which the heavy metal particles are coated.
With regard to the limitation that the composition provides protection from both primary and scatter x-rays, since Rebar teaches providing protection from x-rays generally and teaches the same structure, it is reasonable to expect that the composition of Rebar provides protection from primary and scatter x-rays, or, in the alternative, it would have been obvious to have selected the appropriate composition and mixture which produced the desired protection.
With regard to the limitation that the composition provides protection from both primary and scatter x-rays, since Rebar teaches providing protection from x-rays generally and teaches the same structure, it is reasonable to expect that the composition of Rebar provides protection from primary and scatter x-rays, or, in the alternative, it would have been obvious to have selected the appropriate composition and mixture which produced the desired protection.
Additionally, if it is considered that Rebar does not disclose protection over primary and scatter x-rays within the claimed energy range, Liu teaches selecting particular metals for use in a polymeric matrix to provide shielding over the range of 40-170kV. See paragraph 0015.
Therefore, it would have been obvious to one of ordinary skill in the art to have selected particular metals as taught by Liu to the composition of Rebar in order to provide the desired protection over particular energy levels. Further, since Rebar teaches forming blends generally, it would have been obvious to have formed blends as taught by Rebar and varied the relative proportions of the components in order to arrive at a protective material which provided the desired level of protection. Rebar differs from the claimed invention because while it teaches forming blends of more than one of the lead free metal particles, it does not teach the claimed proportions.
However, since Rebar teaches forming blends generally, it would have been obvious to have formed blends as taught by Rebar and varied the relative proportions of the components in order to arrive at a protective material which provided the desired level of protection.
Rebar differs from the claimed invention because while it teaches forming blends of more than one of the lead free metal particles, it does not teach the claimed proportions.
However, since Rebar teaches forming blends generally, it would have been obvious to have formed blends as taught by Rebar and varied the relative proportions of the components in order to arrive at a protective material which provided the desired level of protection.
Claim(s) 2, 10, 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rebar in view of Liu as applied to claims above, and further in view of Khandkar et al, U.S. Patent Application Publication No. 2015/0083941.
Rebar discloses a radiation shielding composition as set forth above.
Rebar does not disclose that the matrix can be PVC and does not disclose providing the particles so as to form a gradient.
However, Khandkar discloses radiation shielding systems. See abstract. The systems can include heavy metal particles disposed in an polymeric binder combined with fabrics or other reinforcing materials. The particles can include metals having a X number, of 56 or greater and include the claimed types of metals. See paragraph 0059. The binder can include polyvinyl chloride or polyurethane. See paragraph 0060. The binder may be present in amounts of 3- 25% while the heavy metal particles are present in amounts of up to 97%. See paragraph 0061. The particles can be uniformly dispersed or dispersed so as to form a gradient. See paragraph 0047.
Therefore, it would have been obvious to one of ordinary skill in the art to have employed PVC as a matrix in Rebar, in view of the teaching of Khandkar of the suitability of PVC for this purpose and to have provided the particles in either a gradient or in a uniform dispersion depending on whether uniform protection or gradient protection was desired in the final product.
Claim(s) 25, 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rebar in view of Liu as applied to claims above, and further in view of “Superior X ray radiation shielding of biocompatible platform based on reinforced polyaniline by decorated graphene oxide with interconnected tungsten-bismusth-tin complex”, herein after “Superior”.
Rebar in view of Liu does not teach that the metal particles form a metal complex.
However, Superior teaches that forming a metal complex provides improved x-ray shielding. The metal complex is equated with a 3D metal network and/or metal organic framework.
Therefore, it would have been obvious to have employed the metal complex as taught by Superior in the structure of Rebar in order to provide improved x ray protection.
Applicant's arguments and amendments filed 7/6/26 have been fully considered and are sufficient to overcome the previous rejections. New rejections are set forth above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789
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