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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,202,517. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 1 is considered to be a method of making the coating composition of instant claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,781,032. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 1 is a dehydrated version of the coating composition of instant claim 1. Use of a polar solution in the coating composition to form the dehydrated coating composition would have been obvious, if not critically necessary, especially as the patented product claim requires the components to have been combined in a polar solution (prior to being dehydrated).
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 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 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chieffi et al (US 2011/0110993).
Regarding claim 1, Chieffi teaches a coating comprising a cationic polymer and an anionic polymer (par. 17) and a plasticizer, which may be water (par. 96).
In the event any differences can be shown for the product of the product-by-process claim 1, as opposed to the product taught by Chieffi, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results; see also In re Thorpe, 227 USPQ 964 (CAFC 1985).
When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or 103 of the statute is appropriate. As a practical matter, the Patent and Trademark Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974). The express product limitations of instant claim 1 essentially require a coating composition comprising one or more cationic polymers and one or more anionic polymers that are thoroughly mixed together.
Regardless, Chieffi teaches aqueous solutions for the mixtures (Example 1), which are polar solutions. Regarding the claimed vigorous blending, Chieffi teaches high speed blending to achieve a volume-mean particle size (pars. 126 and 127). Conventional wisdom leads to such a teaching as being directed toward particle size reduction, as opposed to the alternative which would involve high speed blending in order to grow particles to a certain average size. Mechanical blending is a destructive process, in the case of such particles, and there is nothing to suggest that particles are being “grown” or agglomerated as opposed to being reduced. While mixing speed is not expressly disclosed, absent a showing of unexpected results, suitable speeds would have been determined by one having ordinary skill in the art through routine experimentation. As Chieffi teaches a substantially similar product subjected to blending, it is expected that the blended composition will exhibit substantially similar properties, including those claimed. That said, the claimed reduced particle sizes or viscosity are considered to be defined as relative to an original particle size or viscosity, which is not actually defined. Claim 1 is not considered to be limited to a particular viscosity or particle size, and a substantially identical end result particle size and/or viscosity could be achieved through means other than the claimed vigorous blending. Further, use of blending to achieve a particle size of x from a starting size of x+ would not be necessary if the starting particle size, prior to blending, were already x, absent a showing that the claimed vigorous blending critically achieves an additional benefit/advantage.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeh (US 5,378,830).
Regarding claim 1, Yeh teaches a blend composition comprising one or more cationic polysaccharides and one or more anionic polysaccharides, wherein the blend is capable of producing enhanced viscosities when distributed in a solvent (abstract), preferably water (col. 3, lines 41-42).
In the event any differences can be shown for the product of the product-by-process claim 1, as opposed to the product taught by Yeh, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results; see also In re Thorpe, 227 USPQ 964 (CAFC 1985).
When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or 103 of the statute is appropriate. As a practical matter, the Patent and Trademark Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
The claimed vigorous blending is considered to be a means of reducing viscosity. While Yeh does not expressly teach blending to reduce viscosity, Yeh does teach that increasing pH above 8 greatly increases viscosity (Example 1, col. 8, lines 60-65), and Table 3 shows the effects of temperature on viscosity, wherein viscosity decreases with increasing temperature. As such, Yeh teaches several alternative means to regulate viscosity. Further regarding claim 1, one of ordinary skill would have been able to determine optimal viscosities, including those claimed, through routine experimentation.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Catchmark et al (US 2011/0086236).
Regarding claim 1, Catchmark teaches coating compositions comprising a mixture of one or more anionic and one or more cationic polymers contained in a liquid, such as water or another solvent, the mixture being subjected to mixing (par. 116).
In the event any differences can be shown for the product of the product-by-process claim 1, as opposed to the product taught by Catchmark, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results; see also In re Thorpe, 227 USPQ 964 (CAFC 1985).
When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or 103 of the statute is appropriate. As a practical matter, the Patent and Trademark Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
The claimed vigorous blending is considered to be a means of reducing viscosity. While Catchmark does not expressly teach blending to reduce viscosity, Catchmark does teach that the viscosity of the solution can be tailored through the addition of additives. As such, Catchmark teaches an alternative means to regulate viscosity. Further regarding claim 1, one of ordinary skill would have been able to determine optimal viscosities, including those claimed, through routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLIN W SLIFKA whose telephone number is (571)270-5830. The examiner can normally be reached on Monday-Friday, 9:00 AM-5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung can be reached on 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Colin W. Slifka/Primary Examiner, Art Unit 1732