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 § 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.
Claim(s) 7-11 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over USP 9372425B2 see abstract and cols. 4-6 in view of USP 10221302 see abstract, col. 2 Summary and col. 3, col. 5 lines 33- col. 6 line 14.
USP 9372425B2 discloses a process for preparing filled polymeric solid surface materials comprising by dry-blending filler particles with functional particles in a high -energy mixing process and incorporating the modified filler into a resin composition which is molded into a cured solid article. See Abstract and cols. 4-6. The reference further shows that the filler is present in particle form and may have particle sizes ranging from 0.1 to 500 microns in col. 5 lines 15-16.
USP 9372425B2 does not expressly disclose classifying ground particles by defined mesh size ranges.
USP 10221302 discloses solid surface compositions wherein inorganic filler particles having controlled particle size distributions defined by mesh screening including defined D50 and D90 ranges and major dimension limits. The reference further teaches that control of particle size distribution through screening improves uniformity and processing characteristics of solid surface materials. Note col. 2 Summary, col. 3, col. 5 lines 33 - col. 6 line 14.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the process of USP 9372425B2 to include controlling and classifying particles into defined size fractions as taught by USP 10221302 in order to obtain a composition having a controlled particle size distribution
improved properties and surface finish and mechanical performance since both references are directed to solid surface materials comprising resin and particulate filler.
With regard to claim 8, USP 10221302 discloses solid surface compositions wherein inorganic filler particles having controlled particle size distributions defined by mesh screening including defined D50 and D90 ranges and major dimension limits. The reference further teaches that control of particle size distribution through screening improves uniformity and processing characteristics of solid surface materials. Note col. 2 Summary, col. 3, col. 5 lines 33- col. 6 line 14. Adjusting the relative proportions of resin and filler within known workable ranges constitutes routine optimization.
With regard to claim 9, USP 9372425B2 discloses a process for preparing filled polymeric solid surface materials comprising by dry-blending filler particles with functional particles in a high-energy mixing process and incorporating the modified filler into a resin composition which is molded into a cured solid article. Abstract and cols. 4-6.the reference further shows that the filler is present in particle form and may have particle sizes ranging from 0.1 to 500 microns in col. 5 lines 15 and 16.
USP 10221302 discloses solid surface compositions wherein inorganic filler particles having controlled particle size distributions defined by mesh screening including defined D50 and D90 ranges and major dimension limits. The reference further teaches that control of particle size distribution through screening improves uniformity and processing characteristics of solid surface materials. Note col. 2 Summary and col. 3, col. 5 lines 33- col. 6 line 14.
Selection of specific mesh sizes within disclosed particle size ranges represents routine selection of known size fractions for predictable results.
With regard to claim 10, USP 9372425B2 discloses a process for preparing filled polymeric solid surface materials comprising by dry-blending filler particles with functional particles in a high-energy mixing process and incorporating the modified filler into a resin composition which is molded into a cured solid article. Abstract and cols. 4-6.the reference further shows that the filler is present in particle form and may have particle sizes ranging from 0.1 to 500 microns in col. 5 lines 15 and 16.
USP 10221302 discloses solid surface compositions wherein inorganic filler particles having controlled particle size distributions defined by mesh screening including defined D50 and D90 ranges and major dimension limits. The reference further teaches that control of particle size distribution through screening improves uniformity and processing characteristics of solid surface materials. Note col. 2 Summary and col. 3, col. 5 lines 33- col. 6 line 14.
Limiting the total particle content to an upper limit within the known range of highly filled solid surface compositions represents routine balancing of filler loading and moldability and would have been obvious to one of ordinary skill in the art.
With regard to claim 11, selecting a resin content represents routine adjustment of the resin to filler ratio within known solid surface compositions to balance processability and cured properties which constitutes routine optimization.
With regard to claim 13, section of a particular scree size within known particle size ranges constitutes routine selection of known size fractions for predictable results.
With regard to claim 14, recites alumina trihydrate as the inorganic filler. Both references disclose alumina trihydrate as a suitable and preferred inorganic filler. USP 9372425B2 see col. 1 line 26 and USP 10221302 see col. 3 lines 60-61.
With regard to claim 15, the cited reference teach curing molded resin compositions and application of heat and pressure during molding is conventional in the process and manufacturing of solid surface materials. USP 9372425B2 see claim 1 and USP 10221302 see col. 6 lines 5-6.
With regard to claim 16, use of vibration and vacuum during molding to remove trapped air is well known in the art and is routine optimization.
Claim 17 recites a solid surface material or article made by the method of claim 7. Claim 17 is a product-by -process claim and thus the patentability of a product-by-process claim is based on the product itself, not on the method of making it.
USP 10221302 discloses solid surface compositions wherein inorganic filler particles having controlled particle size distributions defined by mesh screening including defined D50 and D90 ranges and major dimension limits. The reference further teaches that control of particle size distribution through screening improves uniformity and processing characteristics. Note col. 2 Summary, and col. 3, col. 5 lines 33- col. 6 line 14. The reference further teaches cured solid surface articles formed from these compositions.
Claim 17 does not recite structural limitations that distinguish the claimed solid surface material from the solid surface material taught by USP 10221302.
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Obviousness-type 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 obviousness-type 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); and 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. USP 10221302.
USP 10221302 claims solid surface materials comprising unsaturated polyester resin and inorganic filler particles distributed through the materials.
As a future response to the rejection above, applicants are advised to not withhold a response, such as, a terminal disclaimer (TD), to the pending ODP rejection. 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.”
Allowable Subject Matter over Prior Art
The following is an Examiner's statement of reasons for the indication of allowable subject matter:
Applicant(s) claims 1-6 are directed to a composition for forming a solid surface article as disclosed in independent claim 1. Such has neither been anticipated by nor made obvious from the prior art. the prior art of record including USP 9371425B2 and USP 10221302B2, discloses solid source materials comprising polymer resin and inorganic filler particle s and teaches particle size distributions and compositional ranges. However, the references do not teach or suggest defining compositional limits using the claimed mathematical expressions that establish functional relationships between the recited variables. The cited art discloses fixed ranges and particle size parameters but does not disclose or suggest the specific equation-based conditions recited in claims 1 and 12. The disclosures do not show that the mathematical relationships were known or would have been obvious to derive from the teachings of the prior art.
Any comments considered necessary by applicant must be submitted no later
than the payment of the Issue Fee and, to avoid processing delays, should
preferably accompany the Issue Fee. Such submissions should be clearly
labeled "Comments on Statement of Reasons for Allowance."
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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, Heidi Kelley can be reached at 571 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Terressa Boykin/Primary Examiner, Art Unit 1765