DETAILED ACTION
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 with traverse of Group I, claims 8-14 in the reply filed on 02/08/2026 is acknowledged. The traversal is on the ground(s) that claims 11-14 can be downstream products of the alcohol claims of Group I. This is not found persuasive because claims 11-14 are not drawn to downstream products of the alcohol claims but limit the freezing point of claim 8, and thus are grouped with Group I in view of the restriction/election requirement. Furthermore, if Applicant is intending to refer to nonelected Group II, claims 15-20, the traversal is still not persuasive because the search burden was made of record as the inventions require different field of search.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-20 have been canceled.
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.
Claims 8-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rodriguez (Rodriguez, T. et al. Patent application publication number US2004/0097599A1).
Regarding claim 8, Rodriguez teaches a composition with C11 alcohols comprising 2-methyl-1-decanol=39% by weight; 2-ethyl-1-nonanol=20% by weight; 2-propyl-1-octanol=19% by weight; 2-butyl-1-heptanol=20% by weight and about 2% by weight of 1-undecanol ([0017]).
Regarding claims 8-14, the reference is silent about the composition having the freezing point as claimed, however, it is an inherent feature as the reference teaches the same composition as claim 8. MPEP § 2112.01 states:
"Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Patent application publication number US2004/0238787A1 teaches alcohol compositions that anticipate claim 8 (Tables 2a-2f).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 8-14 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 8-14 of copending Application No. 18/867,861 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 8-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12145904 (‘904).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to alcohol composition comprising a mixture of alcohols wherein less than 60% of the mixture of alcohols are linear alcohols, greater than 25% of the mixture of alcohols are 2-methyl branched alcohols, and greater than 8% of the mixture of alcohols are 2-ethyl branched alcohols.
The difference between the instant claims and claims of ‘904 is the alcohol mixture of the instant claims comprises C9-C35 alcohols whereas in ‘904 comprises a mixture of C12-C36 alcohols, thus have overlapping number of carbons. In view of MPEP § 2144.05, a prima facie case of obviousness exists for overlapping ranges.
Furthermore, the claims of ‘904 are silent about the freezing point of alcohol mixtures as instantly claimed. However, since the claims recite mixture of alcohols that also include the same number of carbons as instantly claimed, there is a prima facie case of anticipation or obviousness for the mixture of alcohols in the claims of ‘904 to have the freezing point as claimed. See MPEP § 2112.01.
Claims 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-20 of copending Application No. 18/867,861 (reference application).
Claims 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/827,754 (reference application).
Claims 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-20 of copending Application No. 18/266,039 (reference application).
Claims 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 26-41 of copending Application No. 17/553,752 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they recite a composition, comprising a mixture of C9-C35 aldehydes, wherein less than 60 wt. % of the mixture of C9-C35 aldehydes are linear aldehydes, wherein greater than 25 wt. % of the mixture of C9-C35 aldehydes are 2-methyl branched aldehydes, wherein greater than 8 wt. % of the mixture of C9-C35 aldehydes are 2-ethyl branched aldehydes.
The copending claims are silent about the composition having freezing point as instantly claimed, however, it is an inherent feature as the copending claims recite the same composition as instant claims. MPEP § 2112.01 states:
"Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.").
The difference between the instant claims and the copending claims is that the instant claims are drawn to the alcohol composition whereas the copending claims are drawn to the use of the alcohol composition. However, even though the alcohol composition is recited as utility in the copending claims, the composition is the same as the claim under examination. As such, the claims under examination are not patentably distinct from the copending claims and are thus obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 8-14 are rejected and no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692
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