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 .
Initial Comments
As previously stated, in agreement with papers received 12/27/2024, applicants’ disclosure supported, effective filing date has been treated as being 5/19/2022.
The claims, particularly claims 11 and 30 and any claims that may depend therefrom, have been treated as if “ethylene terephthalate moieties”(claim11) and “one or more co-monomer moieties”(claim 30) 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 § 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 11-29 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 Mitsuoka et al.(2011/0031758).
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 a closed cell content to the degree required by the claims (see paragraphs [0042]-[0046] and [0059]).
Regarding claims 12-15, 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}. Regarding claim 18, Al-Farhood et al. discloses densities that correspond with those of the claims {para [0046]). Regarding claim 16, to the degree the difference is evident from the extensive overlap, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized the blowing agent of Al-Farhood et al. in any amount provided for by Al-Farhood et al. for the purpose of forming acceptably developed low-density foams of any density provided for by Al-Farhood et al. 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.
Al-Farhood et al. differs from applicants’ claims in that it does not particularly require application of their foams in a blade shell or other facer material. 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. Additionally, regarding claims 20-29, the composites provided through the above combination are sufficient in providing for the other composite articles to the degree defined by these claims from the standpoint of patentability. Further, as to the now recited reference to the material being a “core” material, the term “core” offers no further distinction of the placement of the material of Al-Farhood et al. in the arrangement of Mitsuoka et al. from the standpoint of patentability.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Al-Farhood et al.(2020/0172661) in view of Mitsuoka et al.(2011/0031758) as applied to claims 11-29 above, and further in view of Singh et al.(2009/0305876).
Al-Farhood et al. differs from applicants’ claims in that it does not require the HFO-1234ze(E) inclusion as claimed. However, Singh et al. discloses inclusion 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 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.
As with claim 16 rejected above, to the degree that claim 30 differs in its extensive overlap with the densities provided for by Al-Farhood et al., it is held that it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized the blowing agent of Al-Farhood et al. in any amount provided for by Al-Farhood et al. for the purpose of forming acceptably developed low-density foams of any density provided for by Al-Farhood et al. in order to arrive at the products of applicants’ claim 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 11-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5 and 21-26 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 composite/blade structure, blowing agent and closed cell make-up, 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 11-30 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 composite/blade structure, blowing agent and closed cell make-up, 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 11-30 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 composite/blade structure, blowing agent and closed cell make-up, 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.
Response to Arguments
Applicants’ arguments have been considered. However, rejections as set forth above are maintained.
Any amendments to the claims are addressed in the body of the rejections as set forth above.
Regarding the rejections under 35USC103, it is held and maintained that the rejections based on the combinations as set forth above are appropriately applied, and distinction in the patentable sense is not seen evident based on referring to the foam material that is situated in the blade shell as a “core” material. Placement of the material of Al-Farhood et al. in the arrangement of Mitsouka et al., alone or in further combination with Singh et al., is sufficient to arrive at the formation as defined by applicants’ claims, and the term “core” offers no further distinction of the placement of the material of Al-Farhood et al., alone or in further combination with Singh et al., in the arrangement of Mitsuoka et al. from the standpoint of patentability. It is not seen or agreed that calling the “foam” material of the claims a “foam core” material confers any of the distinctions suggested on reply in any factual sense. Accordingly, it is held and maintained that patentable distinction based on limitations set forth by the claims has not been made evident to a degree sufficient to overcome the rejections as set forth above.
Regarding arguments concerning the rejections under the heading “Double Patenting”, 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.”
Additionally, provisional status of rejections involving applications 18/946,114 & 18/946,122 will be removed once patents have been issued for the same.
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
Prosecution Insights