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 without traverse of Group I, Claims 1-15 in the reply filed on 11/24/2025 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/24/2025.
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.
Claim 10 is 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.
Claim 10 line 2 recites “the one or more rosin acids including each of abietic acid and pimaric acid”. Similarly, claim 10 lines 3-4 recites “the one or more fatty acids including each of palmitic acid, stearic acid, oleic acid, linoleic acid, and linolenic acid”. The recitations are indefinite because the recitations “one or more” are not consistent with “including each of”. If there is only one acid, then it is not clear why all the acids after the phrase “including each of” should be included.
Examiner will treat the recitation as written.
Examiner suggests amending the claim to either i) delete “one or more”, or ii) some other clarifying amendment so as to remove the ambiguity as set forth above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 2-3 reciting “further comprising the total amount of the low temperature property enhancing additive also increasing a resilience and reducing a viscosity of the non-asphaltic composition” (claim 2), and “further comprising the total amount of the low temperature property enhancing additive (i) not reducing a softening point of the non-asphaltic composition below 79o C, (ii) maintaining the softening point of the non-asphaltic composition at a value of 80o C or greater, or (iii) increasing the softening point of the non-asphaltic composition” (claim 3), fail to limit the recitation in claim 1 lines 11-17 reciting “a low temperature property enhancing additive which (i) is incorporated when and/or after the non-asphaltic base blend is formed… (iii) is included in the non-asphaltic composition in a total amount, in a range of from 1% to 25% by weight based on the total weight of the non-asphaltic composition…” because the examined claims belong to the statutory class of product. As such, only the structure of temperature property enhancing additive is considered, not its properties.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6-9 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Fasula et al. (US 2019/0055704 A1) (“Fasula” hereinafter) in view of Wilkins et al. (US 2018/0371704 A1) (“Wilkins” hereinafter), and Neuville et al. (US 2011/0257318 A1) (“Neuville” hereinafter); as evidenced by Chenchy et al. (US 2016/0251503 A1) (“Chenchy” hereinafter) with respect to claims 8-9, 11 and 13.
Regarding claim 1, Fasula teaches a non-asphaltic composition… for pavement markings (see Fasula at [0002] teaching the disclosure relates to pelletized binder materials and compositions… and applying them in road marking compositions). Pelletized binder materials and compositions is taken to meet the claimed non-asphaltic composition based on the structure as outlined below, the non-asphaltic composition comprising: a non-asphaltic base blend which includes
one or more processing oils in a total amount in a range of from 5% to 35% by weight based on a total weight of the non-asphaltic composition (see Fasula at [0008] teaching the pelletized binder comprises… optional plasticizer selected from… process oils… and mixtures, see Fasula at [0033] teaching plasticizer component… a plasticizer selected from the group of… process oils… and mixtures, in an amount ranging from 1 to 20 wt. % of the pelletized binder system) (see MPEP 2144.05(I)),
one or more plasticizers (see Fasula at [0008] teaching the pelletized binder comprises… optional plasticizer selected from… mixtures), and
one or more tree rosin esters in a total amount in a range of from 25% to 80% by weight based on the total weight of the non-asphaltic composition (see Fasula at [0008] teaching the pelletized binder comprises… at least one resin selected from… alkyd resins… in an amount ranging from any of 10 to 96 wt. %, see Fasula at [0021]-[0022] teaching alkyd formulations can be used in any application… alkyd based thermoplastic binders typically comprise of one or more member selected from the group consisting of rosin resins, rosin esters and derivatives… in one embodiment, the resin comprises rosin resins selected from the group of modified rosin resins and rosin esters… modified rosin resins comprise one or more component selected from the group of… rosin acids… derived from trees as… wood rosin… in one embodiment, the pelletized binder system comprises rosin ester) (see MPEP 2144.05(I)).
Fasula does not explicitly teach that a) the plasticizers in the total amount is in a range of from 0.5% to 6% by weight based on the total weight of the non-asphaltic composition, and b) a low temperature property enhancing additive which (i) is incorporated when and/or after the non-asphaltic base blend is formed, (ii) is selected from a distilled tall oil, a distilled tall oil blend, one or more vegetable oils, or a combination thereof, and (iii) is included in the non-asphaltic composition in a total amount, in a range of from 1% to 25% by weight based on the total weight of the non- asphaltic composition, which increases a 4o C ductility and decreases a flexural creep stiffness of the non-asphaltic composition.
With respect to a), Fasula also teaches “thermoplastic” means a polymeric or wax material that has the property of softening or melting, and becoming pliable when heated and of hardening and becoming rigid again when cooled (see Fasula at [0012])… typical thermoplastic road markings are based on a thermoplastic binder system… the thermoplastic binder system of these road markings typically comprise resins, plasticizers, waxes and elastomers (see Fasula at [0018]).
Like Fasula, Wilkins teaches a composition comprising a plasticizer (see Wilkins at [0034] teaching in some examples, a thermoplastic composition comprises… at least one of rosin-modified ester or a modified gum rosin… a plasticizer… the plasticizer and resins may provide toughness, flexibility, and bond strength to the composition, while binding together all the components of thermoplastic composition). Wilkins further teaches in some embodiments, the thermoplastic composition described herein comprises a plasticizer in an amount of up to about 10 wt. % (see Wilkins at [0043]). Plasticizer in an amount of up to about 10 wt. % is taken to meet the claimed a) the plasticizers in the total amount is in a range of from 0.5% to 6% by weight based on the total weight of the non-asphaltic composition (see MPEP 2144.05(I)).
Additionally, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
As such, one of ordinary skill in the art would appreciate that Wilkins teaches a plasticizer in an amount of up to about 10 wt. % because the plasticizer may provide toughness, flexibility, and bond strength to the composition, while binding together all the components of composition.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected a plasticizer in an amount of up to about 10 wt. % as taught by Wilkins in the composition as taught by Fasula because the plasticizer may provide toughness, flexibility, and bond strength to the composition, while binding together all the components of composition, and there is a reasonable expectation of success that the disclosed amount would be suitable.
With respect to b), Fasula teaches plasticizer selected from the group of vegetable oils, process oils… and mixtures (see Fasula at [0033])… process oils are comprised of one or more components of the group consisting of… naphthenic oils (see Fasula at [0034]). Fasula also teaches elastomer/plastomer component… examples of elastomers include but are not limited to… styrene-butadiene-styrene rubber (SBS) (see Fasula at [0028]).
Like Fasula, Neuville teaches a composition comprising oil and elastomers (see Neuville at [0012] teaching a clear synthetic binder comprising at least one oil of plant origin… at least one polymer, see Neuville at [0014] teaching the polymer is chosen from among the copolymers of styrene and butadiene). Neuville further teaches the clear synthetic binder… may also comprise fatty acids and resin acids obtained by distilling Tall-Oil… these are added to the clear synthetic binder, and represent a quantity by weight of between 0.1 % and 2 weight %, relative to the weight of the clear synthetic binder (see Neuville at [0048]). Distilling Tall-Oil in a quantity by weight of between 0.1 % and 2 weight % is taken to meet the claimed b) a low temperature property enhancing additive which (i) is incorporated when… the non-asphaltic base blend is formed, (ii) is selected from… a distilled tall oil… and (iii) is included in the non-asphaltic composition in a total amount, in a range of from 1% to 25% by weight based on the total weight of the non- asphaltic composition (see MPEP 2144.05(I)). The distilled tall oil is expected to be capable of increasing a 4o C ductility and decreasing a flexural creep stiffness of the non-asphaltic composition.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that distilled tall oil is suitable for its intended use.
Moreover, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected distilled tall oil between 0.1 % and 2 weight % as taught by Neuville in the composition as taught by Fasula because distilled tall oil is suitable for its intended use, and there is a reasonable expectation of success that the disclosed amount would be suitable.
Regarding claims 2-3, Fasula in view of Wilkins and Neuville teach the limitations as applied to claim 1 above, and Neuville teaches further comprising the total amount of the low temperature property enhancing additive also increasing a resilience and reducing a viscosity of the non-asphaltic composition (claim 2), and further comprising the total amount of the low temperature property enhancing additive (i) not reducing a softening point of the non-asphaltic composition below 79o C, (ii) maintaining the softening point of the non- asphaltic composition at a value of 80o C or greater, or (iii) increasing the softening point of the non-asphaltic composition (claim 3) (see Neuville at [0048] teaching the clear synthetic binder… may also comprise fatty acids and resin acids obtained by distilling Tall-Oil). The distilled tall oil is expected to be capable of increasing a resilience and reducing a viscosity of the non-asphaltic composition (claim 2) and (i) not reducing a softening point of the non-asphaltic composition below 79o C, (ii) maintaining the softening point of the non- asphaltic composition at a value of 80o C or greater, or (iii) increasing the softening point of the non-asphaltic composition (claim 3).
Regarding claim 6, Fasula in view of Wilkins and Neuville teach the limitations as applied to claim 1 above, and Fasula teaches further comprising a total of from 2% to 20% by weight, based on the total weight of the non-asphaltic composition, of one… elastomeric polymer materials (see Fasula at [0027] teaching elastomer… component… the amount of elastomer ranges from 1 to 70 wt. % of the pelletized binder system) (see MPEP 2144.05(I)).
Regarding claim 7, Fasula in view of Wilkins and Neuville teach the limitations as applied to claim 1 above, and Neuville teaches further comprising the low temperature property enhancing additive being the… distilled tall oil (see Neuville at [0048] teaching the clear synthetic binder… may also comprise fatty acids and resin acids obtained by distilling Tall-Oil).
Regarding claims 8-9, Fasula in view of Wilkins and Neuville teach the limitations as applied to claims 1 and 7 above, and Neuville teaches further comprising the low temperature property enhancing additive, which is the distilled tall oil or the distilled tall oil blend, comprising (i) one or more rosin acids in a total amount of from 10% to 50% by weight based on a total weight of the distilled tall oil or the distilled tall oil blend (claim 8), and further comprising: the one… rosin acids comprising… abietic acid (claim 9) (see Neuville at [0048] teaching the clear synthetic binder… may also comprise fatty acids and resin acids obtained by distilling Tall-Oil). Distilled tall-oil is taken to meet the claimed recitation as evidenced by Chenchy (see Chenchy at [0020] evidencing rosin is a resinous material is obtained from many plants… examples of rosin acids include… abietic acid… pimaric acid, see Chenchy at [0025]-[0026] evidencing the rosin-containing material may generally comprise… of rosin compounds… the remaining of the rosin-containing material to… consists of components other than rosin compounds, including, for instance, fatty acids (e.g. stearic acid, oleic acid, linoleic acid, linolenic acid and pinolenic acid)… the exact composition of rosin-containing materials may vary… for instance… distilled tall oil (DTO)… may vary depending on the starting materials and processing steps used in their production, see Chenchy at [0030] evidencing a distilled tall oil may particularly comprise 10-40 wt. % of rosin acids, from 50 to 80 wt. % of fatty acids) (see MPEP 2144.05(I)).
Regarding claims 11 and 13, Fasula in view of Wilkins and Neuville teach the limitations as applied to claims 1 and 7, and claim 1, respectively above, and Fasula teaches further comprising the one… tree rosin esters being one… pine-based pentaerythritol ester resins (claim 11), and further comprising the one or more tree rosin esters being one or more pine-based pentaerythritol ester resins (claim 13) (see Fasula at [0022] teaching the resin comprises rosin resins selected from the group of… rosin esters… rosin acids, derived from trees… rosin esters comprised of one or more derived obtained from the reaction of one or more rosin acids and one or more alcohol from the group of alcohols consisting of… pentaerythritol, see Fasula at [0023] teaching in other embodiment, the binder comprises… pentaerythritol ester of rosin resins). Pentaerythritol ester of rosin resins derived from trees is taken to meet the claimed pine-based pentaerythritol ester resins as evidenced Chenchy (see Chenchy at [0020]-[0021] evidencing rosin is a resinous material that is obtained from many plants, particularly coniferous trees such as Pinus Sylvestris, Pinus palustris and Pinus caribaea… rosin can be obtained from pine trees).
Regarding claim 12, Fasula in view of Wilkins and Neuville teach the limitations as applied to claims 1 and 11 above, and Fasula teaches further comprising: the total amount of the one or more tree rosin esters being from 40% to 55% by weight based on the total weight of the non-asphaltic composition (see Fasula at [0008] teaching the pelletized binder comprises… at least one resin selected from… alkyd resins… in an amount ranging from any of 10 to 96 wt. %) (see MPEP 2144.05(I)).
Neuville teaches the total amount of the low temperature property enhancing additive being from 2% to 7% by weight based on the total weight of the non-asphaltic composition
the clear synthetic binder… may also comprise fatty acids and resin acids obtained by distilling Tall-Oil… these are added to the clear synthetic binder, and represent a quantity by weight of between 0.1 % and 2 weight %, relative to the weight of the clear synthetic binder (see Neuville at [0048]) (see MPEP 2144.05(I)).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Fasula in view of Wilkins and Neuville as applied to claim 1 above, and further in view of Kanae et al. (US 2007/0276092 A1) (“Kanae” hereinafter).
Regarding claims 4-5, Fasula in view of Wilkins and Neuville teaches the limitations as applied to claim 1 above, Fasula teaches further comprising: a total of from 1% to 25% by weight, based on the total weight of the non-asphaltic composition, of one or more color neutralizing materials which at least partially neutralize a non-white shade or color of the non-asphaltic base blend (claim 4), and the one or more color neutralizing materials comprising titanium dioxide (claim 5) (see Fasula at [0040]-[0041] teaching optional pigments… an exemplary composition for the amount of pigments in a road making mixture is as follows… pigments 3-15%... the pigment for white is predominately Type II rutile titanium dioxide) (see MPEP 2144.05(I)). Titanium dioxide is expected to be capable to at least partially neutralize a non-white shade or color of the non-asphaltic base blend.
Fasula also teaches the pigments can be of different colored materials (see Fasula at [0041]). As mentioned, Fasula also teaches “thermoplastic” means a polymeric or wax material that has the property of softening or melting, and becoming pliable when heated and of hardening and becoming rigid again when cooled (see Fasula at [0012])… elastomer… component (see Fasula at [0027] teaching elastomer).
However, Fasula does not explicitly teach a total of from 0.1% to 6% by weight, based on the total weight of the non-asphaltic composition, of one or more pigment materials which impart a non-white color or shade to the non-asphaltic composition (claim 4), and the one or more pigment materials comprising Gilsonite which imparts a gray color to the non-asphaltic composition (claim 5).
Like Fasula, Kanae teaches a composition comprising thermoplastic (see Kanae at [0001] teaching the present disclosure relates to a thermoplastic elastomer composition, see Kanae at [0077] teaching specific examples of the other thermoplastic elastomers and rubber include… hydrogenated styrene-butadiene block copolymers). Kanae further teaches in the thermoplastic elastomer composition… a softening agent may be contained in a proportion of 0 to 200 parts by weight per 100 parts by weight of the total of the thermoplastic resin (see Kanae at [0015]). Kanae also teaches the softening agent consisting the component (C), may be used a petroleum type softening agent such as… petrolatum or gilsonite (see Kanae at [0071]). Gilsonite in a proportion of 0 to 200 parts by weight per 100 parts by weight of the total of the thermoplastic resin (or 0 to 200 wt%) is taken to meet the claimed a total of from 0.1% to 6% by weight, based on the total weight of the non-asphaltic composition, of one… pigment materials (claim 4), and the one… pigment materials comprising Gilsonite (claim 5) (see MPEP 2144.05(I)). Gilsonite is expected to be capable of imparting a non-white color or shade to the non-asphaltic composition (claim 4), and imparting a gray color to the non-asphaltic composition (claim 5).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that gilsonite is a suitable softening agent or is suitable for its intended use.
Moreover, MPEP states that "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected gilsonite in a proportion of 0 to 200 parts by weight per 100 parts by weight of the total of the thermoplastic resin (or 0 to 200 wt%) as taught by Kanae in the composition as taught by Fasula because gilsonite is a suitable softening agent or is suitable for its intended use, and there is a reasonable expectation of success that the disclosed amount would be suitable.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Fasula in view of Wilkins and Neuville as applied to claim 1 above, and further in view of Chenchy.
Regarding claim 10, Fasula in view of Wilkins and Neuville teaches the limitations as applied to claims 1 and 7-8 above, but Fasula in view of Wilkins and Neuville do not explicitly teach further comprising: the one or more rosin acids including each of abietic acid and pimaric acid and the one or more fatty acids including each of palmitic acid, stearic acid, oleic acid, linoleic acid, and linolenic acid.
Like Neuville, Chenchy teaches distilled tall oil (see Chenchy at [0020] teaching rosin is a resinous material is obtained from many plants… examples of rosin acids include… abietic acid… pimaric acid… the type and relative amounts of rosin acids present in rosin depend, in part, on the plant species and the process of production, see Chenchy at [0025]-[0026] teaching the rosin-containing material may generally comprise… of rosin compounds… the remaining of the rosin-containing material to… consists of components other than rosin compounds, including, for instance, fatty acids (e.g. stearic acid, oleic acid, linoleic acid, linolenic acid and pinolenic acid)… the exact composition of rosin-containing materials may vary… for instance… distilled tall oil (DTO)… may vary depending on the starting materials and processing steps used in their production, see Chenchy at [0030] teaching a distilled tall oil may particularly comprise 10-40 wt.% of rosin acids, from 50 to 80 wt. % of fatty acids). Distilled tall oil comprising rosin acids including abietic and pimaric acids, and fatty acids including stearic acid, oleic acid, linoleic acid, linolenic acid and pinolenic acid is taken to meet the claimed “further comprising: the one or more rosin acids including each of abietic acid and pimaric acid and the one or more fatty acids including each of palmitic acid, stearic acid, oleic acid, linoleic acid, and linolenic acid”.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that distilled tall oil comprising rosin acids including abietic and pimaric acids, and fatty acids including stearic acid, oleic acid, linoleic acid, linolenic acid and pinolenic acid is suitable for its intended use.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use distilled tall oil comprising rosin acids including abietic and pimaric acids, and fatty acids including stearic acid, oleic acid, linoleic acid, linolenic acid and pinolenic acid as taught by Chenchy in the composition as taught by Fasula in view of Wilkins and Neuville because it is suitable for its intended use.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fasula in view of Wilkins and Neuville as applied to claim 1 above, and further in view of Nishihara et al. (KR 2000-0065249, with reference to the machine translation) (“Nishihara” hereinafter).
Regarding claims 14-15, Fasula in view of Wilkins and Neuville teach the limitations as applied to claim 1 above, but Fasula in view of Wilkins and Neuville do not explicitly teach further comprising the one or more plasticizers comprising one or more epoxidized esters of vegetable oils (claim 14), and further comprising the one or more plasticizers being one or more epoxidized esters of soybean oil (claim 15).
Like Fasula, Nishihara teaches a thermoplastic resin composition comprising plasticizer (see Nishihara at [0001] teaching a thermoplastic resin composition… a resin composition… comprising… (A) a thermoplastic resin, and (B) at least one non-polymerizable liquid substance that is liquid… as an additive, see Nishihara at [0176] teaching an additive, such as… plasticizer, see Nishihara at [0178] teaching examples of plasticizers used… include… epoxy compounds such as epoxidized soybean oil). Epoxidized soybean oil is taken to meet the claimed further comprising the one or more plasticizers being one or more epoxidized esters of soybean oil (claim 15). Epoxidized soybean oil is also taken to meet the claimed further comprising the one or more plasticizers comprising one or more epoxidized esters of vegetable oils, because soybean is considered a vegetable.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that epoxidized soybean oil is suitable for its intended use.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use epoxidized soybean oil as an additive as taught by Nishihara in the composition as taught by Fasula in view of Wilkins and Neuville because epoxidized soybean oil is suitable for its intended use.
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, 4-6, 11 and 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-15, 19-23 and 26 of U.S. Patent No. 11572472. Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and US 11572472 claim a composition comprising processing oils, plasticizers, tree rosin esters, elastomeric polymeric materials, pigment and additive with overlapping ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached at (571)270-3149. 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.
/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731